Garmin Switzerland GmbH v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1708001747199
Complainant is Garmin Switzerland GmbH ("Complainant"), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gamin.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2017; the Forum received payment on August 31, 2017.
On September 1, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <gamin.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@gamin.com. Also on September 8, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 states that it is a leading provider of GPS navigation devices and wearable technology. Complainant adopted the GARMIN mark in 1989 and has used it since then in connection with various products and services. Complainant has offices in more than 60 countries, and sells its products online and in stores throughout the world, with total annual revenues exceeding $3 billion. Complainant's GARMIN mark is registered in the United States, the European Union, Canada, and other jurisdictions throughout the world.
Complainant states further that is no business relationship with Respondent, and that Respondent has never been given permission to use Complainant's GARMIN mark in any manner. The disputed domain name <gamin.com> was registered in 2002. Complainant states that the domain name appears to have changed hands several times since then, and Respondent appears to have gained control of the domain name in 2015. The domain name resolves to a parking page containing links to websites featuring counterfeit GARMIN products, some of which attempt to install malware on the user's computer. The parking page contains a disclaimer disavowing any connection to the linked sites. In addition, Complainant states that Respondent is offering to sell the disputed domain name for $36,585 through a domain name marketplace.
Complainant contends on the above grounds that the disputed domain name <gamin.com> is confusingly similar to Complainant's GARMIN mark; that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name <gamin.com> corresponds to Complainant's registered GARMIN mark, but for the omission of the letter "r" and the addition of the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Philip Morris USA Inc. v. Protection Domain / Above.com Domain Privacy, D2017-0432 (WIPO May 12, 2017) (finding <malboro.com> confusingly similar to MARLBORO); AB Electrolux v. Purple Bucquet / PrivacyProtect.org, D2010-1853 (WIPO Dec. 8, 2010) (finding <electolux.com> confusingly similar to ELECTROLUX); Best Western International, Inc. v. Spider Inc., FA 123878 (Forum Oct. 21, 2002) (finding <bestwesten.com> confusingly similar to BEST WESTERN).
A domain name that contains a misspelled version of a trademark—a practice commonly referred to as "typosquatting"—is normally deemed to be confusingly similar to the mark, provided that the trademark is easily recognizable within the domain name. See PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, FA 1504563 (Forum July 19, 2013). The Panel considers Complainant's GARMIN mark to be easily recognizable within the <gamin.com> domain name notwithstanding the omission of the letter "r", and therefore finds the domain name to be confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to a typographical variation of Complainant's mark, and its sole apparent use has been to display paid links to websites promoting counterfeit versions of Complainant's products. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." And under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration and use of a domain name corresponding to a typographical variation of Complainant's mark to display links to counterfeit versions of Complainant's products is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). The posted offer to sell the domain name is at least suggestive of bad faith under paragraph 4(b)(i) as well. (There is no indication that the offer was unauthorized by Respondent nor that the domain name has value for any reason other than its similarity to Complainant's mark.) The fact that the domain name is held in the name of a privacy registration service lends further support to the inference of bad faith. For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gamin.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 4, 2017
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