BBY Solutions, Inc. v. Dev Kumar / John Kies / Nitin Tyagi / Devendra Tyagi / Nitin Kumar / White Apple / Ballu Balwanta / vikas kumar
Claim Number: FA1807001798780
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna of BBY Solutions, Inc., Minnesota, USA. Respondent is Dev Kumar / John Kies / Nitin Tyagi / Devendra Tyagi / Nitin Kumar / White Apple / Ballu Balwanta / vikas kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are: <geeksquad-customercare.com>, <geek-squad-online-support.com>, <geeksquad-tech.com>, <geeksquad-tech-support.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, <geeksquad-support.com>, and <geeksquad-customerservice.com> domain names registered with Domain.com, LLC; <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadprotection.com>, <bestbuygeeksquadphonenumber.com>, <geeksquadbestbuyphonenumber.com>, <bestbuy-geek-squad.com>, <best-buy-service.com>, <call-geek-squad.com>, <geeksquad-bestbuy.org>, <geeksquad-support.org>, <geeksquad-protection.org>, <geek-squad-pricing.com>, <geeksquad-phonenumber.org>, <geek-squad-tech-support.org>, <geek-squad-tech-support.net>, <geeksquadtechsupports.com>, <geeksquadsupport.org>, and <geeksquadplan.org> domain names registered with GoDaddy.com, LLC; and the <1800-geek-squad.com>, <best-buy-geek-squad.org>, and <best-buy-geek-squad.com> domain names registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2018; the Forum received payment on July 26, 2018.
On July 27, 2018, Domain.com, LLC confirmed by e-mail to the Forum that the <geeksquad-customercare.com>, <geek-squad-online-support.com>, <geeksquad-tech.com>, <geeksquad-tech-support.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, <geeksquad-support.com>, and <geeksquad-customerservice.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. On July 28, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <1800-geek-squad.com> and <best-buy-geek-squad.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. On July 30, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadprotection.com>, <bestbuygeeksquadphonenumber.com>, <geeksquadbestbuyphonenumber.com>, <bestbuy-geek-squad.com>, <best-buy-service.com>, <call-geek-squad.com>, <geeksquad-bestbuy.org>, <geeksquad-support.org>, <geeksquad-protection.org>, <geek-squad-pricing.com>, <geeksquad-phonenumber.org>, <geek-squad-tech-support.org>, <geek-squad-tech-support.net>, <geeksquadtechsupports.com>, <geeksquadsupport.org>, and <geeksquadplan.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. On August 2, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <best-buy-geek-squad.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. GoDaddy.com, LLC, Domain.com, LLC, and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by their respective registration agreements 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 August 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@geeksquad-bestbuy.org, postmaster@geeksquad-phonenumber.org, postmaster@geeksquad-protection.org, postmaster@geeksquad-support.org, postmaster@1800-geek-squad.com, postmaster@best-buy-geek-squad.org, postmaster@best-buy-service.com, postmaster@bestbuy-geek-squad.com, postmaster@call-geek-squad.com, postmaster@geek-squad-pricing.com, postmaster@geek-squad-tech-support.org, postmaster@geek-squad-webroot.com, postmaster@webroot-geek-squad.com, postmaster@geeksquadplan.org, postmaster@geeksquadsupport.org, postmaster@geeksquadtechsupports.com, postmaster@best-buy-geek-squad.com, postmaster@geeksquad-tech-support.com, postmaster@bestbuygeeksquadphonenumber.com, postmaster@geek-squad-tech-support.net, postmaster@geek-squad-online-support.com, postmaster@geeksquad-customercare.com, postmaster@geeksquad-customerservice.com, postmaster@geeksquad-tech.com, postmaster@geeksquadbestbuyphonenumber.com, postmaster@geeksquadprotection.com, postmaster@the-geek-squad.com, postmaster@geeksquad-pricing.com, and postmaster@geeksquad-support.com. Also on August 8, 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 September 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” Complainant contends that: (1) Respondent’s disputed domain names resolve to similar websites, (2) registrant names and addresses are similar, (3) registrars used to registered the disputed domain names are similar, (4) IP addresses associated with the disputed domain names are similar, and (5) an identical phone number displayed at the disputed domain names used to promote to visitors seeking technical support services. See Compl. Exs. D, E and F.
Having regard to all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding may therefore go forward in its present form.
