Garmin Switzerland GmbH v. Ramnik Singh / alphabyte
Claim Number: FA1910001868285
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Ramnik Singh / alphabyte (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garmin.live>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2019; the Forum received payment on October 23, 2019.
On October 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garmin.live> 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 October 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@garmin.live. Also, on October 28, 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 November 19, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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
Complainant operates in the handheld technology industry specializing in global positioning system technology. Complainant has rights in the GARMIN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,288,989, registered Oct. 26, 1999). Respondent’s <garmin.live> domain name is identical or confusingly similar to Complainant’s GARMIN mark because it wholly incorporates Complainant’s GARMIN mark, and merely adds the “.live” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <garmin.live> domain name. Respondent is not authorized or licensed to use Complainant’s GARMIN mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users away from Complainant’s website towards a fake customer support page hosting a phishing scheme.
Respondent registered and uses the <garmin.live> domain name in bad faith. Respondent attempts to disrupt Complainant’s business for commercial gain and attract users of the disputed domain name to a website where Respondent attempts to divert Internet users away from Complainant’s website to a fake customer support page hosting a phishing scheme. Respondent also had actual knowledge of Complainant’s GARMIN mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Garmin Switzerland GmbH (“Complainant”) of Schaffhausen, Switzerland. Complainant is the owner of domestic and global registrations for the mark GARMIN, which it has continuously used since at least as early as 1989, in connection with its provision of GPS navigation devices, systems, software and wearable technology goods and services. Complainant is also the owner of numerous registered domain names utilizing its mark, such as <garmin.com> which it has owned for more than 15 years.
Respondent is Ramnik Singh / alphabyte (“Respondent”), of Punjab, India. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain name was registered on or about May 17, 2019.
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”).
Complainant asserts rights in the GARMIN mark based upon registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). 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).”). Here, Complainant provides registrations for its trademarks (e.g., Reg. No. 2,288,989, registered Oct. 26, 1999). The Panel here finds that Complainant has rights in the GARMIN mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <garmin.live> domain name is identical or confusingly similar to Complainant’s GARMIN mark because it wholly incorporates Complainant’s GARMIN mark, and merely adds the “.live” generic top-level domain (“gTLD”). The addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel here finds that Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s GARMIN mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <garmin.live> domain name as Respondent is not authorized by Complainant to use the GARMIN mark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Complainant provides WHOIS information for Respondent indicating that Respondent is known as “Ramnik Singh” and no information of the record indicates that Respondent was authorized to use the Complainant’s GARMIN mark. The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues Respondent lacks rights or legitimate interests in the <garmin.live> domain name because Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users away from Complainant’s website towards a fake customer support page hosting a phishing scheme. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage in support of its assertion that Respondent allegedly phishes for Internet users’ personal information via a fraudulent customer support page. The Panel here finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or show a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <garmin.live> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, whereby Respondent diverts users of the disputed domain name to a fake customer support page hosting a phishing scheme. Use of a disputed domain name to imitate or mimic a complainant’s website design can evince a finding of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Here, the Panel again notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage where Respondent appears to phish for Internet users’ personal information via a fraudulent customer support page. The Panel here finds that Respondent has engaged in disruption and attraction for commercial gain which supports a finding of bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the GARMIN mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <garmin.live> domain name, and Respondent’s use of the mark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex 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”). Here, the Panel again references Complainant’s screenshot of the disputed domain name’s resolving webpage where Respondent uses Complainants mark in an attempt to pass off as Complainant. The Panel here finds that Respondent had actual notice of Complainant’s rights in the GARMIN mark under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <garmin.live> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 5, 2019
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