BBY Solutions, Inc. v. Rahul Raj
Claim Number: FA2201001980425
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Giulio E. Yaquinto, Texas, USA. Respondent is Rahul Raj (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trendmicrogeeksquad.com>, registered with NameSilo, LLC.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2022; the Forum received payment on January 14, 2022.
On January 14, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <trendmicrogeeksquad.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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”).
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 e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@trendmicrogeeksquad.com. Also on January 19, 2022, 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 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant engages in the business of computer installation, maintenance, repair and design services and other technical support services. Complainant has rights in the GEEK SQUAD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. B. Respondent’s <trendmicrogeeksquad.com> domain name is confusingly similar to Complainant’s GEEK SQUAD mark. Respondent incorporates the mark in its entirety and adds the third-party trademark TREND MICRO along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interest in the <trendmicrogeeksquad.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the GEEK SQUAD mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer services that compete with Complainant’s business.
Respondent registered and used the <trendmicrogeeksquad.com> domain name in bad faith as Respondent uses the disputed domain name to offer services that compete with Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the GEEK SQUAD mark due to the fame and use of the mark in commerce.
B. Respondent
Respondent failed to submit a formal Response in this proceeding addressing the substantive issues. However, on November 20, 2021, Respondent sent an email to the Forum which, formal parts omitted, stated “…i don't know who the hell created all this mess in my personal information. I am totally in favor of you guys to take down these websites. I replied same for the earlier website as well. If they (hackers) have created this in my name, i give you full authority to take these websites down and tale (sic) these websites into your custody.”
That communication raises two issues to which the Panel will now turn.
PRELIMINARY ISSUES: TRANSFER BY CONSENT AND IDENTITY THEFT
The email sent by Respondent to the Forum first raises the issue of whether Respondent has consented to the transfer of the domain name to Complainant to the extent that it is not necessary or appropriate to do anything more than to order the transfer of the domain name without the traditional examination of whether the elements arising under the UDRP have been proved or not. A panel certainly has a discretionary power to adopt that approach and this panelist, like others, has made many such orders. However, in view of the limitations of the forensic mechanisms available to a panelist, it is often difficult to assess the real intentions of a named respondent in registering a domain name and the reason why it might not want an examination of all the issues to be on the record. The Panel has weighed this issue carefully and has decided that in all the circumstances the proceeding should be dealt with in the usual way with an examination and decision on all of the substantive issues.
The email also states that in the opinion of the Respondent, its email account has been hacked and that, in effect, the domain name was created falsely in Respondent’s name without its knowledge. Respondent does not literally ask for its identity to be protected and/or excised from the decision but its email does at least raise that prima facie question. Again, it must be said that the powers and mechanism available to a panelist make it difficult for a panel to assess the involvement of a named respondent in registering a domain name and whether its identity should be redacted so that it is not on the record as being responsible for the registration. The panel is faced here with two requirements of the Policy and the Rules.
The first is the requirement under paragraph 4 (j) of the Policy to the effect that the decision in this type of proceeding “ will be published in full over the internet.” The same provision creates an exception to that requirement in terms of “except when an Administrative Panel determines in exceptional circumstances to redact portions of its decision”. So there is a discretion in the Panel, that must be exercised judicially, to redact those parts of a decision that identify a person who is registered as the owner of a domain name but who makes out a case that its identity has been stolen. Whether the named respondent in this case has had its identity hijacked is equivocal; it certainly claims that it has been. However, the Panel must make its own decision on this while assessing the evidence as a whole and what it shows. The Panel finds in all the circumstances that a case has not been made out that any part of this decision should be redacted.
Moreover, Rule 3 (v), with no exception and with the emphasis of its being mandatory ( by use of the word “shall”) make it clear that the proceeding is to be brought against the person or entity that is registered as the holder of the domain name and, in effect, although obviously not stated in these words, whether the name given is true or false. Indeed, the domain name arbitration system could not function without that requirement, a fact that is made apparent by the large number of false names given as registrants of domain names.
