The Complainant is Garmin Ltd., George Town, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Hovey Williams LLP, United States of America.
The Respondent is Phillip Squires, Pensacola, Florida, United States of America, who acts for himself.
2. The Domain Name and Registrar
The disputed domain name <nuviphone.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2008. On April 8, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On April 8, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 11, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. The Response was filed with the Center on April 21, 2008.
The Center appointed Sir Ian Barker as the sole panelist in this matter on April 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant owns the United States registered trademark NÜVI which was registered on October 10, 2006 based on an application filed on July 11, 2005. It also owns registrations for the mark NÜVI in Canada and the European Community. It has applied for registration in the United States for the trademark NÜVIPHONE but registration has not yet been granted.
The Complainant markets a range of electronic goods, including personal navigation devices, travel guide features, language translation, audible book players under the mark NÜVI. Its products have been capable of use as a cellular telephone via Bluetooth technology. Several million of the Complainant’s products have been sold throughout the world.
The disputed domain name was registered by the Respondent on October 19, 2007. No website has been developed. The name is currently linked to a parking service with click-through references to various goods and services as organised by the parking site provider.
5. Parties’ Contentions
A. Complainant
The Complainant’s evidence was principally provided in an affidavit sworn by Jon Cassat, Vice President Communications of Garmin International Inc., a wholly-owned subsidiary of the Complainant. The Complainant offers a wide range of electronic goods under the mark NÜVI. It has recently announced publicly plans to expand its range for goods and services to be offered under the mark NÜVIPHONE, including satellite navigation systems, electronic navigational devices and various other electronic devices. Whilst the phone product being offered in connection with the Nüvi product line was not announced until January 30, 2008, there was speculation in the media as early as April 9, 2007, that the Complainant would be offering a cellular phone product. The Nüvi product line was introduced in September 2005 and has sold well since then.
The disputed domain name is identical to the application filed for trademark for NÜVIPHONE and is confusingly similar to the name Nüvi.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant gave him none. He is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain other than that he is using the website accessed by the disputed domain name for profit through the parking site. He has not offered any bona fide offering of goods and services and the disputed domain name should be considered as having been registered and used in bad faith.
The Complainant used the trademark NÜVI for approximately two years prior to the Respondent’s registration of the disputed domain name. The Respondent has attempted potentially to attract for commercial gain internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or the products and services identified thereto.
The Respondent attempted to seek an exorbitant price from the Complainant to purchase the disputed domain name. When the Complainant refused to pay, he threatened to sell the disputed domain name at auction. According to an affidavit from Mr. Kevin West, the Complainant’s Assistant General Counsel for Intellectual Property at a wholly owned subsidiary of the Complainant, the Chief Operating Officer of the Complainant received an unsolicited email from the Respondent offering to sell the disputed domain name. Mr. West then telephoned the Respondent, who offered to sell the disputed domain name for $200,000. Mr. West indicated that he would consider an offer of $1,000 to $5,000 which the Respondent refused.
The Respondent then emailed Mr. West to the effect that he was surprised that there was no interest in his proposal: that if the new product was half as successful as the Iphone, the Complainant would stand to receive a lot of traffic. The Respondent then offered to sell for $100,000. Mr. West spoke again with the Respondent. An offer of $10,000 for the disputed domain name and a phone was discussed. The Respondent sought $10,000 plus two phones. Mr. West agreed to take this offer to his superior. Before a decision was made, the Respondent sent another email withdrawing his offer and stating that he was going to auction the disputed domain name.
B. Respondent
After the Respondent had registered the disputed domain name, he started working on a site about near ultra-violet indicators. On January 2, 2008, the Respondent discovered that the Complainant was planning to release a product called Nüviphone.
As to the offers made via Mr. West, the Respondent said that he accepted the last one but Mr. West was supposed to work out some details. He had no further contact with the Respondent. He did not comment on his email wherein he said he would now auction the domain name.
On February 22, 2008, a corporation called Nuvio Corporation filed a trademark infringement suit against the Complainant for the use of the trademark NÜVIPHONE. Therefore, the Respondent assumed that there was no reason for further communications.
The Complainant has made false accusations. The Respondent is not trying to extort anything or intentionally to divert consumers from the Complainant. The disputed domain name has been parked and advertisements placed by the hosting company.
The disputed domain name was registered before the NÜVIPHONE trademark application or before there was any mention that the Complainant was releasing a phone product. The disputed domain name does not infringe the Complainant’s mark because the site will not confuse consumers. The site will promote ultra-violet indicators for phones. The Respondent does not compete with the Complainant.
6. Discussion and Findings
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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The dispute domain name is identical to the trademark NǛVIPHONE which has been applied for by the Complainant but not yet registered. It is not possible to say that the Complainant as yet has rights flowing from that trademark application for the purpose of the Policy.
However, in the Panel’s view, the disputed domain name is confusingly similar to the word “Nüvi” which is the Complainant’s registered trademark. The word “phone” when added to the Complainant’s registered trademark is confusingly similar to the trademarked word. Many UDRP Panels have recognized that the incorporation of a trademark in its entirety, with the addition of a generic word can be sufficient to establish that a domain name is confusingly similar as trademark. See the numerous cases listed in the Index of WIPO Panel Decisions section II 3(i) “mark with generic word”. AT&T Corp. v. William Gormally,
WIPO Case No. D2005-0758 <attelephone.com> is but one example where the addition of a generic word to a trademark in a domain name has been found confusingly similar to a trademark.
Furthermore, the generic word “phone” when added to the Complainant’s registered mark “NÜVI” is confusingly similar to the mark because of the reputation of the Complainant’s Nüvi products with communication technology.
The Complainant has satisfied the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant did not give the Respondent rights in its trade mark. Therefore, it is for the Respondent to prove that he comes within one of the non-exhaustive exceptions listed under Paragraph 4(c) of the Policy.
The mere statement that the Respondent is merely parking the site and, presumably, obtaining commercial gain from the parking supplier is not sufficient to satisfy the onus on him. Unlike the Complainant, he has filed no affidavits.
The Complainant has satisfied the second limb of Paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The recent nature of the registration of the disputed domain name indicates registration in bad faith. The Complainant owned a registered trademark as at the date the Respondent registered the disputed domain name. Since both parties are in the United States, it would not have been difficult for the Respondent to have ascertained that the Complainant held a registered trademark for the mark NÜVI.
The Panel would trust the affidavit evidence of Mr. West made under oath as against the unsubstantiated statements of the Respondent. Mr. West’s affidavit makes it quite clear that the Respondent withdrew his offer to accept $10,000 plus two telephones before that offer was accepted by the Complainant. The Respondent announced that he preferred to auction the disputed domain name. His email confirms that view. The attempt to sell the disputed domain names for a large sum and to auction it, in the circumstances indicates ongoing registration in bad faith.
The fact that a third party has taken legal proceedings to challenge the validity of the Complainant’s trademark does not alter the fact that the Complainant presently has rights in the trademark. This litigation by a third party has nothing to do with the Respondent.
Accordingly, the Complainant has proved all requirements of Paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nuviphone.com> to be transferred to the Complainant.
Hon. Sir Ian Barker, QC Sole Panelist
Dated: May 7, 2008
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