Garmin Switzerland GmbH v. Cash Mone / Bestinrnarknet
Claim Number: FA2003001889400
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Cash Mone / Bestinrnarknet (“Respondent”), Uganda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garnnin.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2020; the Forum received payment on March 23, 2020.
On March 24, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <garnnin.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@garnnin.com. Also on March 25, 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 April 19, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its claimed rights in the GARMIN trademark and service mark acquired through its ownership of the portfolio of registrations described below and through the goodwill which it claims to have established in the GARMIN mark by extensive international use in relation to its range of products and services. Complainant asserts that it has offices in over 60 countries and sells its products online and in stores throughout the world. In 2017, Complainant’s total revenue exceeded 3 billion dollars.
Complainant asserts that since at least 2000, it has continuously used the GARMIN mark on the website to which the domain name <garmin.com> directs.
Complainant submits that the Disputed Domain Name <garnnin.com> mimics and is essentially identical and confusingly similar to Complainant’s registered trademark GARMIN, arguing that when viewed in the context of an email <garnnin.com> appears to look like <garmin.com>.
Complainant submits that Respondent has no rights or legitimate interests in the Disputed Domain Name. In support of this allegation Complainant refers to a copy of an email addressed to a third party which is adduced in evidence as an annex to the Complaint.
The email dated March 5, 2020 purports to come from “CLIFF PEMBLE, Managing Director, GARMIN LTD. Olathe, Kansas, United States, Tel:< supplied but redacted by this Panel> Email: SALES@GARNNIN.COM Website: HTTPS://WWW.GARNNIN.COM”. The sender states that he wishes to place an order for external hard drives and requests a credit facility.
Complainant submits that Respondent is not commonly known by the Disputed Domain Name and cannot point to any evidence establishing that it is legally chartered or commonly known as Garmin. Complainant alleges that the name given by the registrant to register the disputed domain name is not correct and is used to retain the registrant’s anonymity. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 470335 (Forum Aug. 3, 2006) (finding that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on WHOIS information and other evidence in the record).
Complainant argues that the email adduced in evidence shows that Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services, but instead, Respondent uses the Disputed Domain Name to send scam emails and phish Garmin’s customers.
Complainant adds that Respondent failed to discharge its duty to select, register, and use a domain name that does not infringe the rights of a third party. Policy ¶ 2(b) requires the registrant to warrant, “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” The requirement of Policy ¶ 2(b) implies an affirmative duty to select and register a domain name that does not infringe a third party’s rights. Therefore, Respondent is responsible for investigating whether its domain name infringes upon another’s rights. See Collegetown Relocation, L.L.C. v. Mamminga, FA 95003 (Forum July 20, 2000) (“When registering domain names, the Respondent has a duty to investigate and refrain from using a domain name that infringes on a third party’s rights.”).
Complainant alleges that Respondent uses the Disputed Domain Name to phish Garmin’s customers and argues that such use is not a legitimate or noncommercial fair use. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Ohanz, FA1802001772710 (March 20, 2018) (Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use)
Complainant submits that although it is required to make a prima facie showing that Respondent has no rights or legitimate interests in the mark, the burden of proof is light since evidence of this element lies most directly within Respondent’s own knowledge. Ebay Inc. v. Wangming, D2006-1107 (WIPO Dec. 28, 2006). Once Complainant meets that light burden, the evidentiary burden shifts to Respondent to rebut the showing. In this case, the evidence shows that Respondent lacks any rights or legitimate interests in the <garnnin.com> domain name.
Complainant further submits that the Disputed Domain Name was registered and is being used in bad faith arguing that its rights in the GARMIN mark were established prior to the registration of the disputed domain name and further that a basic investigation by Respondent would have revealed Complainant’s rights to the GARMIN mark.
Complainant further alleges that the Disputed Domain Name is being used to phish Complainant’s customers because <garnnin.com> looks identical to <garmin.com> when viewed on a computer monitor or smartphone screen. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Ohanz, FA1802001772710 (March 20, 2018) where the panel considered a nearly identical fact pattern and referred inter alia to the decision in Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4(b)(iii)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of GPS navigation devices and wearable technology and is the owner of a large portfolio of registered trademarks for the GARMIN mark including
· United States registered trademark GARMIN, registration number 2,888,989, registered on the Principal Register on October 26, 1999 for goods in international class 9;
· United States registered trademark and service mark GARMIN (design), registration number 3,468, 551, registered on the Principal Register on July 15, 2008 for goods and services in international classes 9, 10, 38, 39 and 42;
· United States registered trademark GARMIN (design), registration number 3,468, 553,registered on the Principal Register on July 15, 2008 for goods in international classes 9.
Complainant has an established Internet presence. The domain name <garmin.com>, owned by its subsidiary company Garmin International Inc., which is the address of its official website, was registered on May 2, 1995.
The disputed domain name <garnnin.com> was registered on October 17, 2019 and has been used as an email address to send a message purporting to emanate from Complainant to a supplier of external hard drives purporting to purchase computer hardware products and to request a line of credit.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the Forum’s request for verification of the details of the registration of the disputed domain name in the course of this proceeding.
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”).
Complainant has adduced convincing, uncontested evidence of its rights in the GARMIN trademark and service mark acquired through its ownership of the portfolio or registrations described above and through the goodwill in the mark established through use on and connection its extensive international marketing of its goods and services.
The disputed domain name <garnnin.com> is almost identical in appearance to Complainant’s GARMIN mark. The two adjacent letters “nn” give an appearance which is easily confused with the letter “m”.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore the disputed domain name is confusingly similar to the trademark GARMIN in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name arguing that Respondent is not commonly known by the Disputed Domain Name; that Respondent cannot point to any evidence establishing that it is legally chartered or commonly known as Garmin; that Respondent has used a false name to protect his identity; that Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services, but instead, Respondent uses the Disputed Domain Name to send scam emails and phishing; that accordingly, Respondent’s use of the Disputed Domain Name to phish Garmin customers is not bona fide, legitimate or noncommercial fair use; that Respondent failed to discharge its affirmative duty to select and register a domain name that does not infringe a third party’s rights.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name is confusingly similar to Complainant’s GARMIN mark and the <garmin.com> domain name used by Complainant as the address of its website.
Complainant has adduced in evidence annexed to the Complaint a copy of an email which was sent using the disputed domain name as the sender’s address. In the email the sender requests credit facilities for the supply of external hard drives for computers. The content of the email purports to create the impression that the email is emanating from Complainant.
This Panel finds that on the balance of probabilities the facts in this Complaint point to a classic example of typosquatting. The substitution of the letters “nn” for the letter “m” was on the balance of probabilities done in order to create confusion.
Since it was registered the disputed domain name has been used by Respondent to contact a supplier purporting to establish a line of credit for the supply of external hard drives. Complainant has alleged that this is a phishing activity carried out by Respondent which has not been denied.
This Panel finds therefore that the disputed domain name was registered in bad faith in an act of typosquatting and has since been used in bad faith in an intentional attempt to deceive Internet users by impersonating Complainant in email correspondence.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of 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 <garnnin.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 20, 2020
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