Garmin-espana.com

The timeline behind garmin-espana.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Garmin Switzerland GmbH v. Rikardo Blum Claim Number: FA2307002053372 PARTIES Complainant is Garmin Switzerland GmbH (“Complainant”), represented by Sam Korte of Garmin International, Inc, Kansas, USA. Respondent is Rikardo Blum (“Respondent”), France. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <garmin-espana.com>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED. PANEL 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. James Bridgeman SC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on July 17, 2023; Forum received payment on July 17, 2023. On July 17, 2023, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to Forum that the <garmin-espana.com> domain name is registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the name. 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 July 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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-espana.com. Also on July 18, 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 August 8, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant claims rights in the GARMIN trademark and service mark, established by its ownership of the international portfolio of registrations described below, and its extensive use of the mark in its business providing GPS navigation devices and wearable technology. Complainant submits that it first began using the GARMIN name in 1989 and has since adopted and continuously used a family of well-known GARMIN marks across a range of product and service offerings establishing an international goodwill and reputation. Today, Complainant has offices in over 60 countries and sells its products online and in stores throughout the world with a total revenue in 2017 in excess of 3 billion dollars. Additionally, Complainant asserts that, through a subsidiary corporation, it has owned and used the domain name <garmin.com> for over 15 years. To support this assertion Complainant has, in an exhibit annexed to the Complaint, provided a screen capture of its own website as of June 20, 2018, and a copy of the WHOIS information for <garmin.com>. Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s GARMIN mark because it incorporates the mark in its entirety. Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that its longstanding use of the GARMIN mark predates any rights Respondent may claim in the disputed domain name. Complainant adds that the disputed domain name is identical to its GARMIN mark, which negates any presumption of legitimate use of the disputed domain name by Respondent. See eBay Inc. v. Hong, WIPO Case D2000-1633 (stating that the respondent’s use of the complainant’s entire mark in the domain name makes it difficult to infer any legitimate use). Complainant asserts that Respondent is not commonly known by the name “Garmin”, but instead is known as Rikardo Blum and Respondent has no affiliation with Complainant. Complainant refers to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, which purports to offer Complainant’s goods at discounted prices. Complainant argues that therefore Respondent is using the disputed domain name to directly compete with Complainant, and so is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead is using the disputed domain name to divert users away from Complainant’s website, redirecting them to a fake store with fake products. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, Forum Claim FA1411001589962 (Forum Jan. 1, 2015) (finding that use of a disputed domain name to promote links in competition with complainant’s services is not a bona fide offering of goods or services). Complainant adds that it is likely that Respondent is engaged in phishing activity which is the epitome of bad faith and the opposite of bona fide services. Accordingly, Complainant submits that Respondent’s use of the disputed domain name to lure Complainant’s customers into purchasing fake products does not constitute a bona fide use. Here, Respondent is maintaining the registration of a domain name that is identical to the GARMIN mark, and Respondent does not offer any noncommercial information through its website to which the disputed domain name resolves, nor make other fair use of the disputed domain name. Instead, Complainant alleges that Respondent is using the disputed domain name to trick users into purchasing non-existent products. It is contended that such use is neither a legitimate nor a noncommercial fair use of the disputed domain name because its diverts customers away from Complainant’s website causing Complainant to lose potential sales. See NYSE Group, Inc. v. DNS Admin. / Cykon Tech. Ltd., Forum Claim FA 1709950 (Forum Feb. 25, 2017) (using a domain name that is confusingly similar to a well-known mark to resolve to a commercial parking page to host unrelated advertisements is not using the domain name in connection with a legitimate noncommercial, fair use). Further referring to the exhibited screen capture of the website to which the disputed domain name resolves, Complainant adds that Respondent cannot demonstrate that it is engaged in a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Policy ¶ 4(c)(iii), allows a respondent to demonstrate that it has a legitimate interest in a domain name when it is “making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” However, Complainant submits that conversely, a respondent that misleadingly diverts consumers for commercial gain, as in the present case, cannot rely on such use to demonstrate that it is using the disputed domain for a legitimate noncommercial or fair use. In sum, Complainant submits that it did not authorize Respondent to use the GARMIN mark or a confusingly similar variation thereof, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial fair use, and Respondent is not commonly known by the disputed domain name. Accordingly, Complainant submits that it has satisfied the second element of the test in Policy ¶ 4(a). See Charles Jourdan Holding AG v. AAIM, WIPO Case D2000-0403 (finding no rights or legitimate interests where the respondent was not a licensee of the complainant, the complainant’s prior rights in the domain name preceded the respondent’s registration, and the respondent was not commonly known by the domain in question). Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that at the time of registration of the disputed domain name, Respondent was aware of Complainant’s trademark. It is submitted that where a respondent has actual knowledge of another party’s mark when registering a domain name at issue, it follows that registration is made in bad faith. See Twentieth Century Fox Film Corp. v. Zahid Iqbal / Smart Solutions, Forum Claim FA 1719892 (Forum Apr. 12, 2017) (finding bad faith where the complainant had actual knowledge of the complainant’s mark). Furthermore, Complainant contends that Respondent cannot point to any evidence establishing that it is legally chartered or commonly known as “Garmin” and anonymously registered the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, Forum Claim FA 470335 (Forum Aug. 3, 2006) (finding that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on WHOIS information and other evidence in the record). Complainant submits that Respondent appears to have gained control over the disputed domain name over 25 years after Complainant began using its GARMIN mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."). Based on Complainant’s use of the GARMIN mark for more than 25 years and its strong, distinctive nature, Complainant contends that it is highly improbable that Respondent registered this virtually identical domain name without knowledge of Complainant’s interests in the mark, and so Respondent’s registration and subsequent use of the disputed domain name, despite having notice or awareness of Complainant’s rights in the GARMIN mark, illustrates Respondent’s bad faith. Additionally, Complainant argues that Respondent failed to discharge its duty to select, register, and use a domain name that does not infringe the rights of a third party, as required by Policy ¶ 2(b) whereby a registrant must warrant that, “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Complainant submits that the requirement in Policy ¶ 2(b) implies an affirmative duty to select and register a domain name that does not infringe a third party’s rights. Therefore, Respondent is responsible for investigating whether its domain name infringes upon another’s rights. Complainant submits that a basic investigation by Respondent would have revealed Complainant’s rights to the GARMIN mark. For example, an Internet search for “garmin” would have resulted in links to Garmin’s website. Accordingly, Respondent’s failure to investigate and select a domain name that does not infringe on Garmin’s rights is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that the exhibited screen capture of the website to which the disputed domain name resolves shows that Respondent intentionally attempts to disrupt and compete with Complainant’s business by using a domain name that includes Garmin’s registered mark to trick customers into purchasing goods from a fake store. Consumers that attempt to visit Complainant’s genuine GARMIN site, and find the genuine Garmin products, are misdirected by the disputed domain name and confused as to the source of the alleged goods purported to be offered by Respondent. Redirecting users to a third party website that disrupts Complainant’s business further evidences Respondent’s bad faith. See, e.g., Microsoft Corp. v. Lafont, Forum Claim FA 349611 (Forum Nov. 9, 2009)(“The Panel finds that Respondent’s intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”). Complainant submits that such use of the disputed domain name to confuse and divert potential customers of Complainant’s business, attracting them to Respondent’s website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith. Complainant further submits that Respondent is engaged in phishing tactics which it alleges is the epitome of bad faith and cannot be considered fair use. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant is a provider of GPS navigation devices and wearable technology using the GARMIN trademark and service mark for which it holds an international portfolio of registrations including the following registered with the USPTO: · United States registered trademark GARMIN, registration number 2,288,989, registered on October 26, 1999 for goods in international class 9; · United States registered trademark and service mark GARMIN and Design, registered on the Principal Register on July 15, 2008 for goods and services in international classes 9, 10, 38, 39, and 42; · United States registered trademark GARMIN and Design, registered on the Principal Register on July 15, 2008 for goods in international class 9. Complainant has an established Internet presence and maintains a website at <www.garmin.com> using the <garmin.com> domain name which is owned by Garmin International, Inc., a subsidiary of Complainant and registered on May 2, 1995. The disputed domain name <garmin-espana.com> was registered on May 18, 2023, resolves to a webpage that purports to sell Complainant’s GARMIN branded products, impersonating Complainant and claiming copyright using the legend “@ Garmin Espana 2023”. There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding. DISCUSSION 