Garmin Switzerland GmbH v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2107001956887
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garminesupport.com>, registered with Internet Domain Service BS Corp.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2021; the Forum received payment on July 27, 2021.
On July 28, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <garminesupport.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 July 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2021 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@garminesupport.com. Also on July 29, 2021, 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 August 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is a leading provider of GPS navigation devices and wearable technology. Complainant has rights in the GARMIN trademark due to its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,288,989, registered Oct. 26, 1999). Respondent’s <garminesupport.com> domain name is confusingly similar to Complainant’s GARMIN trademark. Respondent incorporates the trademark in its entirety and adds the generic term “support” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <garminesupport.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the trademark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial use. Instead, Respondent attempts to divert internet users to a fake customer support page.
Respondent registered and used the <garminesupport.com> domain name in bad faith as Respondent misleads consumers to a fake customer support page. Respondent had actual knowledge of Complainant’s rights in the GARMIN trademark due to the long standing and use of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,288,989 GARMIN (word), registered October 26, 1999 for goods in Int. Class 9;
No. 3,468,551 GARMIN (fig), registered July 15, 2008 for goods and services in Int. Classes 9, 10, 38, 39 and 42; and
No. 3,468,553 GARMIN (fig), registered July 15, 2008 for goods in Int. Class 9.
The disputed domain name <garminesupport.com> was registered April 19, 2021.
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”).
The Complainant claims to have rights in the GARMIN trademark due to its registration of the trademark with the USPTO, as well as a number of national trademark registrations in other countries around the world. Registration of a mark with the USPTO is sufficient to show rights in a trademark per 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registrations for the GARMIN trademark (e.g. Reg. No. 2,288,989, registered Oct. 26, 1999). Therefore, the Panel finds that Complainant has shown rights in the GARMIN trademark per policy ¶ 4(a)(i).
The Complainant argues that Respondent’s <garminesupport.com> domain name is confusingly similar to Complainant’s GARMIN trademark. Registration of a domain name that contains a trademark in its entirety and only adds a generic word and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “support” along with the “.com” gTLD. The Panel notes that, if at all being considered, the added descriptive word “support” rather is an indication for the users that the connected web site and/or e-mail are supporting services provided by the Complainant. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
In the present case, Complainant argues that Respondent lacks rights or legitimate interest in the <garminesupport.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the GARMIN trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Domain Admin / Whois Privacy Corp.” and there is no other evidence to suggest that Respondent was authorized to use the GARMIN trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial use. Instead, Respondent attempts to divert internet users to a fake customer support page. Use of a disputed domain name to divert internet users into thinking respondent’s domain name is associated or affiliated with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s trademark and various photographs related to the complainant’s business). Here, Complainant has provided the Panel with screenshots of Respondent’s <garminesupport.com> domain name that shows links to related products and services that compete against Complainant. The Panel agrees with the Complainant, and finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Complainant argues that Respondent registered and used the <garminesupport.com> domain name in bad faith as Respondent misleads consumers to a fake customer support page. Use of a disputed domain name to mislead consumers into thinking a respondent is associated with a complainant may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Here, Complainant has provided the Panel with screenshots of Respondent’s <garminesupport.com> domain name that clearly shows links to related goods and services that compete against Complainant. Therefore, the Panel agree and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant further argues that Respondent had knowledge of Complainant’s rights in the GARMIN trademark at the time of registering the <garminesupport.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to finds bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Instead, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel finds that the facts of the case and behavior of the Respondent, clearly indicates that Respondent did have actual knowledge of Complainant’s right in its trademark, and finds bad faith under Policy ¶ 4(a)(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 <garminesupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 26, 2021
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