BBY Solutions, Inc. v. Paras Ahuja
Claim Number: FA1710001754812
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is Paras Ahuja (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestbuysolutions.net> (the Domain Name), registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2017; the Forum received payment on October 20, 2017.
On October 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bestbuysolutions.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@bestbuysolutions.net. Also on October 24, 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 November 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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
Complainant’s contentions can be summarised as follows:
Complainant is the owner of the BEST BUY trade mark which has been used through its predecessor in interest since 1983 in relation to retail stores offering consumer electronics and appliances. It owns numerous trade mark registrations for BEST BUY in the USA. Since 1989 it has been using its mark in relation to the installation and maintenance of personal computers and home office products and owns a trade mark registration for its BEST BUY logo for those services.
The Domain Name registered in 2016 incorporates the BEST BUY mark in its entirety. The addition of the descriptive term ‘solutions’ is clearly the addition of a term relating to Complainant’s business as Complainant offers technical support solutions and services. The addition of the gTLD .net is irrelevant in determining the similarity of the Domain Name to Complainant’s mark. These minor differences are insufficient to distinguish the Domain Name from Complainant’s BEST BUY mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name. Respondent has no relationship with Complainant and no authorisation from Complainant to use Complainant’s mark in any way.
Respondent is using the Domain Name to offer competing technical support services to Complainant under Complainant’s BEST BUY mark. This is not a legitimate non commercial or fair use of the Domain Name or a bona fide offering of goods or services.
Respondent registered and is using the Domain Name in bad faith. The competing use referred to above creates an obvious likelihood of confusion for commercial gain. Following a cease and desist letter Respondent took down the infringing content but this was later reinstated.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trade mark BEST BUY in the USA for retail services relating to consumer electronics with first use recorded as 1983.
It also has its BEST BUY logo registered for computer related services with first use recorded as 1989.
The Domain Name has been used to offer competing technical support services not connected to Complainant.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s BEST BUY mark (registered in the USA for retail services relating to consumer electronics with first use recorded as 1983), the generic term ‘solutions’ and the gTLD .net.
The addition of terms which are related to Complainant’s business and services supports a finding of confusing similarity. Accordingly the addition of this generic word ‘solutions’ does not serve to distinguish the Domain Name from Complainant’s BEST BUY mark especially bearing in mind that Complainant’s offer computer support and solutions services. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms particularly terms pertaining to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i). )
The gTLD .net does not serve to distinguish the Domain Name from Complainant’s BEST BUY mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to Complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
Respondent does not appear to be commonly known by Complainant’s mark. Complainant has not authorised Respondent to use Complainant’s mark. The use of the Domain Name is commercial and so cannot be legitimate non commercial use.
Panels have found that a respondent is not using a disputed domain name for a bona fide offering of goods or services nor a legitimate non commercial or fair use if it uses the name to divert Internet users to a web site competing with Complainant under its mark.
Respondent has used the site attached to the Domain Name to promote competing technical support services which are not connected with Complainant. The usage of Complainant’s BEST BUY mark which has a reputation in relation to retail services for consumer electronics and computer support services in relation to technical support services not connected with Complainant is not fair as the site does not make it clear that there is no commercial connection with Complainant. As such it cannot amount to the bona fide offering of goods and services. See Upwork Global Inc. v Shoab Malik, FA 1654759 (Forum Feb 3, 2016) (finding that where complainant provided freelance talent services and Respondent competed by also offering the same services through the domain name this was not a bona fide offering of goods or services or legitimate non commercial or fair use.)
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s trade marks in this way. As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above Respondent's use of the site is commercial and it is using the site to make a profit from competing services not associated with Complainant in a confusing manner. The specific combination of marks and services in the Domain Name indicates Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of Complainant’s mark in the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the web site. See CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014)(finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users to its own site where it offered competing services). This also appears designed to disrupt the business of a competitor. See Fitness International, LLC v Alistair Swodeck/Victor and Murray, FA 1506001623644 (Forum July 9, 2015) (where respondent offered the same services as Complainant and it was held this disrupted Complainant’s business under Policy 4 (b)(iii).)
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bestbuysolutions.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 21, 2017
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