BBY Solutions, Inc. v. White Apple / Dev Kumar
Claim Number: FA1805001787251
Complainant is BBY Solutions, Inc. (“Complainant”), represented by Matthew Mlsna of BBY Solutions, Inc, Minnesota, USA. Respondent is White Apple / Dev Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <geek-squad-tech-support.com> registered with GoDaddy.com LLC; and<1800-geeksquad.com>, registered with Domain.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2018; the Forum received payment on May 17, 2018.
On May 22, 2018, GoDaddy.com, LLC, and Domain.com, LLC confirmed by e-mail to the Forum that the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names are registered with GoDaddy.com, LLC and Domain.com, LLC, respectively, and that Respondent is the current registrant of the name. GoDaddy.com, LLC and Domain.com, LLC have verified that Respondent is bound by the respective GoDaddy.com, LLC and Domain.com, LLC 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 May 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@geek-squad-tech-support.com, postmaster@1800-geeksquad.com. Also on May 24, 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 June 19, 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.
A. Complainant
Complainant made the following contentions.
Complainant, BBY Solutions, Inc., and its predecessor and affiliated companies own and operate the popular Best Buy retail stores and website. Since 1994, Complainant has used the GEEK SQUAD mark in connection with computer installation, maintenance, repair and design services and other technical support services. Complainant has rights in the GEEK SQUAD mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. C. Respondent’s <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names are confusingly similar to Complainant’s GEEK SQUAD mark, as the domain names each contain the mark in its entirety and differs only by the addition of descriptive words such as “tech,” “support,” and “1800,” and by the addition of hyphens and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the GEEK SQUAD mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the websites resolving from the domain names offer computer technical support services under the titles “Geek Squad Tech Support” and “1800 Geek Squad,” and plainly copying Complainant’s registered BEST BUY and GEEK SQUAD logos. See Compl. Ex. D.
Respondent registered and is using the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names in bad faith. Respondent uses the names to create confusion and divert customers seeking Complainant’s services and purport to offer identical and competing tech support services. See Compl. Ex. D. Further, due to the fame of Complainant’s marks and the use Respondent makes of the disputed domain names, it is clear Respondent had actual knowledge of Complainant and its rights in the GEEK SQUAD mark at the time Respondent registered and used the names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and operates the popular Best Buy retail stores and website.
2. Complainant has established its trademark rights in the GEEK SQUAD mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,744,658, registered July 29, 2003).
3. Respondent registered the <geek-squad-tech-support.com> domain name on January 20, 2018; and the <1800-geeksquad.com> domain name on March 7, 2018.
4. The websites resolving from the domain names have been caused by Respondent to offer computer technical support services under the titles “Geek Squad Tech Support” and “1800 Geek Squad,” and plainly copy Complainant’s registered BEST BUY and GEEK SQUAD logos.
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.”).
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 the websites resolving from the two domain names contain numerous identical elements, including the use of Complainant’s marks overlaid on top of an identical picture of a man and a woman. See Compl. Ex. D. Further, Complainant argues, both websites promote technical support services and direct visitors to call the identical 1-888-630-3860 contact number. See id.
Having regard to all of the above matters the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the proceeding may go forward on that basis.
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 based upon registration of the mark with the USPTO (e.g. Reg. No. 2,744,658, registered July 29, 2003). See Compl. Ex. C. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the GEEK SQUAD mark with the USPTO is sufficient to establish rights in the mark under 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 mark. Complainant argues Respondent’s <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names are confusingly similar to the GEEK SQUAD mark, as each name contains the mark in its entirety and differs only by the addition of descriptive words such as “tech,” “support,” and “1800,” and by the addition of hyphens and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); 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 claims the added terms “tech,” “support,” and “1800” are clearly descriptive terms relating to Complainant’s business or are meant to indicate a common way to contact Complainant for its services. The Panel therefore determines the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names are confusingly similar to the GEEK SQUAD mark 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 names 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 GEEK SQUAD trademark and to use it in its domain names, adding descriptive words such as “tech”, “support” and “1800”;
(b) Respondent registered the <geek-squad-tech-support.com> domain name on January 20, 2018 and the <1800-geeksquad.com> domain name on March 7, 2018;
(c) The websites resolving from the domain names have been caused by Respondent to offer computer technical support services under the titles “Geek Squad Tech Support” and “1800 Geek Squad,” and plainly copy Complainant’s registered BEST BUY and GEEK SQUAD logos;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the GEEK SQUAD mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the <geek-squad-tech-support.com> domain name as “White Apple,” and the <1800-geeksquad.com> domain name as “Dev Kumar;” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names;
(f) Complainant further argues Respondent’s lack of rights or legitimate interests in the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain names resolve to websites which attempt to divert Internet users and promote identical services. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); 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).”). Specifically, Complainant contends that the domain names resolve to a website which displays copies of Complainant’s marks and logos and purports to offer technical support services in direct competition with those services offered by Complainant. See Compl. Ex. D. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <geek-squad-tech-support.com> or <1800-geeksquad.com> domain names.
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 claims Respondent’s use of the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names to pass itself off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain names in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel recalls Complainant’s contention that the domain names were registered and used in order to lure consumers to these websites See Compl. Ex. D. The Panel therefore finds Respondent registered and used the domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant contends that in light of the fame and notoriety of Complainant's GEEK SQUAD mark, it is inconceivable that Respondent could have registered the <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find 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 display Complainant’s registered marks and logos, as well as purport to offer directly competitive 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 mark 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 GEEK SQUAD mark 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 <geek-squad-tech-support.com> and <1800-geeksquad.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 20, 2018
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