BBY Solutions, Inc v. ZHANG MARTIN / Smith Patel / WHITE HARRIS / LEE RYAN
Claim Number: FA1706001738113
Complainant is BBY Solutions, Inc (“Complainant”), represented by Matthew Mlsna of BBY Solutions, Inc, Minnesota, USA. Respondent is ZHANG MARTIN / Smith Patel / WHITE HARRIS / LEE RYAN (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <geeksquadprotection.org>, <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org>, <geeksquadsupport.org>, <bestbuygeeksquad.org>, and <bestbuygeeksquadphonenumber.org>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.
On Jul 01, 2017, Pdr Ltd. D/B/A Publicdomainregistry.Com, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <geeksquadprotection.org>, <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org>, <geeksquadsupport.org>, <bestbuygeeksquad.org>, and <bestbuygeeksquadphonenumber.org> domain names are registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the names. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 July 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@geeksquadprotection.org, postmaster@callgeeksquad.org, postmaster@bestbuygeeksquadnumber.org, postmaster@1800geeksquad.org, postmaster@geeksquadplan.org, postmaster@geeksquadsupport.org, postmaster@bestbuygeeksquad.org, and postmaster@bestbuygeeksquadphonenumber.org. Also on July 7, 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 July 31, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in GEEK SQUAD and BEST BUY and alleges that the disputed domain names are confusingly similar to one, other or both of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark GEEK SQUAD since 1994 in connection with computer installation, maintenance, repair, and other technical support services;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 1,943,643, registered December 26, 1995, for the trademark GEEK SQUAD[i];
3. Complainant also owns United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 1,899,212, registered June 13, 1995, for the trademark BEST BUY[ii];
4. the disputed domain names were registered on February 25, 2017;
5. the domain names <bestbuygeeksquad.org>, <bestbuygeeksquadphonenumber.org>, and <geeksquadprotection.org> resolve to websites offering the same type of support services to those provided by Complainant under the trademarks;
6. the domain names, <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org>, and <geeksquadsupport.org> all resolve to webpages with the message: “The domain you have entered is not available. It has been taken down because the email address of the domain holder (Registrant) has not been verified”; and
7. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names are owned and controlled by the one person or entity because of commonalities including the facts that, accordingly to the WHOIS registration information, the disputed domain names were registered on the same date, with the same registrar, and with common registrant information such as the listed phone number.
On balance, the Panel finds that these and other connecting factors sufficiently demonstrate that the disputed domain names were registered by the same domain name holder for the purposes of the Rules. All references herein to “Respondent” are to the named respondents.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of a United States Patent and Trademark Office trademark registration for GEEK SQUAD and for BEST BUY, the Panel is satisfied that it has trademark rights in those expressions (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
It has been decided in countless decision under this Policy that the gTLD, such as “.org” in these cases here, can be ignored for the purposes of comparison (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002). Therefore, when the domain names are stripped of their gTLD, the comparison resolves to the trademarks with the following terms:
geeksquadprotection,
callgeeksquad,
bestbuygeeksquadnumber,
1800geeksquad,
geeksquadplan,
geeksquadsupport,
bestbuygeeksquad and
bestbuygeeksquadphonenumber.
The Panel finds that it is not necessary to specifically consider the trademark BEST BUY since the domain names take the distinctive GEEK SQUAD trademark and add various terms or numbers which, within the context of the services provided, are descriptive or otherwise non-distinctive (and in one case, simply compounds the two registered trademarks).
None of the additions significantly alters the identity of the GEEK SQUAD trademark which remains the distinctive element of the domain names. Accordingly, the Panel finds the domain names confusingly similar to the GEEK SQUAD trademark (see Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) finding <amextravel.com> confusingly similar to the AMEX mark because the mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i); see also Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) finding confusing similarity where <kohlerbaths.com> contained the complainant’s mark adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”)
The Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks. Further, exhibited to the Complaint are screenshots of the resolving webpages which show the Complainant’s trademark in use in connection with goods/services competitive with those provided by Complainant’s under the trademark, or else show that the domain name is not in use at all. As such, there is no bona fide offering of goods or services or legitimate noncommercial or fair use in any case.
