BBY Solutions, Inc. v. ADMINISTRATIVE CONTACT / AAAGEEKSQUAD.COM
Claim Number: FA1908001855345
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA. Respondent is ADMINISTRATIVE CONTACT / AAAGEEKSQUAD.COM (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aaageeksquad.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 1, 2019; the Forum received payment on August 1, 2019.
On August 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <aaageeksquad.com> 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 August 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@aaageeksquad.com. Also on August 7, 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.
A timely Response was received and determined to be complete on August 28, 2019.
On August 30, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.
Complainant requests that the domain name <aaageeksquad.com>, be transferred from Respondent to Complainant.
A. Complainant
Complainant operates retail stores that offer electronic goods as well as computer maintenance, repair, and design services. Complainant has rights in the GEEK SQUAD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. C. Respondent’s <aaageeksquad.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds a repeating letter “a” three times in front of the wholly integrated mark, and appends the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <aaageeksquad.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to divert Internet users to a website that offers unauthorized and competing services.
Respondent registered and used the <aaageeksquad.com> domain name in bad faith as Respondent is attempting to attract Internet users for commercial gain. Furthermore, Respondent attempted to sell the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights in its mark.
B. Respondent
Respondent is a self-employed consultant that works with individual clients for software development and infrastructure setup. Respondent’s <aaageeksquad.com> domain name is not confusingly similar to Complainant’s website, <geeksquad.com> domain name.
Respondent has rights and legitimate interests in the <aaageeksquad.com> domain name as Respondent’s use is for a legitimate business unrelated to Complainant’s business. Respondent also uses a disclaimer at the domain name’s resolving website.
Respondent did not register or use the disputed domain name in bad faith. Respondent used a disclaimer on the resolving webpage to inform Internet users that Respondent is not connected to Complainant. The Panel also notes that the <aaageeksquad.com> domain name was registered on October 21, 2008.
(1) The domain name <aaageeksquad.com>, 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 <aaageeksquad.com>; and
(3) the domain name <aaageeksquad.com> has been 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.
Complainant claims rights in the GEEK SQUAD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. C. The Panel rules that Registration with the USPTO suffices to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that the Complainant has rights in the GEEK SQUAD mark under Policy ¶ 4(a)(i).
Complainant avers that Respondent’s <aaageeksquad.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds a repeating letter “a” three times in front of the wholly integrated mark and the “.com” generic top-level domain (“gTLD”). The mere adding of letters and a gTLD to an otherwise recognizable mark does not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
Panel rules that “GeekSquad” is the dominant and distinguishable portion of Complainant’s Mark. AAA is not the memorable portion of the mark. That is, customers would tend to call for “GeekSquad” irrespective of the Triple A initiator. The preface “AAA’ is a non-descriptive preface…a curtain of confusion fabricated for unwary customers. Panel therefore rules, that as the dominant portion of Respondent’s mark, that is GeekSquad, is identical and/or confusingly similar to that of Complainant’s mark, that Respondent’s mark in its entirety is identical and/or confusingly similar with Complainant’s mark of GeekSquad.
Therefore, the Panel finds that Respondent’s <aaageeksquad.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests.
See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant convincingly argues that Respondent has no rights or legitimate interests in the <aaageeksquad.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Furthermore, lack of authorization to use a complainant’s mark indicates that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The Panel notes that while the WHOIS of record identifies the Respondent as “ADMINISTRATIVE CONTACT/ AAAGEEKSQUAD.COM” no information in the record indicates that Respondent was authorized to use Complainant’s mark, nor that Respondent was commonly known by the disputed domain name. See Compl. Ex. A. Further, Respondent failed to provide affirmative evidence to support ownership of the name registered in WHOIS. Registration. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <aaageeksquad.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant offers compelling evidence that Respondent fails to use the <aaageeksquad.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to divert Internet users to Respondent’s competing business. Use of a disputed domain name to divert Internet users seeking complainant to a confusingly similar website is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provided a screenshot of the <aaageeksquad.com> domain name’s resolving webpage, showing a webpage offering IT consulting in a similar vein as Complainant’s business. See Compl. Ex. D. Therefore, the Panel finds that Respondent fails to use the <aaageeksquad.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Panel rules that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). And Panel concomitantly rules that Respondent has not met its shifted burden to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii).
Respondent registered and used the <aaageeksquad.com> domain name in bad faith as Respondent attempted to sell the disputed domain name to Complainant. Offering to sell a disputed domain name can be evidence of bad faith registration and use under Policy ¶4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Here, Complainant provided an email correspondence with Respondent, which suggests that Respondent had made an offer to sell the disputed domain name. See Compl. Ex. E. Therefore, the Panel finds that Respondent registered and used the <aaageeksquad.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant has presented compelling evidence that Respondent registered and used the <aaageeksquad.com> domain name in bad faith as Respondent is attempting to attract Internet users for commercial gain. Registration and use of a disputed domain name with the purpose of deceiving Internet users into believing an affiliation exists between respondent and complainant can be evidence of bad faith. See DatingDirect.com Ltd. V. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Here, Complainant provided a screenshot of the <aaageeksquad.com> domain name’s resolving webpage, showing a webpage offering IT consulting in a confusingly similar fashion to Complainant’s business. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and used the <aaageeksquad.com> domain name in bad faith under Policy ¶ 4(b)(iv).
The Panel rules that Complainant’s submitted evidence supports a finding that Respondent had actual knowledge of Complainant’s rights in the GEEK SQUAD mark at the time of registering the <aaageeksquad.com> domain name. Complainant commenced use of Geek Squad in 1994 and registered the mark with the USPTO in 2003. Whereas, Respondent registered the disputed domain name of <aaageeksquad.com> in 2008. Complainant has continuously used the Geek Squad mark in commerce in the United States through extensive advertising and promotion using such media as a website, print and television advertising, in store signage and on Geekmobiles.
Bad faith use is also evidenced via the waiver of affiliation with Complainant posted by Respondent, which by its very nature, admits the existence and use of confusingly similar marks.
Respondent’s actual knowledge of competing marks, both at time of registration and during term of usage, sufficiently demonstrates bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Respondent’s actual knowledge of confusingly similar marks is evidenced by Complainant’s trademark registrations, the notoriety of Complainant’s mark, Respondent’s avowed disclaimer as to its affiliation with Complainant, and the similarities between the services offered by Respondent to Complainant’s services. See Compl. Exs. B, C, D. Considering the totality of the circumstances, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aaageeksquad.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: September13, 2019
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