BBY Solutions, Inc. v. Pankaj Kashyap / Frank John
Claim Number: FA1901001825222
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna of BBY Solutions, Inc., Minnesota, USA. Respondent is Pankaj Kashyap / Frank John (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2019; the Forum received payment on January 15, 2019.
On January 15, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2019 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@geekssquadphonenumber.org, postmaster@geekssquad.org, postmaster@geekssquadbestbuy.org. Also on January 17, 2019, 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 February 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the nominal registrants controlling the at-issue domain names are effectively the same entity operating under several aliases. Numerous UDRP decisions have permitted consolidation where the subject domain names were registered under aliases for a single entity or individual. Here, Complainant states that the at-issue domain names have many common features, including one or more of the following: (1) resolving to similar websites, (2) registrant names, phone numbers, and addresses, (3) registrars used to register the domain names, (4) IP addresses associated with the domain names, and/or (5) identical phone numbers promoted to visitors of the websites seeking technical support services. In light of Complainant’s unopposed allegations and evidence suggesting that the at-issue domain names were each registered for the benefit of the same controlling entity the Panel concludes that the instant proceeding may move forward as captioned and “Respondent” shall refer to the nominal respondents.
A. Complainant
Complainant contends as follows:
Complainant, BBY Solutions, Inc. uses their BEST BUY and GEEK SQUAD trademarks in connection with computer installation, maintenance, repair, and technical support services.
Complainant has rights in the BEST BUY and GEEK SQUAD marks based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names are confusingly similar to one or both of Complainant’s BEST BUY and GEEK SQUAD marks, as the domain names incorporate one or both marks in their entirety, only adding descriptive words, the pluralization of the word “geek,” and the generic top-level domain (“gTLD) “.org.”
Respondent has no rights or legitimate interests in any of the <geekssquadphonenumber.org>, <geekssquad.org>, or <geekssquadbestbuy.org> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BEST BUY or GEEK SQUAD in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to divert users away from Complainant’s own website. The disputed domain names are an attempt to pass off as Complainant by using Complainant’s marks and offering identical services.
Respondent registered and is using the <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names in bad faith. Respondent intentionally seeks to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website(s) where it attempts to pass off as Complainant and offer identical services to those offered by Complainant. Further, Respondent had actual knowledge of Complainant’s rights in the BEST BUY and GEEK SQUAD marks when it registered that at-issue domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BEST BUY and GEEK SQUAD marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the BEST BUY and GEEK SQUAD trademarks.
Respondent uses the at-issue domain names to address a website that is used to pass off as Complainant and offer identical services to those offered by 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 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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has USPTO registrations for its BEST BUY and GEEK SQUAD marks. Each registration is convincing evidence of Complainant’s rights in the relevant mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names each contain either Complainant’s GEEK SQUAD trademark (less its space) or Complainant’s both BEST BUY and GEEK SQUAD trademarks (less their spaces). In each domain name an extra “s” is added to the GEEK SQUAD mark. In one domain name the suggestive term “phonenumber” is added; in another Complainant’s BEST BUY mark is added. Each domain name concludes with the top-level domain name “.org.” Importantly, in each case the differences between Respondent’s domain name and Complainant’s trademark(s) are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names are each confusingly similar to one or more of Complainant’s trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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, Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as either “Pankaj Kashyap” or “Frank John” and the record before the Panel contains no evidence that tends to prove that Respondent is commonly known by any of the of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names address a webpage designed to appear as if it were sponsored by Complainant and offering services that mimic and compete with those services offered by Complainant. Using the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at-issue domain names were registered and are being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to host a website designed to pass off as Complainant and offer services identical to those offered by Complainant. Doing so indicates bad faith regarding Respondent’s registration and use of the domain names pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the BEST BUY and GEEK SQUAD marks when it registered the <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks and Respondent’s unauthorized use of such marks in the several at-issue domain names. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geekssquadphonenumber.org>, <geekssquad.org>, and <geekssquadbestbuy.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 11, 2019
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