DECISION

 

Garmin Switzerland GmbH v. Shivang Gandotra

Claim Number: FA1911001872302

 

PARTIES

Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., United States. Respondent is Shivang Gandotra (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <garminmapupdates.net>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 21, 2019; the Forum received payment on November 21, 2019.

 

On November 22, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garminmapupdates.net> 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 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@garminmapupdates.net.  Also on November 25, 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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Garmin Switzerland GmbH, is in the business of manufacture and sale of navigation devices. Complainant has rights in the GARMIN mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,288,989, registered Oct. 26, 1999). See Compl. Ex. C. Respondent’s <garminmapupdates.net> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply appending generic or descriptive terms.

2.    Respondent does not have rights or legitimate interests in the <garminmapupdates.net> domain name. Respondent is not licensed or authorized to use Complainant’s GARMIN mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to offer competing services. In addition, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a phishing scheme.

3.    Respondent registered and uses the <garminmapupdates.net> domain name in bad faith because Respondent uses the domain name to impersonate Complainant and attract users to Respondent’s site in order to conduct a phishing scheme. Also, Respondent had actual knowledge of Complainant’s rights in the mark shown by Respondent’s use of the domain name to impersonate Complainant.

B.   Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <garminmapupdates.net> domain name is confusingly similar to Complainant’s GARMIN mark.

2.    Respondent does not have any rights or legitimate interests in the <garminmapupdates.net> domain name.

3.    Respondent registered or used the <garminmapupdates.net> domain name in bad faith.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the GARMIN mark based upon registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant has provided copies of its USPTO registrations for the GARMIN mark (e.g., Reg. No. 2,288,989, registered Oct. 26, 1999). See Compl. Ex. C. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <garminmapupdates.net> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the mark, simply appending generic or descriptive terms to the mark. While not argued by Complainant, the Panel may note the disputed domain name also adds the “.net” generic top-level domain (“gTLD”) to form the disputed domain name.  A domain name that adds a gTLD and generic/descriptive terms may still be confusingly similar to a registered mark when that mark is included entirely in the domain name per Policy ¶ 4(a)(i). See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Here, the disputed domain name wholly incorporates the GARMIN mark, merely adding the term “map updates” and the “.net” gTLD. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 argues that Respondent does not have rights or legitimate interests in the <garminmapupdates.net> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the GARMIN mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). Here, WHOIS information lists the registrant as “Shivang Gandotra,” and not information of record suggests that Respondent was licensed or authorized to use the GARMIN mark. See Compl. Ex. F. Thus, the Panel finds that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant argues that Respondent uses the <garminmapupdates.net> domain name to redirect users to Respondent’s competing website. Use of a disputed domain name to offer competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that Respondent references  Complainant’s mark at the top of the webpage and offers services in direct competition with Complainant. See Compl. Ex. F. The Panel finds that Respondent’s use of the <garminmapupdates.net> domain name to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).

 

In addition, Respondent uses the <garminmapupdates.net> domain name to impersonate Complainant in furtherance of a phishing scheme. Impersonating a complainant’s webpage in order to attract users is not a bona fide offering of goods or services or a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant claims that the disputed domain name’s resolving webpage is a fake customer support page that disrupts Complainant’s business by tricking customers into calling a fake support number designed to solicit personal information. Complainant provides screenshots of the resolving page to support its allegation. See Compl. Ex. F. Therefore, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <garminmapupdates.net> domain name in bad faith because Respondent uses the domain name impersonate Complainant and engage in a phishing scheme. Use of a disputed domain name to intentionally attract customers to a respondent’s website for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients.  Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). Complainant claims that Respondent’s webpage attracts Complainant’s customers for commercial gain by posing as Complainant’s support page and tricking users into calling the fraudulent support number. Complainant provides a screenshot of the resolving webpage. See Compl. Ex. E. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).

 

Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the GARMIN mark shown by Respondent’s use of the <garminmapupdates.net> domain name to impersonate Complainant. Actual knowledge can be shown by a respondent attempting to pass itself off as the owner of the mark. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant argues that Respondent’s use of the disputed domain name to pass off as Complainant’s customer support is evidence that Respondent had actual knowledge in Complainant’s rights in the mark. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(a)(iii).DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

DECISION

Accordingly, it is Ordered that the <garminmapupdates.net> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  December 31, 2019