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”). Identical and/or Confusingly Similar Complainant’s Rights Complainant has provided convincing, uncontested evidence that it has rights in the GARMIN mark, established by the ownership of the international portfolio of registrations described above and extensive use of the mark in connection with its business as a provider of GPS navigation devices and wearable technology, with offices in over 60 countries and total revenue in 2017 in excess of 3 billion dollars Confusing Similarity The disputed domain name <garmin-espana.com>, consists of Complainant’s GARMIN mark, a hyphen and the country name Espana. GARMIN is the initial, dominant, and only distinctive element in the disputed domain name. The country name with the disputed domain name does not prevent a finding that it is confusingly similar to the GARMIN mark, as it adds no distinguishing character. Neither does the hyphen distinguish the disputed domain name in any way and its role in context actually emphasizes the mark, separating it, as it does, from the country name, within the disputed domain name. Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for the disputed domain name. This Panel finds therefore that the disputed domain name is confusingly similar to the GARMIN mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that · Complainant’s longstanding use of the GARMIN mark predates any rights Respondent may claim in the disputed domain name; · The disputed domain name is identical to its GARMIN mark, which negates any presumption of legitimate use of the disputed domain name by Respondent; · Respondent is not commonly known by the name “Garmin”, but instead is known as Rikardo Blum who has no affiliation with Complainant; · Complainant did not authorize Respondent to use the GARMIN mark or a confusingly similar variation of it; · The screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that Respondent is using the disputed domain name purporting to offer Complainant’s goods at discounted prices and such use of the disputed domain name to directly compete with Complainant’s authorized services does not constitute a bona fide offering of goods or services; · Respondent is using the disputed domain name to divert users away from Complainant’s website, redirecting them to a fake store with fake products and is likely that Respondent is engaged in phishing activity which is the epitome of bad faith and the opposite of “bona fide” services; · Respondent’s use of the disputed domain name to lure Complainant’s customers into purchasing fake products is not a bona fide use; · The disputed domain name is identical to the GARMIN mark and is being used by Respondent to trick users into purchasing non-existent products by diverting them away from Complainant’s website causing Complainant to lose potential sales; · Respondent cannot demonstrate that it is “making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” · Conversely, a respondent that misleadingly diverts consumers for commercial gain cannot rely on such use to demonstrate that it is using the disputed domain for a legitimate noncommercial or fair use. It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights and an extensive international reputation in the GARMIN mark which long predate the registration and first use of the disputed domain name on May 18, 2023. GARMIN is a well-known and distinctive mark and it is improbable that the disputed domain name, which consists of the mark in combination with a geographic term, was chosen by coincidence. As it is most improbable that the registrant of the disputed domain name did not know about Complainant, its GARMIN mark and Complainant’s rights when the disputed domain name was chosen and registered. In making this finding this Panel is conscious that Respondent has used the disputed domain name to purport to offer Complainant’s GARMIN branded goods so soon after the disputed domain name was registered. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant and its GARMIN mark in mind to take predatory advantage of Complainant’s goodwill and reputation in the mark. The screen captures of the website to which the disputed domain name resolves, which have been exhibited in evidence in an annex to the Complaint, show that the disputed domain name resolves to a website that purports to offer GARMIN branded goods at discounted prices aimed at a Hispanic market. Complainant has alleged but has not proven that the goods offered by Complainant are counterfeit goods, nor has Complainant adduced any evidence to support its assertion that Respondent is engaged in phishing. However, it cannot be disputed that Respondent is using Complainant’s mark in the disputed domain name in order to attract internet users who are looking for Complainant’s goods or Complainant’s own website. Upon reaching Respondent’s website, there is no indication that it has no connection or association with Complainant and the content presented on Respondent’s website will inevitably confuse Internet users, divert Internet traffic and harm Complainant’s reputation and goodwill. Respondent goes so far as to even post the legend “@ Garmin Espana 2023”, claiming copyright in the website. By presenting the content of the website in this manner, Respondent is impersonating Complainant. Such use of the GARMIN mark within the disputed domain name constitutes use in bad faith for the purposes of the Policy. As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii). DECISION 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-espana.com> domain name be TRANSFERRED from Respondent to Complainant. James Bridgeman SC, Panelist Dated: August 11, 2023 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.