DECISION

 

Garmin Switzerland GmbH v. Anna Harris / Shirley Collins / Jacqueline Collins

Claim Number: FA2412002129087

PARTIES

Complainant is Garmin Switzerland GmbH ("Complainant"), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Anna Harris / Shirley Collins / Jacqueline Collins ("Respondent"), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMEs 

The domain names at issue are <garmin-global.com>, <garmin-euro.com> and <us-garmin.com>, registered with Nicnames, Inc.

 

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 11, 2024. Forum received payment on December 11, 2024.

 

On December 13, 2024, Nicnames, Inc. confirmed by e-mail to Forum that the <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names are registered with Nicnames, Inc. and that Respondent is the current registrant of the names. Nicnames, Inc. has verified that Respondent is bound by the Nicnames, Inc. 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 December 16, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@garmin-global.com, postmaster@garmin-euro.com, postmaster@us-garmin.com. Also on December 16, 2024, 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 registrations as technical, administrative and billing contacts.

 

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

 

On January 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Paragraph 3(c) of 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". Paragraph 1(d) of Forum's Supplemental Rules defines "The Holder of a Domain Name Registration" as "the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement" and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).

 

Complainant has shown that the <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases.

 

Hence this decision refers to Anna Harris / Shirley Collins / Jacqueline Collins as "Respondent". 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Garmin Switzerland GmbH, is a world-famous technology company that pioneered the GPS industry. Its products are sold in almost every country on earth through physical and online presences. <garmin.com> is Complainant's official domain name and has been in continuous use for over two decades.

 

Complainant registered the GARMIN trademark in many countries, including with the United States Patent and Trademark Office ("USPTO") for goods and services including satellite navigation systems, navigation software, geographic point-of-interest information and more, for use in the automotive, recreation, marine and aviation industries.

 

The domain names <garmin-global.com>, <us-garmin.com> and <garmin-euro.com> are confusingly similar to Complainant's GARMIN mark. They can have no legitimate use given their recent registration and Complainant's longstanding use of the GARMIN trademark and the <garmin.com> domain name. They are not used in connection with a bona fide offering of goods nor for non-commercial purposes or fair use.  Respondent is not known as Garmin. Only Complainant is known as Garmin. 

 

Respondent knowingly selected a domain including the GARMIN trademark to send phishing emails to Complainant's customers to steal banking information. Respondent was aware of the GARMIN trademark before registering its domain names. Respondent created the domain names with the sole intent of mimicking Complainant's actual domain names and scamming the public.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

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:

 

(i)        the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)        Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)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 as 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').

 

Identical and/or Confusingly Similar

Complainant has rights in the GARMIN mark through numerous registrations, including with the USPTO (e.g., Reg. No. 2,288,989 registered on October 26, 1999 in the name of Garmin Corporation). The Panel has conducted a TESS search which revealed that the mark was subsequently assigned to Complainant.

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0 "), section 1.7.

 

The Panel finds Respondent's <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names to be confusingly similar to Complainant's GARMIN mark, only differing by the addition of a hyphen and the words "global", "euro" or "us", which are insufficient to distinguish the domain names from Complainant's mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

There is no evidence that Respondent is commonly known by any of the domain names nor by the name Garmin. The <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names were registered on December 7 and 8, 2024, many years after the registration of Complainant's GARMIN mark. Each of the domain names has been used to send emails to customers of Complainant, purporting to be from an employee of Complainant, designed to elicit personal and/or financial information. 

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.

 

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's GARMIN mark and its <garmin.com> domain name when Respondent registered the <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names and that Respondent registered and is using the domain names in bad faith for the purpose of fraudulently phishing for information from Complainant's customers.

 

Complainant has established this element.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <garmin-global.com>, <garmin-euro.com> and <us-garmin.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: January 8, 2024