The Panel finds that Complainant has established a prima facie case (see Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks; see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) for similar result; see finally, Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, the prima facie case against Respondent is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
With respect to the domain names in use, the Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark GEEK SQUAD. Complainant submits evidence of screenshots of the webpages corresponding with the disputed domain names. For those domain names in use and resolving to websites offering competitive services, the object of the websites is clearly monetary gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using those domain names to attract, for commercial gain, internet users to those websites by creating a likelihood of confusion with the Complainant’s trademark (see Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant; Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); 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).”).
Accordingly, with respect to those of the domain names in use, namely <bestbuygeeksquad.org>, <bestbuygeeksquadphonenumber.org>, and <geeksquadprotection.org>, the Panel finds registration and use in bad faith.
For those domain names not in use, namely <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org>, and <geeksquadsupport.org>, a different analysis is required; one which must take account of the fact that there is no “use” in bad faith in a literal sense.
Complainant cites the case of Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and correctly states that, in certain circumstances, passive holding of a confusingly similar domain name can amount to bad faith use under the Policy. Complainant then states that Respondent had constructive notice of Complainant’s trademark rights by reason of its USPTO registrations.
It is not entirely clear to the Panel whether these submissions are linked but, to the extent that was the intention, the Panel confirms the consensus view expressed by previous UDRP decisions such as The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) that “there is no place for such a concept [of constructive notice] under the Policy.”
Further, the reasoning in Telstra Corporation Limited v. Nuclear Marshmallows concerning “passive holding” is conditioned, amongst other matters, on a finding that the relevant trademark (in that case, the mark TELSTRA) is well known.
In the present case there is no evidence of reputation. Complainant asserts that the trademarks have been used since 1994 but there is no evidence of that claim. Whilst the Complaint shows that there are several USPTO registrations for both trademarks, those registrations are not themselves proof of use or reputation.
It follows that the case of Telstra Corporation Limited v. Nuclear Marshmallows does not apply and that there is no basis for a finding of so-called passive holding in bad faith.
Although there is no Response, Complainant must still establish all elements of the Policy and unsupported claims of bad faith use are not enough (see, for example, Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The Panel recalls that the relevant resolving webpages state: “The domain you have entered is not available. It has been taken down because the email address of the domain holder (Registrant) has not been verified.” The implication is that there once existed content at those internet locations. That possible earlier use has not been shown or considered by the Complaint.
The Panel’s earlier decision that, for the purposes of paragraph 3(c) of the Rules, the domain names could be regarded as having been registered by the same entity does not rise high enough in this case and on the evidence before the Panel to implicate Respondent in bad faith use where there is evidence of none, simply because there is bad faith use of some of the disputed domain names.
Panel finds that Complainant has not established registration in bad faith and so has not established the third limb of the Policy with regard to the domain names <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org>, and <geeksquadsupport.org>.
Complainant, having established all three elements required under the ICANN Policy in respect of the <bestbuygeeksquad.org>, <bestbuygeeksquadphonenumber.org> and <geeksquadprotection.org> domain names, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestbuygeeksquad.org>, <bestbuygeeksquadphonenumber.org> and <geeksquadprotection.org> domain names be TRANSFERRED from Respondent to Complainant.
Complainant, having failed to establish all three elements required under the ICANN Policy in respect of the domain names <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org> and <geeksquadsupport.org>, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <callgeeksquad.org>, <bestbuygeeksquadnumber.org>, <1800geeksquad.org>, <geeksquadplan.org> and <geeksquadsupport.org> domain names REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: August 2, 2017
[i] This is the earliest of Complainant’s USPTO registrations. It is for a stylised version of the words GEEK SQUAD and although there are later USPTO registrations for the plain word mark, the degree of stylisation is slight that it has no impact on the application of the Policy, in particular, para. 4(a)(i).
[ii] Again, a stylised logo form of these words but having no impact on the later analysis for the reason given.
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