BBY Solutions, Inc. v. VMI INC / Domain Customer 28253 / Whois Protection Service LTD
Claim Number: FA2201001980281
Complainant is BBY Solutions, Inc. ("Complainant"), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is VMI INC / Domain Customer 28253 / Whois Protection Service LTD ("Respondent"), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <geeksquadtechsupport.com>, registered with GoDaddy.com, LLC, and <geeksquadsupport.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2022; the Forum received payment on January 13, 2022.
On January 14, 2022, GoDaddy.com, LLC confirmed by email to the Forum that the <geeksquadtechsupport.com> domain name is registered with GoDaddy.com, LLC and that Respondent VMI INC 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"). An equivalent confirmation was received on the same date from PSI-USA, Inc. dba Domain Robot concerning the registration of the <geeksquadsupport.com> domain name by Respondent Domain Customer 28253 / Whois Protection Service LTD.
On January 19, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@geeksquadtechsupport.com, postmaster@geeksquadsupport.com. Also on January 19, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations 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 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
Complainant alleges that the disputed domain names are under common control. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant notes inter alia that the domain names both incorporate the GEEK SQUAD mark in its entirety, and differ only by the inclusion of the generic term "tech" in one of the domain names; that one was registered only a few weeks after the other; that they are being used for parking-page websites composed of paid links, and that these websites are identical to one another in look and feel; and that both websites include a link redirecting consumers to pages on a website at the domain name <justanswer.com>, which promotes services that compete with Complainant's offerings.
The Panel also notes that both domain names were registered in the names of privacy registration services, presumably in an effort to obscure the identity of the beneficial registrant, and that Respondent has not come forward to dispute the allegation that it is one entity acting under multiple aliases, nor to object to the inclusion of both domain names in this proceeding. Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity. See Takeda Pharmaceutical Co. Ltd. v. H R / Bryant Rashaad, FA 1937230 (Forum Apr. 21, 2021) (treating domain names as being under common control in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Barbara Metzger / Lucas Farber, FA 1936247 (Forum Apr. 15, 2021) (same).
A. Complainant
Complainant offers computer installation, maintenance, repair, and design services and other technical support services under the GEEK SQUAD mark. Complainant and a predecessor in interest have used the mark for this purpose continuously since at least as early as 1994. Complainant owns longstanding U.S. trademark registrations for GEEK SQUAD in both standard character and design form.
The disputed domain names <geeksquadtechsupport.com> and <geeksquadsupport.com> were registered via privacy registration services in May and June 2021, respectively. Each domain name resolves to a website composed of pay-per-click links related to technical support services. Complainant states that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain names <geeksquadtechsupport.com> and <geeksquadsupport.com> are confusingly similar to its GEEK SQUAD mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <geeksquadtechsupport.com> and <geeksquadsupport.com> incorporates Complainant's registered GEEK SQUAD trademark (with the space omitted), adding the generic terms "tech" and "support" in one instance and just "support" in the other, and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., BBY Solutions, Inc. v. Dev Kumar / John Kies / Nitin Tyagi / Devendra Tyagi / Nitin Kumar / White Apple / Ballu Balwanta / Vikas Kumar, FA 1798780 (Forum Sept. 5, 2018) (finding <geeksquad-tech-support.com> and <geeksquad-support.com> confusingly similar to GEEK SQUAD). The Panel considers the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Both of the disputed domain name incorporate Complainant's registered mark without authorization, and their sole apparent use has been for nearly identical websites composed of pay-per-click links, including links to competitors of Complainant. Such use does not give rise to rights or legitimate interests for purposes of the Policy. See, e.g., priceline.com LLC v. Domain Administrator / Fundacion Privacy Services LTD, FA 1868073 (Forum Nov. 29, 2019) (finding lack of rights or interests in similar circumstances); BBY Solutions, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1618164 (Forum June 22, 2015) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used privacy registration services to register two domain names incorporating Complainant's registered mark. The domain names are being used to display pay-per-click link pages that include links to competitors of Complainant, and that the Panel infers are intended to generate clickthrough or referral fees for Respondent. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., priceline.com LLC v. Domain Administrator / Fundacion Privacy Services LTD, supra (finding bad faith in similar circumstances); United Nations Federal Credit Union v. Haimin Xu, FA 1764638 (Forum Jan. 29, 2018) (same); BBY Solutions, Inc. v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, supra (same). The Panel also notes that Respondent appears to have a history of bad faith domain name registrations, evidenced by a series of adverse findings in proceedings under the Policy. See, e.g., PNC Financial Services Group, Inc. v. VMI INC, FA 1975375 (Forum Dec. 28, 2021) (ordering transfer of <pncfoundation.com>); HRB Innovations, Inc. v. VMI INC, FA 1967119 (Forum Nov. 4, 2021) (ordering transfer of <taxhrblock.com>); Mayo Foundation for Medical Education & Research v. VMI Inc, FA 1817602 (Forum Dec. 28, 2018) (ordering transfer of <mayocliniclaboratories.com>). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geeksquadtechsupport.com> and <geeksquadsupport.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 14, 2022
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