Garmin Switzerland GmbH v. Narinder Padda
Claim Number: FA1806001794452
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Narinder Padda (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garmintechnicalsupport.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2018; the Forum received payment on June 29, 2018.
On June 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garmintechnicalsupport.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 July 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 2018 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@garmintechnicalsupport.com. Also on July 2, 2018, 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 July 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Garmin Switzerland GmbH, is one of the leading providers of GPS navigation devices and wearable 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).
2. Respondent’s <garmintechnicalsupport.com>[i] domain name is confusingly similar to Complainant’s mark because Respondent includes the entire GARMIN mark in the domain name plus the generic terms “technical” and “support.”
3. Respondent lacks rights and legitimate interests in the <garmintechnicalsupport.com> domain name because Respondent is not commonly known by the domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to divert users to a website which provides a fake customer support phone number in connection with a phishing scheme.
4. Respondent registered and uses the <garmintechnicalsupport.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the domain name’s resolving website which features Complainant’s GARMIN mark in connection with a fake customer service phone number. Respondent’s disclaimer fails to excuse Respondent’s bad faith behavior.
5. Further, Respondent had actual knowledge of Complainant’s rights in the GARMIN mark prior to registering the <garmintechnicalsupport.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GARMIN mark. Respondent’s domain name is confusingly similar to Complainant’s GARMIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <garmintechnicalsupport.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the GARMIN mark based upon its registration of the mark with the USPTO. Registration with the USPTO is sufficient to establish complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides a list of all of the federally registered trademarks with the USPTO (e.g., Reg. No. 2,288,989 registered Oct. 26, 1999) Therefore, the Panel holds that the Complainant has rights in the GARMIN mark under Policy ¶ 4(a)(i).
Complainant
argues that Respondent’s <garmintechnicalsupport.com>
domain name is confusingly
similar to Complainant’s mark because Respondent incorporates the mark in its
entirety plus a generic term in the domain name. The addition of a
generic/descriptive term is not sufficient to distinguish a domain name from a
mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a
Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616
(Forum June 8, 2018) (finding the
<starbucksreal.com> domain name to be confusingly similar to the
STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's
mark does not distinguish the Domain Name from Complainant's trade mark
pursuant to the Policy.”).
Moreover, additions of a gTLD are irrelevant under a Policy ¶ 4(a)(i) analysis. See Colin LeMahieu v. NANO
DARK, FA 1786065 (Forum June
9, 2018) (finding that the addition of a generic term and the generic top-level
domain “.com” insufficient to differentiate the <nanodark.com> domain name
from the NANO mark). Respondent includes Complainant’s mark in its entirety
plus the generic terms “technical” and “support” and a “.com” gTLD.
Consequently, the Panel finds that Respondent’s <garmintechnicalsupport.com> domain name is confusingly similar to Complainant’s marks under Policy ¶
4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <garmintechnicalsupport.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <garmintechnicalsupport.com> domain name. Specifically, Complainant has provided evidence that Respondent is not authorized or permitted to use Complainant’s GARMIN mark and is not commonly known by the domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a domain name. 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.”). The WHOIS information identifies the Respondent as “Narinder Padda,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way. Accordingly, the Panel holds that that the Respondent lacks rights and legitimate interests in the <garmintechnicalsupport.com> domain name under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent fails to use the <garmintechnicalsupport.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant asserts that Respondent uses the domain name to divert internet users to Respondent’s webpage to offer services that compete directly with Complainant. Use of a domain name incorporating a mark to which a complainant has rights to divert internet traffic to a webpage that competes directly with the complainant is not a bona fide use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpages associated with the <garmintechnicalsupport.com> domain name; this evidence supports Complainant’s claim that Respondent attempts to trick users into believing there is an association between Complainant and Respondent. Complainant argues that this user confusion disrupts its business because it most likely diverts Garmin customers away from Garmin’s website. The Panel agrees.
Additionally, Complainant argues Respondent operates a phishing scheme using the phone number featured on the website. Use of a domain name in connection with a phishing scheme is not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides screenshots of the <garmintechnicalsupport.com> domain name’s resolving website which features a phone number which supports Complainant’s claim that Respondent commercially benefits from a phishing scheme. Therefore, the Panel concludes that the Respondent fails to use the domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <garmintechnicalsupport.com> domain name in bad faith. Specifically, Complainant alleges that Respondent uses the domain name to disrupt Complainant’s business and attract users for commercial gain. Complainant argues Respondent does this by attempting to pass off as Complainant and offer a fake customer support phone number. Use of a domain name incorporating a mark in which a complainant has rights to pass off as a complainant in order to provide competing goods or services is evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). SeeLoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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 holds that evidence in the record supports Complainant’s contentions. Therefore, the Panel concludes that Respondent registered and uses the <garmintechnicalsupport.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GARMIN mark prior to Respondent’s registration of the <garmintechnicalsupport.com> domain name. Actual knowledge of a complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Complainant provides screenshots of the webpages associated with the domain name which show Respondent displaying the GARMIN mark and offering technical support services for Complainant’s products. This evidence demonstrates that Respondent had actual knowledge of Complainant’s rights in the GARMIN mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <garmintechnicalsupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 30, 2018
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