A. Complainant
Complainant made the following contentions
Complainant is the owner of the GEEK SQUAD mark which it uses in connection with computer installation, maintenance, repair and design services. Complainant has rights in the GEEK SQUAD(e.g., Reg. No. 2,744,658, registered Jul. 29, 2003) and BEST BUY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”). See Compl. Ex. C. Complainant also has common law rights in the BEST BUY mark. Respondent’s <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names are confusing similar to Complainant’s BEST BUY and GEEK SQUAD marks as Respondent merely combines Complainant’s marks, adds descriptive terms (“phone number,” “protection,” “support,” “1800,” “service,” “call,” “pricing,” “tech,” “webroot,” “plan,” “techsupports,” “online,” “customer care,” “customer service,” “buy phone number,” and “the”), includes hyphens, and adds a “.com” or “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names. Respondent is not authorized to use Complainant’s BEST BUY or GEEK SQUAD marks and is not commonly known by the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain names resolve to websites which feature Complainant’s marks in connection to competing services.
Respondent registered and uses the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names in bad faith. Respondent has demonstrated a pattern of bad faith registration as it has a history of adverse UDRP decisions. Respondent also attempts to attract, for commercial gain, users to the disputed domain names where it offers competing technical support services. Furthermore, Respondent had actual knowledge of Complainant’s rights in the BEST BUY and GEEK SQUAD marks prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of computer installation, maintenance, repair and design services.
2. Complainant has established its trademark rights in the GEEK SQUAD mark by registering the same with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,744,658, registered Jul. 29, 2003) and the BEST BUY mark through its trademark registrations. Complainant also has established its common law trademark rights in the BEST BUY mark.
3. The disputed domain names were registered on:
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<geeksquad-bestbuy.org> |
May 2, 2018 |
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<geeksquad-phonenumber.org> |
May 2, 2018 |
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<geeksquad-protection.org> |
May 2, 2018 |
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<geeksquad-support.org> |
May 2, 2018 |
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<1800-geek-squad.com> |
January 20, 2016 |
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<best-buy-geek-squad.org> |
May 15, 2018 |
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<best-buy-service.com> |
May 1, 2018 |
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<bestbuy-geek-squad.com> |
March 3, 2018 |
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<call-geek-squad.com> |
May 2, 2018 |
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<geek-squad-pricing.com> |
May 2, 2018 |
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<geek-squad-tech-support.org> |
June 5, 2018 |
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<geek-squad-webroot.com> |
February 15, 2018 |
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<webroot-geek-squad.com> |
February 15, 2018 |
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<geeksquadplan.org> |
June 12, 2018 |
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<geeksquadsupport.org> |
June 12, 2018 |
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<geeksquadtechsupports.com> |
June, 11, 2018 |
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<best-buy-geek-squad.com> |
January 17, 2016 |
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<geeksquad-tech-support.com> |
April 5, 2018 |
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<bestbuygeeksquadphonenumber.com> |
February 15, 2018 |
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<geek-squad-tech-support.net> |
June 9, 2018 |
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<geek-squad-online-support.com> |
April 5, 2018 |
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<geeksquad-customercare.com> |
April 5, 2018 |
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<geeksquad-customerservice.com> |
March 30, 2018 |
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<geeksquad-tech.com> |
April 5, 2018 |
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<geeksquadbestbuyphonenumber.com> |
February 15, 2018 |
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<geeksquadprotection.com> |
February 15, 2018 |
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<the-geek-squad.com> |
April 5, 2018 |
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<geeksquad-pricing.com> |
March 30, 2018 |
|
<geeksquad-support.com> |
March 30, 2018 |
4. Respondent has caused the disputed domain names to resolve to websites which feature Complainant’s marks in connection with competing services.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the GEEK SQUAD mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of its USPTO registrations for the GEEK SQUAD mark (e.g., Reg. No. 2,744,658, registered Jul. 29, 2003). See Compl. Ex. C. The Panel notes that while Complainant submits that it has a trademark registration for the BEST BUY mark, it has not provided any documentation in support of such registration. Id. However, Complainant submits that it has had rights in the BEST BUY mark since as early as 1989. Specifically, Complainant argues that it has continuously used the BEST BUY mark in connection to its products and services. Continuous use of a mark in commerce may indicate that a complainant has common law rights in the mark if it has attained secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides a screenshot of its domain name, <bestbuy.com>, which it uses in connection with its goods and services. See Compl. Ex. B. Therefore, the Panel finds Complainant has established common law rights in the BEST BUY mark at all relevant times per Policy ¶ 4(a)(i).
Therefore, the Panel finds Complainant has sufficiently demonstrated its rights in the GEEK SQUAD and BEST BUY marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s GEEK SQUAD and BEST BUY marks.