Accordingly, this proceeding had to be and was correctly instituted by Complainant by giving as the Respondent the name of the entity registered as the holder of the domain name registration. The Panel’s conclusion is therefore that the proceeding was properly brought against the person or entity registered as the domain name holder.
The decision will therefore be published in full and the name and identity of the Respondent will not be redacted.
However, if the Respondent ever needs to disclaim its own involvement in the registration and use of the domain name in question, it can point to the fact that it wrote to the Forum on November 20, 2021, immediately it was served with the Complaint, putting its case as set out above and noting that it became the Respondent in this proceeding because it was registered by the registrar as the holder of the relevant domain name registration.
The Panel will therefore deal with the Complaint in the traditional way of analyzing all three elements that have to be proved under the UDRP.
1.Complainant is a United States company engaged in the business of computer installation, maintenance, repair and design services and other technical support services.
2. Complainant has established its trademark rights in the GEEK SQUAD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,744,658, registered July 29, 2003).
3. Respondent registered the <trendmicrogeeksquad.com> domain name on April 22, 2019.
4. Respondent has caused the disputed domain name to be used to offer services that compete with Complainant’s business, which shows Respondent has no rights or legitimate interests in the domain name and that it registered and used the domain name 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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GEEK SQUAD mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of its USPTO registrations for the GEEK SQUAD mark (e.g. Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. B. Therefore, the Panel finds Complainant has rights in the mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GEEK SQUAD mark. Complainant argues that Respondent’s <trendmicrogeeksquad.com> domain name is confusingly similar to Complainant’s GEEK SQUAD mark because registration of a domain name that contains a mark in its entirety and adds an additional third party mark along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Panera, LLC and Pumpernickel Associates, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation, FA 1760812 (Forum Jan. 8, 2018) (finding confusing similarity where the domain name included the complainants mark, plus the addition of the third-party mark WORKDAY, which belonged to a provider of salary and other services used by Complainant; holding however “that “workday” is a dictionary term which can be treated as generic and of lessor distinctive value when joined with Complainant’s trademark”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the third-party trademark TREND MICRO along with the “.com” gTLD. Therefore, as the Panel agrees, it find that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GEEK SQUAD mark and to use it in its domain name, adding a third-party trademark, namely TREND MICRO, to the mark;
(b) Respondent registered the <trendmicrogeeksquad.com> domain name on April 22, 2019;
(c) Respondent has caused the disputed domain name to be used to offer services that compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <trendmicrogeeksquad.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 GEEK SQUAD mark or register domain names using Complainant’s mark. 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 mark 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 “Rahul Raj” and there is no other evidence to suggest that Respondent was authorized to use the GEEK SQUAD mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer services that compete with Complainant’s business. Use of a disputed domain to offer services that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with screenshots of Respondent’s <trendmicrogeeksquad.com> domain name that offers antivirus and threat protection which competes with Complainant’s business under the GEEK SQUAD mark. See Compl. Ex. E. Therefore, the Panel 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).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, other than by its email to the Forum, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <trendmicrogeeksquad.com> domain name in bad faith as Respondent uses the disputed domain name to offer services that compete with Complainant’s business. Use of a disputed domain name to offer services that compete with a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Here, Complainant has provided the Panel with screenshots of Respondent’s resolving <trendmicrogeeksquad.com> domain name that offers antivirus and threat protection which competes with Complainant’s business under the GEEK SQUAD mark. See Compl. Ex. E. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the GEEK SQUAD mark at the time of registering the <trendmicrogeeksquad.com> domain name. The Panel may disregard arguments of bad faith based on constructive notice as prior UDRP decisions tend not to find bad faith as a result of mere 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.”). However, the Panel will determine whether Respondent had actual knowledge of Complainant's rights in the mark 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 position, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel finds that Respondent had actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel now makes.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GEEK SQUAD mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trendmicrogeeksquad.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: February 14, 2022
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