Garmin Switzerland GmbH v. Joseph Deitz
Claim Number: FA2001001877769
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas. Respondent is Joseph Deitz (“Respondent”), Connecticut.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garmineoutlet.com>(‘the Domain Name’), registered with NameCheap, Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2020; the Forum received payment on January 6, 2020.
On January 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <garmineoutlet.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2020 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@garmineoutlet.com. Also on January 13, 2020, 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 7, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant or members of its group are the owner of the mark GARMIN registered, inter alia in the USA for electronic goods with first use recorded as 1991.
The Domain Name, registered in 2020, is confusingly similar to the Complainant’s trade mark adding only the letter “e”, the generic word “outlet” and the gTLD “.com” which do not prevent confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been used to divert consumers to a fake store selling non existent products. Customers have complained they have been scammed. Phishing cannot be a bona fide offering of goods or services or legitimate non commercial or fair use. It is registration and use in bad faith diverting customers for commercial gain and disrupting the Complainant’s business. The fact that the site purports to offer the Complainant’s products shows that the Respondent had actual knowledge of the Complainant, its rights, goods and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant or members of its group are the owner of the mark GARMIN registered, inter alia in the USA for electronic goods with first use recorded as 1991.
The Domain Name registered in 2020 has been used for a store using the Complainant’s logo to suggest an official site of the Complainant. It has been said to be phishing, but no evidence of that has been included in the Complaint.
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
The Domain Name in this Complaint comprises the mark GARMIN owned by the Complainant or members of its group registered, inter alia, in the USA with first use recorded as1991, the letter “e”, the generic term “outlet” and the gTLD “.com”.
Panels have found that adding one letter to a registered mark does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015)(finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’).
The addition of the generic word “outlet” does not serve to distinguish the Domain Name from the Complainant’s mark which is still recognisable in the mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).)
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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).
The web site attached to the Domain Name uses the Complainant's logo to offer retail services not connected with the Complainant. The use is commercial and so cannot be non commercial legitimate fair use. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See AM.Intl. Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the Complainant’s business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s logo to suggest the site attached to the Domain Name is an official site of the Complainant. The use of the Complainant’s logo as the masthead of the site to purport to sell the Complainant’s products shows that the Respondent has actual knowledge of the Complainant, its business, rights, goods and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex.Int’l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to point to competing dealerships not connected with the Complainant’s business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was, therefore, evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <garmineoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 8, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page