BBY Solutions, Inc. v. Varghese Zachariah
Claim Number: FA1911001870485
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, United States. Respondent is Varghese Zachariah (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <computergeekssquad.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2019; the Forum received payment on November 8, 2019.
On November 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <computergeekssquad.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 November 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@computergeekssquad.com. Also on November 13, 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 December 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of providing services involving computer installation, maintenance and repair, as well as technical support and related consulting services.
Complainant holds a registration for the GEEK SQUAD service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,744,658, registered July 29, 2003.
Respondent registered the domain name <computergeekssquad.com> on February 3, 2017.
The domain name is confusingly similar to Complainant’s GEEK SQUAD mark.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the GEEK SQUAD mark in a domain name.
Respondent uses the domain name to resolve to a website from the operation of which it seeks to profit by offering computer-related services in competition with the business of Complainant.
Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has attempted to sell the domain name to Complainant.
Respondent’s use of the domain name deceives Internet users by suggesting that an affiliation with Complainant exists when there is none.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent has failed to submit a response to the Complaint in compliance with the requirements of the Policy and its attendant Rules. However, in an e-mail message addressed to the Forum, Respondent has declared in substance, and among other things, that:
Respondent’s domain name is not identical to Complainant’s GEEK SQUAD service mark.
Respondent does not sell any product like those of Complainant.
Instead, Respondent employs the domain name to market its services aimed at managing office IT infrastructure.
Respondent is willing to sell the domain name to Complainant.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the GEEK SQUAD service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a UDRP complainants had established rights in a mark adequate for purposes of Policy ¶ 4(a)(i) where that mark was registered with a national trademark authority).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <computergeekssquad.com> domain name is confusingly similar to Complainant’s GEEK SQUAD service mark. The domain name incorporates the mark in its entirety, merely eliminating the space between its terms and adding the letter “s” plus the generic term “computer,” which is descriptive of the essential context of the business of Complainant, and the generic Top-Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum January 2, 2018):
Respondent’s … Domain Name is confusingly similar to Complainant’s … mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).
See also FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (Forum June 23, 2015) (finding a domain name confusingly similar to the mark of a UDRP complainant, and noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter ‘s.’”).
Specific to two of the points enumerated above, Respondent’s removal of the space between the terms of Complainant’s mark and its addition to the mark of a gTLD in creating the domain name are of no consequence to our analysis because domain name syntax does not permit the use of blank spaces, while every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested <computergeekssquad.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <computergeekssquad.com> domain name, and that Complainant has not authorized Respondent to use the GEEK SQUAD mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Varghese Zachariah,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <computergeekssquad.com> domain name to resolve to a website from the operation of which it seeks to profit by offering computer-related services in competition with the business of Complainant. Complainant supports its contentions with proof in the form of screen shots of illustrative pages from Respondent’s resolving website. Respondent, while denying Complainant’s assertions, offers no evidence in support of its contentions. On this record, we are compelled to conclude that Respondent’s employment of the disputed domain name, as alleged in the Complaint, constitutes neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that a respondent was not using domain names for either a bona fide offering of goods or services within the ambit of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as provided in Policy ¶ 4(c)(iii) where that respondent used them to divert Internet users to a website offering services in competition with those marketed by a UDRP complainant under its marks).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s domain name, <computergeekssquad.com>, which we have found to be confusingly similar to Complainant’s GEEK SQUAD service mark, represents an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with it and its resolving website. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum February 26, 2015):
Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore[,] the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith [in both the registration and use of the domain name] under Policy¶ 4(b)(iv).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the GEEK SQUAD mark when it registered the contested <computergeekssquad.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s rights in a mark from which a challenged domain name was derived, and, therefore, bad faith registration of that domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <computergeekssquad.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 10, 2019
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