Garmin Switzerland GmbH v. Smith Morgan
Claim Number: FA1905001845088
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Smith Morgan (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garminstore.site>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 29, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <garminstore.site> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2019 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@garminstore.site. Also on May 29, 2019, 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 June 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <garminstore.site> domain name is confusingly similar to Complainant’s GARMIN mark.
2. Respondent does not have any rights or legitimate interests in the <garminstore.site> domain name.
3. Respondent registered and uses the <garminstore.site> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant is a provider of GPS navigation devices and wearable technology. Complainant holds a registration for the GARMIN mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,288,989, registered Oct. 26, 1999).
Respondent registered <garminstore.site> on April 30, 2019, and uses it to divert Internet users to Respondent’s webpage containing fake offers, and to phish for users’ information.
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 Panel finds that Complainant has rights in the GARMIN mark under Policy ¶ 4(a)(i) through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <garminstore.site> domain name uses Complainant’s mark and merely adds the word “store” and the “.site” generic top-level domain (“gTLD”). The addition of descriptive words and a gTLD is not sufficient to distinguish a disputed domain name from a complainant’s mark, under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s <garminstore.site> domain name is confusingly similar to Complainant’s GARMIN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interest in the <garminstore.site> domain name, as Respondent is not commonly known by the domain name. Complainant has not authorized Respondent to use Complainant’s mark. Complainant provides the WHOIS information for the <garminstore.site> domain name, showing “Smith Morgan” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <garminstore.site> domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also 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)”).
Complainant argues that Respondent has no rights or legitimate interest in the <garminstore.site> domain name, as Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to offer Complainant’s goods to further a phishing scheme. Use of a disputed domain name to promote or sell complainant’s goods or services may not be a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The use of a disputed domain name to further a phishing scheme is also not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpage for the <garminstore.site> domain name which purportedly sells Complainant’s goods at low prices, and shows that at least one customer has been entangled in Respondent’s phishing scheme. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <garminstore.site> domain name, as Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <garminstore.site> domain name was registered and is used in bad faith as Respondent is attempting to disrupt Complainant’s business by selling Complainant’s goods. Registration and use of a disputed domain name to sell a complainant’s goods may be evidence of bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). Accordingly, the Panel finds that Respondent’s <garminstore.site> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s <garminstore.site> domain name was registered and is used in bad faith, as Respondent is attempting to attract Internet users for commercial gain by attempting to pass off as Complainant. Use of a disputed domain name to confuse Internet users into believing that a respondent is a complainant is passing off and demonstrates bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel finds that Respondent’s <garminstore.site> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iv), as Respondent is using it to divert Interest users for commercial gain.
Complainant argues that Respondent’s <garminstore.site> domain name was registered in bad faith, as Respondent had actual knowledge of Complainant’s rights in the GARMIN mark at the time of registration of the domain name. The use of a well-known mark displayed on the resolving webpage of a disputed domain name is evidence of a respondent’s actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting 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”). Complainant argues that Complainant’s use of the GARMIN mark for more than 25 years, and Respondent’s reference to the mark on its webpage at <garminstore.site> demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent’s <garminstore.site> domain name was registered in bad faith under Policy ¶ 4(a)(iii), as Respondent had actual knowledge of Complainant’s rights in the GARMIN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garminstore.site> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 20, 2019
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