DECISION

 

Garmin Switzerland GmbH v. Domain Privacy Trustee SA

Claim Number: FA2402002086089

 

PARTIES

Complainant is Garmin Switzerland GmbH ("Complainant"), Switzerland, represented by Sam Korte of Garmin International, Inc., United States. Respondent is Domain Privacy Trustee SA ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mygarminstraps.shop>, registered with Key-Systems, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 28, 2024; Forum received payment on February 28, 2024.

 

On March 1, 2024, Key-Systems, LLC confirmed by email to Forum that the <mygarminstraps.shop> domain name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 March 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@mygarminstraps.shop. Also on March 1, 2024, 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 registration as technical, administrative, and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 22, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a global electronics company with total revenue of $4.86 billion in 2022. Complainant adopted the GARMIN mark in 1989 and uses it in connection with GPS navigation products and smartwatches. Complainant owns trademark registrations for GARMIN in standard character and stylized form in the United States, China, and other jurisdictions throughout the world.

 

The disputed domain name <mygarminstraps.shop> was registered in March 2023. The name is registered in the name of Respondent, which appears to be a privacy registration service acting on behalf of an unknown individual or entity. The domain name is being used for a website that sells wristbands for use with Complainant's products. Complainant states that the website includes photographs copied from Complainant's website and advertises "Premium Quality Garmin Straps," but in fact is selling third-party straps. Complainant alleges that the website deceives customers into believing that they are purchasing authentic Garmin products. The website prominently displays Complainant's GARMIN mark in the top banner and elsewhere, in some instances in a stylized form similar to that used by Complainant. The footer includes a disclaimer stating that the site is "not affiliated with Garmin's 'official' products and [is] not part of Garmin Ltd." Complainant alleges that Respondent has used Google advertisements to promote its website via in an attempt to divert users seeking Complainant's official website. Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <mygarminstraps.shop> is confusingly similar to its GARMIN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The disputed domain name <mygarminstraps.shop> incorporates Complainant's registered GARMIN trademark, adding the generic terms "my" and "straps" and the ".shop" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Garmin Switzerland GmbH v. (Name redacted), FA 1994012 (Forum May 17, 2022) (finding <garminstraps.com> confusingly similar to GARMIN). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, 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).

 

The disputed domain name incorporates Complainant's registered mark without authorization. Respondent is using the domain name for a website that sells products intended for use with Complainant's products.

 

The use of a domain name containing a trademark to offer sales or services related to the trademark owner's goods may be permissible under the doctrine of nominative fair use, thereby giving rise to rights or legitimate interests, provided (1) the respondent is actually offering the goods or services at issue, (2) the domain name is being used only in relation to the trademarked goods, (3) the respondent accurately and prominently discloses its relationship with the trademark owner, and (4) the respondent does not attempt to corner the market in domain names reflecting the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 2.8.1 (citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)); Fluke Corp. v. Erwin Bryson / fixmyfluke / Nelson Bryson, FA 1988399 (Forum July 6, 2022); AB Electrolux v. Roayh Net, FA 1791036 (Forum July 6, 2018). This doctrine is applicable only if the respondent needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner. See AB Electrolux v. Roayh Net, supra; Equifax Inc. v. Robert Dow, Warpaint Resources LLC, D2017-1882 (WIPO Dec. 5, 2017).

 

Respondent's website includes a disclaimer in the footer of every page, but identifies Respondent only as "my GARMIN STRAPS." It makes much greater use of the GARMIN mark than appears to be necessary to describe its products, including the use of a logo incorporating Complainant's stylized mark, creating a likelihood that consumers will be misled regarding the relationship between the parties. Furthermore, Respondent's website uses photographs copied from Complainant's website to depict what Complainant alleges are actually third-party products rather than those of or authorized by Complainant. Based on the limited evidence available to the Panel (largely a consequence of Respondent's failure to participate in this proceeding), the Panel determines that Respondent's use of the domain name is unlikely to qualify as a nominative fair use and therefore does not give rise to rights or legitimate interests under the Policy. Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed 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 appears to be a privacy registration service acting on behalf of an unknown individual or entity. The disputed domain name incorporates Complainant's registered mark and is being used for a website that uses the mark to promote competing or unauthorized products in a manner unlikely to qualify as nominative fair use. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Garmin Switzerland GmbH v. (Name redacted), supra (finding bad faith registration and use in similar circumstances); AB Electrolux v. Roayh Net, supra (same). The Panel finds that disputed domain name was registered and is being used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mygarminstraps.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David E. Sorkin, Panelist

Dated: March 24, 2024