BBY Solutions, Inc. v. Rajinder Singh / Team Consultancy Services
Claim Number: FA1311001529812
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Karen A. Brennan, Minnesota, USA. Respondent is Rajinder Singh / Team Consultancy Services (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geekssquadsupport.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2013; the National Arbitration Forum received payment on November 14, 2013.
On November 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <geekssquadsupport.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2013 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@geekssquadsupport.com. Also on November 14, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
i. Respondent has never been commonly known by the domain name <geekssquadsupport.com> or by the GEEKS SQUADS name and has never acquired any trademark rights in the same.
ii. Respondent is using the domain name incorporating the GEEK SQUAD mark to direct Internet users interested in Complainant’s GEEK SQUAD services to Respondent’s site promoting identical services.
iii. The use of Complainant’s GEEK SQUAD mark, the colors orange and black, creates the false appearance of being a website operated by Complainant in connection with its GEEK SQUAD technical support services.
i. Respondent is using the domain name incorporating the GEEK SQUAD mark to direct Internet users interested in Complainant’s GEEK SQUAD services to Respondent’s site promoting identical services.
ii. The use of Complainant’s GEEK SQUAD mark, the colors orange and black, creates the false appearance of being a website operated by Complainant in connection with its GEEK SQUAD technical support services.
Respondent clearly registered the domain name with the GEEK SQUAD in mark. Respondent is deemed to have constructive knowledge of Complainant’s rights in the GEEK SQUAD mark pursuant to Complainant’s registrations for the GEEK SQUAD mark and long-time and extensive use of the GEEK SQUAD mark
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 (Nat. Arb. 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 argues that it has been using the GEEK SQUAD trademark since at least as early as 1994 in connection with computer installation, maintenance, repair and design services and other technical support services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the GEEK SQUAD mark (e.g., Reg. No. 2,744,658, registered July 29, 2003). Although Respondent appears to reside in India, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel holds that Complainant’s registration of the GEEK SQUAD mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that Respondent’s <geekssquadsupport.com> domain name is identical to Complainant’s GEEK SQUAD mark and incorporates in its entirety. Complainant asserts that Respondent’s domain name differs from the GEEK SQUAD mark only by the addition of the letter “s” and by the addition of the descriptive word “support.” The Panel finds that Respondent’s inclusion of the letter “s” or a descriptive term does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant alleges that the addition of a gTLD, such as “.com,” is also irrelevant in determining the similarity of Respondent’s <geekssquadsupport.com> domain to Complainant’s GEEK SQUAD mark. The Panel holds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that Respondent’s <geekssquadsupport.com> domain name is confusingly similar to Complainant’s GEEK SQUAD mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent has never been commonly known by the domain name <geekssquadsupport.com> or by the GEEK SQUAD name and has never acquired any trademark rights in the same. Complainant alleges that the WHOIS information for the domain at issue identifies the registrant as “Rajinder Singh.” Complainant claims that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the <geekssquadsupport.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant contends that Respondent is using the <geekssquadsupport.com> domain name incorporating the GEEK SQUAD mark to direct Internet users interested in Complainant’s GEEK SQUAD services to Respondent’s site promoting identical services. Complainant asserts that Respondent’s website includes the following language on its home page: “Geek Squad Support is a ten year old company providing Support for Computers and Printers of different Brand and having a team of Microsoft and Cisco Certified Network Engineers.” Thus, Complainant argues that Respondent is using the GEEK SQUAD mark for identical services to those offered by Complainant. Prior panels have held that a respondent’s use of a domain name to offer competing services does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. 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).”). Thus, the Panel concludes that Respondent’s competing use of the <geekssquadsupport.com> domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that the use of Complainant’s GEEK SQUAD mark, the colors orange and black, creates the false appearance of being a website operated by Complainant in connection with its GEEK SQUAD technical support services. Complainant contends that Respondent’s website is predominantly orange and black and has a similar look and feel to Complainant’s GEEK SQUAD website. Complainant further alleges that Respondent’s website incorporates many features of Complainant’s well-known GEEK SQUAD mark, logo, and trade dress, including the predominant use of orange and black. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found respondent’s attempt to pass itself of as complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when respondent used the disputed domain name to present users with a website that was nearly identical to complainant’s website. The Panel finds that Respondent’s attempt to pass itself off as Complainant demonstrates that it is not using the <geekssquadsupport.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant claims that Respondent is using the <geekssquadsupport.com> domain name incorporating the GEEK SQUAD mark to direct Internet users interested in Complainant’s GEEK SQUAD services to Respondent’s site promoting identical services. Complainant argues that Respondent’s website states “Geek Squad Support is a ten year old company providing Support for Computers and Printers of different Brand and having a team of Microsoft and Cisco Certified Network Engineers.” The Panel observes that Respondent presumably commercially gains from its providing of services through the <geekssquadsupport.com> domain name. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant. The Panel holds that Respondent’s offering competing services constitutes attraction for commercial gain, showing bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s use of Complainant’s GEEK SQUAD mark, the colors orange and black, creates the false appearance of being a website operated by Complainant in connection with its GEEK SQUAD technical support services. Complainant contends that Respondent’s operation of a website advertising “Geeks Squad, attributed as a team of computer professionals who contribute their knowledge, experience, and energy to give solutions towards the all problems faced by our customers” and using the identical GEEK SQUAD mark to lure in consumers to this site shows bad faith. The Panel finds that Respondent is attempting to pass itself off as Complainant, the Panel holds that Respondent has registered and is using the <geekssquadsupport.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant asserts that Respondent is deemed to have constructive knowledge of Complainant’s rights in the GEEK SQUAD mark pursuant to Complainant’s registrations for the GEEK SQUAD mark and long-time and extensive use of the GEEK SQUAD mark. Complainant also alleges that Respondent’s explicit usage of the GEEK SQUAD mark on the domain name’s website indicates Respondent’s actual knowledge of Complainant’s rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. The Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <geekssquadsupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 13, 2013
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