Garmin Switzerland GmbH v. Gyuszi AS / Bala Gyuszi / Zsuska AS / Bala Zsuska
Claim Number: FA2306002048694
Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc., Kansas, USA. Respondent is Gyuszi AS / Bala Gyuszi / Zsuska AS / Bala Zsuska (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <garmin-france.com> and <garminfrance.net>, (‘the Domain Names’) registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023.
On June 15, 2023, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to Forum that the <garmin-france.com> and <garminfrance.net> Domain Names are registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the names. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED 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 June 15, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2023 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-france.com, postmaster@garminfrance.net. Also on June 15, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant points out that the Domain Names resolve to near identical web sites using the Complainant’s mark in their mastheads, are registered with the same registrar and were registered within a month of each other. The Respondent has not replied to refute this. The panel finds that looking at the evidence on the balance of probabilities the Domain Names are commonly owned/controlled by a single Respondent entity who is using multiple aliases and this Complaint can proceed as framed against all named Respondents.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant or members of its group are the owner of the mark GARMIN registered, inter alia in the USA for electronic goods with first use recorded as 1991.
The Domain Names registered in 2022 are confusingly similar to the Complainant’s trade mark adding only the generic geographical description ‘France’ and/or a hyphen and the gTLD .com or the gTLD .net which do not prevent confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
The Domain Names have been used to divert consumers to near identical fake stores using the Complainant’s mark in its masthead. Phishing cannot be a bona fide offering of goods or services or legitimate non commercial or fair use. It is registration and use in bad faith diverting customers for commercial gain and disrupting the Complainant’s business. The fact that the sites purport to offer the Complainant’s products shows that the Respondent had actual knowledge of the Complainant, its rights, goods and services.
Respondent failed to submit a Response in this proceeding.
The Complainant or members of its group are the owner of the mark GARMIN registered, inter alia in the USA for electronic goods with first use recorded as 1991.
The Domain Names registered in 2022 have been used to point to near identical sites purporting to offer the Complainant’s products using the Complainant’s mark in their mastheads.
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 Domain Names in this Complaint comprises the mark GARMIN owned by the Complainant or members of its group (registered, inter alia, in the USA with first use recorded as1991), the generic geographical term ‘France’, and/or a hyphen and the gTLD .com or the gTLD ,net.
The addition of the generic geographical term ‘France’ does not serve to distinguish the Domain Names from the Complainant’s mark which is still recognisable in both Domain Names. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4 (a) (i).) Nor does the addition of a hyphen. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July , 2003)(The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).)
The gTLDs .com or .net do not serve to distinguish the Domain Names respectively from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Names are each confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be non commercial legitimate fair use.
The Panelist notes the reference to the Respondent’s sites scamming customers and phishing. Unfortunately no evidence of such has been presented with this Complaint.
However, the web sites attached to the Domain Names use the Complainant’s mark in their mastheads so that the Respondent’s sites could be taken to be connected with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant. The use of pictures of the Complainant’s products on the Respondent’s web sites shows that the Respondent has actual knowledge of the Complainant, its business, rights, goods and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web sites or goods or services offered on them likely to disrupt the business of the Complainant.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii) in relation to both.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <garmin-france.com> and <garminfrance.net> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 12, 2023
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