Complainant submits Respondent’s <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names are confusingly similar to Complainant’s BEST BUY and GEEK SQUAD marks. Complainant contends Respondent merely combines Complainant’s marks and adds descriptive terms, hyphens, and/or a gTLD to Complainant’s marks. Combining a complainant’s marks while adding a descriptive term, hyphen, or a gTLD may not sufficiently mitigate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”); see also Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent combines the BEST BUY and GEEK SQUAD marks while adding a descriptive term (“phone number,” “protection,” “support,” “1800,” “service,” “call,” “pricing,” “tech,” “webroot,” “plan,” “techsupports,” “online,” “customer care,” “customer service,” “buy phone number,” or “the”), includes hyphens, and adds a “.com” or “.org” gTLD. Consequently, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s marks per Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BEST BUY and GEEK SQUAD trademarks and to use them in its domain names, adding descriptive words that do not negate their confusing similarity with Complainant’s trademarks;
(b) Respondent registered the domain names on the various dates set forth above;
(c) Respondent has caused the disputed domain names to resolve to websites which feature Complainant’s marks in connection with competing services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent has no rights or legitimate interests in the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names because Respondent is not authorized to use Complainant’s mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). WHOIS information for the disputed domain names lists one of the following as its registrant: “Dev Kumar,” “John Kies,” “Nitin Tyagi,” “Devendra Tyagi,” “Nitin Kumar,” “White Apple,” “Ballu Balwanta,” or “vikas kumar.” See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, ,<bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent’s disputed domain names resolve to websites which feature Complainant’s marks and color scheme with competing technical support services. Passing off as a complainant to benefit commercially from the sale of competing goods or services may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also 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 disputed domain names’ resolving websites which feature a telephone number in connection with a purported technical support service related to the GEEK SQUAD mark. See Compl. Exs. E and F. Respondent’s disputed domain names’ websites also appear to feature Complainant’s BEST BUY and GEEK SQUAD marks prominently. Id. Therefore, the Panel finds Complainant did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons. First, Complainant submits Respondent registered and uses the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names in bad faith. Specifically, Complainant argues Respondent, White Apple, was a previous Respondent in another UDRP case. A history of adverse UDRP decisions may demonstrate a pattern of bad faith per Policy ¶ 4(b)(ii). See H-D U.S.A., LLC v. zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson, FA1410001587625 (Forum Dec. 10, 2014) (“The Panel agrees that the case relates to the same Respondent here, and Respondent’s history of bad faith suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii), especially given the presence of three domain names in this proceeding that incorporate the HARLEY-DAVIDSON mark.”). Complainant lists a UDRP case in which Respondent was an adverse party. See BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251. As such, the Panel finds Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant contends Respondent attempts to attract, for commercial gain, users to the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names. Complainant argues Respondent uses the disputed domain names to feature, on the websites, competing technical support services. Use of a confusingly similar domain name to offer competing goods or services may be evidence of bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel notes that Complainant provides screenshots of the disputed domain names’ resolving websites which feature a telephone number in connection with a purported technical support service related to the GEEK SQUAD mark. See Compl. Exs. E and F. Complainant also argues Respondent commercially benefits from user confusion as Respondent prominently features Complainant’s BEST BUY and GEEK SQUAD marks with its competing services. Id. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's BEST BUY and GEEK SQUAD marks, it is inconceivable that Respondent could have registered the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel notes that any arguments of bad faith based on constructive notice are not persuasive, because UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of 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.”). Complainant further submits that Respondent’s use of the domain names to blatantly infringe Complainant’s marks to offer competing services indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the marks and thus registered the domain names in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BEST BUY and GEEK SQUAD marks and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geeksquad-bestbuy.org>, <geeksquad-phonenumber.org>, <geeksquad-protection.org>, <geeksquad-support.org>, <1800-geek-squad.com>, <best-buy-geek-squad.org>, <best-buy-service.com>, <bestbuy-geek-squad.com>, <call-geek-squad.com>, <geek-squad-pricing.com>, <geek-squad-tech-support.org>, <geek-squad-webroot.com>, <webroot-geek-squad.com>, <geeksquadplan.org>, <geeksquadsupport.org>, <geeksquadtechsupports.com>, <best-buy-geek-squad.com>, <geeksquad-tech-support.com>, <bestbuygeeksquadphonenumber.com>, <geek-squad-tech-support.net>, <geek-squad-online-support.com>, <geeksquad-customercare.com>, <geeksquad-customerservice.com>, <geeksquad-tech.com>, <geeksquadbestbuyphonenumber.com>, <geeksquadprotection.com>, <the-geek-squad.com>, <geeksquad-pricing.com>, and <geeksquad-support.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 5, 2018
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