BBY Solutions, Inc. v. Domain Administrator
Claim Number: FA2201001980481
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Giulio E. Yaquinto, Texas, USA. Respondent is Domain Administrator (“Respondent”), Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webrootgeeksquad.us>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2022; the Forum received payment on January 14, 2022.
On January 17, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <webrootgeeksquad.us> 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 the U.S. Department of Commerce’s usTLD 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@webrootgeeksquad.us. 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 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 contends as follows:
Complainant, BBY Solutions, Inc., provides computer installation, maintenance, repair and design services and other technical support services under the GEEK SQUAD mark.
Complainant has rights in the in the GEEK SQUAD mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <webrootgeeksquad.us> domain name is confusingly similar to Complainant’s GEEK SQUAD mark since it incorporates the entire mark and simply adds the third-party mark WEBROOT.
Respondent lacks rights and legitimate interests in the <webrootgeeksquad.us> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized Respondent to use the GEEK SQUAD mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name resolves to a parked page with competing hyperlinks.
Respondent registered or uses the <webrootgeeksquad.us> domain name in bad faith. Respondent uses the disputed domain name to host competing hyperlinks on a parked webpage. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the GEEK SQUAD mark based on the inclusion of the entire mark in the disputed domain name and the notoriety of the mark. Finally, Complainant argues Respondent’s bad faith is further evidenced by the use of a proxy service.
B. Respondent
While Respondent failed to submit a formal Response in this proceeding, Respondent in fact responded to Complainant’s complaint by informing the dispute resolution provider that it consents to transfer its <webrootgeeksquad.us> domain name to Complainant.
Complainant has rights in the GEEK SQUAD mark.
Respondent’s at-issue domain name is confusingly similar to Complainant’s GEEK SQUAD trademark.
Respondent unequivocally consents to transferring the at-issue domain name to Complainant.
Respondent was/is unable to affect the at-issue domain name’s transfer on its own as the domain name was locked by its registrar as a result of the pending 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)(ii) or 4(a)(iii), when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case Respondent agrees to transfer its at-issue domain name to Complainant stating in its email response to the dispute resolution provider that Respondent “doesn't want the domain and will be happy to turn it over.” The Panel, noting that the parties agree as to the disposition of the at-issue domain names, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief ‑even where Respondent agrees to such relief‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name.
Here, Complainant’s ownership of a USPTO trademark registration for its GEEK SQUAD trademark shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Spotify AB v. Olodo Glory / Sutherland, FA 2106001951577 (Forum July 15, 2021) (“Complainant’s registration of the SPOTIFY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i).”). Furthermore, that at-issue domain name domain name contains Complainant’s GEEK SQUAD trademark in its entirety. Respondent merely prefixes Complainant’s trademark less its domain name impermissible space with the term “webroot” and follows all with the top-level domain name “.us.” Respondent’s inclusion of a generic term and a top-level domain name in the at-issue domain name is insufficient to distinguish Respondent’s trademark laden domain name from Complainant’s mark for the purposes of the Policy. Therefore the Panel finds that the at-issue domain name is confusingly similar to Complainant’s trademark under 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).).
In light of Respondent’s consent to transfer <webrootgeeksquad.us> to Complainant and the fact that Complainant shows that it has rights in a confusingly similar domain name pursuant to the Policy ¶ 4(a)(i) as discussed above the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
Respondent having agreed to transfer the domain name to Complainant and the Panel having found Complainant to have rights in a relevant trademark, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webrootgeeksquad.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page