Garmin Switzerland GmbH v. (Name redacted)
Claim Number: FA2204001994012
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is (Name redacted) (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garminstraps.com>, registered with GoDaddy.com, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 28, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garminstraps.com> domain name is registered with GoDaddy.com, LLC and that Respondent 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”).
On April 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@garminstraps.com. Also on April 28, 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.
A timely Response was received and determined to be complete on May 4, 2022.
On May 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: REDACTION OF RESPONDENT’S IDENTITY
Respondent requests that its personal information be redacted. Specifically, on May 4, 2022, the Forum received an email from Respondent stating that it wished to have its personal and contact information redacted. Respondent subsequently filed a timely and formal response requesting their information remain redacted in this proceeding.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
In this case, Respondent explicitly requested such redaction. Consequently, the Panel determines to redact Respondent’s information from the Panel’s decision.
A. Complainant
i) Complainant provides a variety of GPS navigation devices and wearable technology. Complainant asserts rights in the GARMIN mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,288,989, registered on October 26, 1999). The disputed domain name is identical or confusingly similar to Complainant’s GARMIN mark, as it incorporates the mark in its entirety, only adding the generic term “straps” and the “.com” generic top-level domain (gTLD).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the GARMIN mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name offers competing and counterfeit goods for sale.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract users for commercial gain by hosting a website that offers competing and counterfeit goods. Respondent also had actual notice of Complainant’s rights in the mark, evidenced by the notoriety of the mark and Respondent’s use of the mark.
B. Respondent
i) Respondent requests, as a formal Response, its identity to be redacted. There is email correspondence from Respondent to the Forum in which Respondent agreed to transfer the disputed domain name to Complainant; however, this was not included as a formal Response.
1. The disputed domain name was registered on November 3, 2020.
2. Complainant has established rights in the GARMIN mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 2,288,989, registered on October 26, 1999).
3. The disputed domain name resolves to a website offering seemingly counterfeit versions of Complainant’s goods for sale.
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.
Complainant asserts rights in the GARMIN mark through its registration with the USPTO (e.g., Reg. No. 2,288,989, registered on October 26, 1999). When a complainant registers a mark with the USPTO, it is sufficient to establish rights in the mark. Therefore, the Panel finds Complainant has sufficiently established rights in the GARMIN mark.
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s GARMIN mark, as it incorporates the mark in its entirety, only adding the generic term “straps” and the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a 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.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s GARMIN mark.
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”).
Complainant contends Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized to use the GARMIN mark, nor is Respondent commonly known by the disputed domain name. Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website offers competing and counterfeit goods. Using a domain name to redirect users to a website that offers counterfeit goods is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots showing the disputed domain name resolves to a website offering seemingly counterfeit versions of Complainant’s goods for sale. Thus, the Panel finds Respondent is not using the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not rebutted the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent disrupts Complainant’s business and attempts to attract users for commercial gain by using a confusingly similar domain name to redirect users to a website that offers counterfeit goods for sale. When a respondent uses the domain name to offer counterfeit goods, the Panel may find this disrupts a complainant’s business and is done in bad faith because the respondent financially benefits from the confusion. See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel recalls screenshots of the disputed domain name’s resolving website, which offers counterfeit goods.
Respondent contends in email correspondence to the Forum that tacit approval was given in January 2021 by Complainant to Respondent, to use the disputed domain name. On request of Complainant, Respondent made changes to the website to make it clear Respondent was not affiliated with Complainant (story section, FAQs, footer, product titles, etc.). Given the circumstances that Respondent did not submit any supporting documents, the Panel finds Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garminstraps.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 17, 2022
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