Garmin Switzerland GmbH v. Domain Admin / High Tech Investments LTD
Claim Number: FA1706001737052
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Domain Admin / High Tech Investments LTD (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garminexpress.com>, registered with Key-Systems Gmbh.
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 June 23, 2017; the Forum received payment on June 23, 2017.
On Jun 26, 2017, Key-Systems Gmbh confirmed by e-mail to the Forum that the <garminexpress.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 June 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@garminexpress.com. Also on June 30, 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 24, 2017, 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 is one of the leading providers of GPS navigation devices and wearable technology. Complainant first began using the GARMIN name in 1989, and now has offices in over sixty countries and distributes its products over the Internet. Complainant registered the GARMIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,468,532, registered July 15, 2008). See Compl., at Attached Ex. C. Respondent’s <garminexpress.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the GARMIN mark in its entirety and merely appends the generic or descriptive term “express” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <garminexpress.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users away from Complainant’s website, redirecting them to a parking page where they are confronted with a link farm designed to generate click-through advertising revenue. See Compl., at Attached Ex. F. Respondent steers users to websites that compete with Garmin by offering both authentic Garmin products and unauthorized Garmin products and software for use with Garmin devices. Id.
Respondent registered and uses the <garminexpress.com> domain name in bad faith. Respondent offers to sell the disputed domain name for costs greatly exceeding out-of-pocket expenses. See Compl., at Attached Ex. H (showing the domain name for sale for $37,188). Further, Respondent has been the subject of two other UDRP proceedings involving confusingly similar domain names to famous trademarks. See Compl., at pg. 11 (with the famous companies being Swift Transportation and MGM Resorts). Additionally, Respondent uses the domain name to intentionally attract consumers to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent does so in order to advertise and display links to other websites in direct competition with Complainant. See Compl., at Attached Ex. F. Finally, In light of the fact that Respondent registered a domain name that wholly incorporates Garmin’s mark despite not being known by that name or having any affiliation with Garmin, it would be unreasonable to assume that Respondent did not know about Complainant’s use of the GARMIN trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Swiss company that is one of the leading providers of GPS navigation devices and wearable technology having first used the GARMIN name in 1989.
2. Complainant registered the GARMIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,468,532, registered July 15, 2008).
3. Respondent registered the <garminexpress.com> domain name on April 5, 2013.
4. Respondent uses the disputed domain name to divert users away from Complainant’s website, redirecting them to a parking page where they are confronted with a link farm designed to generate click-through advertising revenue from competitors.
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 submits it registered the GARMIN mark with the USPTO (e.g. Reg. No. 3,468,532, registered July 15, 2008). See Compl., at Attached Ex. C. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established rights in the GARMIN mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GARMIN mark. Complainant argues that Respondent’s <garminexpress.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the GARMIN mark in its entirety and merely appends the generic or descriptive term “express” along with the gTLD “.com.” Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <garminexpress.com> domain name is confusingly similar to the GARMIN mark 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 GARMIN mark and to
use it in its domain name, merely appending the generic or descriptive word “express” to the trademark;
(b) Respondent registered the disputed domain name on April 5, 2013;
(c) Respondent uses the disputed domain name to divert users away from Complainant’s website, redirecting them to a parking page where they are confronted with a link farm designed to generate click-through advertising revenue from competitors;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <garminexpress.com> domain name as Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent to determine that issue. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS in the present case identifies “Domain Admin / High Tech Investments LTD” as the registrant. See Compl., at Attached Ex. F. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the GARMIN mark. Without a response, Panels may use these assertions as evidence of lacking rights or legitimate interests. 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 submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <garminexpress.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as the domain name resolves in a website that contains links to services that directly compete with Complainant, presumably to benefit commercially from pay-per-click fees. See Compl., at Attached Ex. F. Using a domain name to offer links for good or services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant submits that the links resolve to websites that compete with Complainant and offer either Complainant’s products or counterfeit products. As such, the Panel finds that Respondent has failed to use the <garminexpress.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
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 submits that Respondent offers the <garminexpress.com> domain name for sale at a price greatly exceeding out-of-pocket expenses. Offering a confusingly similar domain name for sale can evince bad faith registration if the evidence justifies such a conclusion. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The WHOIS information page for the disputed domain name displays the message “GarminExpress.com is for sale! The owner of the domain you are researching has it listed for sale at $38,188.” The Panel finds Respondent’s offering of the domain name for sale, together with the totality of the evidence, is evidence of bad faith registration under Policy ¶ 4(b)(i).
Secondly, Complainant next argues that Respondent registered the disputed domain name in bad faith, partly evinced by Respondent’s propensity for registering domain names reflecting famous marks. A complainant may argue cybersquatting to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant submits that Respondent has been the subject of two other UDRP proceedings involving domain names that are confusingly similar to famous trademarks. See Compl., at pg. 11 (with the famous companies being Swift Transportation and MGM Resorts). Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant submits that Respondent registered and uses the <garminexpress.com> domain name in bad faith because the resolving webpage displays links to Complainant’s competitors, disrupting Complainant’s business. Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). As noted previously, Complainant provides a screenshot of the resolving webpage, which shows that Respondent displays links to “Garmin” related products or services. See Compl., at Attached Ex. F. Complainant argues the links offer for sale either legitimate GARMIN products or counterfeit ones. Consequently, the Panel finds that Respondent’s competitive disruption of Complainant’s business shows bad faith by Respondent pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant argues that Respondent registered and is using the <garminexpress.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to benefit commercially by offering competing goods or services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See 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.”); see also 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).”). Complainant submits Respondent registered the confusingly similar domain name in order to generate more internet traffic for the domain name. The Panel agrees that Respondent attempted to benefit commercially from use of Complainant’s mark in the domain name which establishes bad faith under Policy ¶ 4(b)(iv).
Fifthly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s GARMIN mark. Arguments of bad faith based on constructive notice are generally not acceded to in view of prior UDRP decisions to the contrary. 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."). The Panel agrees with Complainant on this issue. However, the Panel finds on the evidence that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. The Panel also finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the GARMIN mark in light of the fact that Respondent registered a domain name that wholly incorporates Complainant’s mark despite not being known by that mark or having any affiliation with it. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GARMIN mark and in view of the conduct that Respondent engaged in when using the disputed 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 <garminexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 25, 2017
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