DECISION

 

BBY Solutions, Inc. v. Richard Stavis / Geek Support

Claim Number: FA2006001899618

 

PARTIES

Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna, Minnesota, USA.  Respondent is Richard Stavis / Geek Support (“Respondent”), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <geeksquadlive.com> (the “disputed domain name”), registered with Wix.com Ltd. (the “Registrar”).

 

PANEL

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.

 

Lynda M. Braun as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 9, 2020; the Forum received payment on June 9, 2020.

 

On June 11, 2020, the Registrar confirmed by e-mail to the Forum that the <geeksquadlive.com> disputed domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the disputed domain name.  Wix.com Ltd. has verified that Respondent is bound by the Registrar 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”). As required by the Forum, Complainant submitted an Amended Complaint on June 15, 2020 to add Respondent’s name to the Complaint.

 

On June 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@geeksquadlive.com.  Also on June 16, 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.

 

An informal, though timely, Response was received by the Forum on July 1, 2020.

 

After receipt of the Response, the Complainant sent a message to the Forum on July 2, 2020, stating that it wanted to continue with the proceeding.   The Respondent submitted an additional submission stating that it never sent emails impersonating the Complainant. The additional submissions did not comply with Supplemental Rule 7 and thus, were not considered by the Panel.

 

On July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant’s business is computer installation, maintenance, repair and design services and other technical support services. Complainant has rights in the GEEK SQUAD trademark through its registration of numerous trademarks with the United States Patent and Trademark Office (“USPTO”), specifically e.g., Reg. No. 2,744,658, registered July 29, 2003 (the “GEEK SQUAD Mark”). Respondent’s <geeksquadlive.com> disputed domain name is confusingly similar to Complainant’s mark, as Respondent merely adds the dictionary term “live”, followed by the “.com” generic top-level domain (“gTLD”) to Complainant’s GEEK SQUAD Mark. Respondent’s registration and use of the disputed domain name constitutes bad faith because Respondent mimics Complainant’s website and uses the disputed domain name as part of a fraudulent phishing scheme.

 

B. Respondent

Respondent emailed the following in response to the Complaint:

“I have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name. I deleted it and removed it. Sorry.   )”.

 

C. Additional Submissions

See additional submissions referenced in Procedural History, supra.

 

FINDINGS

The Panel finds that Complainant has registered trademark rights in the GEEK SQUAD Mark as described above.  The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s GEEK SQUAD Mark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used 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 disputed 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 disputed domain name; and

(3)  the disputed domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

The Panel concludes that Complainant has rights in the GEEK SQUAD Mark based on the registration of the trademark with the USPTO (e.g., U.S. Reg. No. 2,744,658, registered July 29, 2003).  Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)

 

The Panel also finds that Respondent’s disputed domain name <geeksquadlive.com> is confusingly similar to the GEEK SQUAD Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety and is followed by the dictionary term “live” and then followed by the gTLD “.com”.  Such additions to the disputed domain name are not sufficient to distinguish the disputed domain name from the GEEK SQUAD Mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.

 

Rights or Legitimate Interests

The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.

 

Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the GEEK SQUAD Mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.

 

Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Rather, the Complainant demonstrates that the disputed domain name resolves to a website that impersonates Complainant’s website and uses Complainant’s GEEK SQUAD Mark.

 

Finally, in the present case, Respondent uses the disputed domain name to send fraudulent emails in a phishing scheme. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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))

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.

 

Registration and Use in Bad Faith

The Panel agrees with Complainant that Respondent registered and is using the <geeksquadlive.com> disputed domain name in bad faith. Specifically, Respondent is attempting to pass off as Complainant to deceive Internet users as to the affiliation of the respondent with the complainant. Such use is indicative of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).

 

Furthermore, the Panel finds that Respondent sent emails to Complainant’s customers in an attempt to phish for personal or financial information. Registering a disputed domain name so to send emails seeking personal or financial information under false pretenses is also evidence of bad faith under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.

 

DECISION

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

 

Accordingly, it is Ordered that the <geeksquadlive.com> disputed domain name be TRANSFERRED from Respondent to Complainant.

 

 

Lynda M. Braun, Panelist

Dated:  July 8, 2020