Geeknet, Inc. v. Web Master / WinnComm, LLC
Claim Number: FA1704001729345
Complainant is Geeknet, Inc. (“Complainant”), represented by Laura A. Kees of Womble Carlyle Sandridge & Rice, LLP, Georgia, U.S.A. Respondent is Web Master / WinnComm, LLC (“Respondent”), Washington, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ageekthought.com>, registered with Google Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2017; the Forum received payment on April 28, 2017.
On April 28, 2017, Google Inc. confirmed by e-mail to the Forum that the <ageekthought.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ageekthought.com. Also on May 1, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <ageekthought.com> domain name is confusingly similar to Complainant’s THINKGEEK mark.
2. Respondent does not have any rights or legitimate interests in the <ageekthought.com> domain name.
3. Respondent registered and uses the <ageekthought.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, GEEKNET, Inc. sells retail products for technology enthusiasts and general consumers using its THINKGEEK mark. Complainant registered the THINKGEEK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,535,696, registered Feb. 5, 2002).
Respondent registered the <ageekthought.com> domain name on March 6, 2017, and uses it to redirect Internet users to its online shop, which links to Amazon.com.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts that it has established rights in the THINKGEEK mark. The Panel agrees, finding that registration of a mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <ageekthought.com> domain name incorporates the same connotation as Complainant’s THINKGEEK mark and adds the letter “a.” The addition of an article does not eliminate confusing similarity. See. Christmas Place, Inc. v. Pham Dinh Nhut, FA 1597046 (Forum Feb. 16, 2015) (finding that removal of a spac[e], and removal of an article and preposition, are without legal significance so as to mitigate the confusingly similarity). Respondent has substituted the word ‘THINK” for “THOUGHT” in Complainant’s mark and transposed them, which also does not eliminate confusing similarity. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and “angel” in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i)); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not affiliated with Complainant and therefore has no rights or legitimate interests in the disputed domain name. The WHOIS information for the disputed domain name lists “Web Master / WinnComm, LLC” as the registrant. The Panel thus finds that there is no evidence in the record that Respondent is commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use. The Panel notes that Respondent is using the disputed domain name to redirect Internet traffic to Amazon, by which it financially benefits as an Amazon affiliate. The Panel finds that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is engaging in a pattern of bad faith registration and therefore has registered the disputed domain name in bad faith. The Panel notes that Respondent has previously been ordered to transfer the domain name, “ageekthink.com”, to Complainant. See Geeknet, Inc. v. Sharon Thomas / WinnComm, Case No. 1719868 (2017). The Panel finds that this is evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant also argues that Respondent’s use of the disputed domain name to attract consumers to a website that displays and sells products similar to Complainant’s products supports a finding of bad faith. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ageekthought.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 31, 2017
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