BBY Solutions, Inc. v. Develop Tech
Claim Number: FA1609001692250
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is Develop Tech (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geek-squad-support.org>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2016; the Forum received payment on September 2, 2016.
On September 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <geek-squad-support.org> 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 September 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2016 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@geek-squad-support.org. Also on September 7, 2016, 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 October 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant registered the GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,643, registered Dec. 26, 1995), and holds rights to the mark that it uses for techinal support with electronics. See Compl., at Attached Ex. C. Respondent’s domain name, <geek-squad-support.org>, is confusingly similar to Complainant’s mark, because it merely adds the descriptive term “support,” two hyphens, and a generic top-level domain (“gTLD”) suffix to the Complainant’s entire GEEK SQUAD mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its GEEK SQUAD mark, and the Respondent is not commonly known as the disputed domain name. Respondent is attempting to pass itself off as Complainant and prominently displays several of Complainant’s GEEK SQUAD marks on its website. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and is using the disputed domain name in bad faith. Respondent offers services that directly compete with Complainant, at a domain name that features its mark and prominently display’s Complainant’s logos. This is an attempt to pass itself off as Complainant for commercial gain, and is clear evidence that Respondent had actual notice of Complainant rights in the GEEK SQUAD mark when it registered the <geek-squad-support.org> domain name. This conduct is in bad faith violation of Policy ¶¶ 4(b)(iv) and 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of
computer installation, maintenance, repair and design services.
2. Complainant registered the GEEK SQUAD mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,943,643, registered Dec. 26, 1995).
3. Respondent registered the <geek-squad-support.org> domain name on December 15, 2015.
4. Respondent is attempting to pass itself off as Complainant by prominently displaying several of Complainant’s GEEK SQUAD marks on its website and offering competing services.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant asserts that it has rights in the GEEK SQUAD mark based on registration with the USPTO (e.g., Reg. No. 1,943,643, registered Dec. 26, 1995). See Compl., at Attached Ex. C. Although Respondent is listed as operating in India, panels have held that a mark need not be registered by the governmental authority in a respondent’s country to confer rights in the mark. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Therefore, the Panel finds that Complainant has rights in the GEEK SQUAD marks based on its registration with the USPTO.
The second issue that arises is whether the disputed <geek-squad-support.org> domain name is identical or confusingly similar to Complainant’s GEEK SQUAD mark. Complainant submits that Respondent’s <geek-squad-support.org> domain name is confusingly similar to its GEEK SQUAD mark. Complainant argues that Respondent’s addition of “support” is a word that is descriptive of Complainant’s business, and that the addition of hyphens and a gTLD is not sufficient to distinguish the domain name from its mark under Policy ¶ 4(a)(i). Panels have found domain names to be confusingly similar to a complainant’s mark when the respondent has added a descriptive term, hyphens, and a gTLD. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Thus, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GEEK SQUAD mark and to use it in its domain name and has added the generic word “support” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the support services of Complainant;
(b) Respondent registered the disputed domain name on December 15, 2015;
(c) Respondent uses the domain name to pass itself off as Complainant by prominently displaying several of Complainant’s GEEK SQUAD marks on its website and offering competing services;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <geek-squad-support.org> domain name as it has not licensed or otherwise authorized Respondent to use its GEEK SQUAD mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “Develop Tech” as the registrant. See Compl., at Attached Ex. A. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by <geek-squad-support.org> domain name;
(f) Complainant further submits that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks on the resolving website of the disputed domain name to pass itself off as the Complainant, and to divert mistaken internet users to buy the competing services of Respondent in a belief that it is Complainant. Complainant has submitted screen shots of Respondent’s website that it contends is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name. See Compl., at Attached Exs. D1–D3. The Panel compares this to Complainant’s website. See Compl., at Attached Exs. B1–B2. Panels have held that a respondent attempting to pass itself off as a complainant does violate Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the 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 the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant argues that Respondent’s website is predominantly orange and black, playing off the primary color scheme in Complainant’s well-known logo and web offerings through its GEEK SQUAD mark. Complainant also contends that Respondent uses this false appearance to promote identical services. As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name as it has presented itself online in an effort to pass itself off as Complainant.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant states that Respondent has registered and is using the <geek-squad-support.org> domain name in bad faith. Complainant argues that Respondent is attempting to pass itself off as Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of their GEEK SQUAD mark, in conjunction with the confusingly similar domain name, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Panel notes the similarities between the resolving website of <geek-squad-support.org> and Complainant’s website. Compare Compl., at Attached Exs. B1–B2 (screenshots of Complainant’s website), with Compl., at Attached Exs. D1–D3 (screenshots of Respondent’s domain name’s resolving pages). Complainant presumes that Respondent is commercially gaining because of the competing services being offered. As the Panel agrees that Respondent is offering competing services and attempting to pass itself off as Complainant, the Panel finds Respondent in bad faith under Policy ¶ 4(b)(iv). See CNA Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the 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 website where it sold competing insurance services); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Secondly, Complainant contends that Respondent had actual and constructive notice of its rights in the GEEK SQUAD mark when it registered the <geek-squad-support.org> domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the worldwide fame that the GEEK SQUAD mark has achieved, the similar services being offered, and the fact that Respondent’s website uses Complainant’s actual marks all as evidence that Respondent had actual notice of their rights in the mark. See Compl., at Attached Exs. D1–D3. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel infers actual notice from any of Complainant’s three factors. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel thus chooses to find that Respondent had actual notice of Complainant’s rights in the GEEK SQUAD mark when it registered the <geek-squad-support.org> domain name, and that such registration with notice is in violation of Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <geek-squad-support.org> domain name using the GEEK SQUAD mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geek-squad-support.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: October 4, 2016
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