Dell Inc. v. saurabh gupta
Claim Number: FA1908001856146
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is saurabh gupta (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellphonesupport.com>, registered with Network Solutions, 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 August 7, 2019; the Forum received payment on August 7, 2019.
On August 7, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <dellphonesupport.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2019 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@dellphonesupport.com. Also on August 7, 2019, 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 August 29, 2019, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Respondent’s <dellphonesupport.com> domain name is confusingly similar to Complainant’s DELL mark as Respondent incorporates Complainant’s mark and adds the generic terms “phone” and “support,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <dellphonesupport.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent displays Complainant’s mark and attempts to deceive consumers into thinking Respondent is somehow affiliated with Complainant. Respondent uses the disputed domain name to offer support services that are in competition with Complainant. Furthermore, Respondent attempts to gather Internet users’ personal information such as their name, phone number, and email address.
Respondent registered and is using the <dellphonesupport.com> domain name in bad faith by offering competing repair and maintenance services. Respondent attempts to create a false affiliation with Complainant in order to commercially benefit. Respondent also attempt to obtain users’ personal information through a phishing scheme. Finally, Respondent had knowledge of Complainant’s rights in the DELL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a world leader in computers, computer accessories, and other computer-related products and services.
2. Complainant has established its trademark rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
3. Respondent registered the <dellphonesupport.com domain name on June 25, 2019.
4. Respondent has used the domain name to display Complainant’s mark and attempted to deceive consumers into thinking Respondent is somehow affiliated with Complainant. Respondent also uses the disputed domain name to offer support services that are in competition with Complainant. Respondent also improperly attempts to gather Internet users’ personal information such as their name, phone number, and email address.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to have rights in the DELL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the DELL mark (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Therefore, the Panel finds that Complainant has rights in the DELL mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s Dell mark. Complainant argues that Respondent’s <dellphonesupport.com> domain name is confusingly similar to Complainant’s DELL mark as it contains the mark in its entirety, along with a generic term and a gTLD. Registration of a domain name that contains a famous mark that adds a generic term and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Respondent incorporates Complainant’s mark and adds the generic terms “phone” and “support” along with the gTLD “.com.” Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s DELL 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 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 DELL trademark and to use it in its domain name, adding the generic terms “phone” and “support” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <dellphonesupport.com> domain name on June 25, 2019;
(c) Respondent has used the domain name to display Complainant’s mark and attempted to deceive consumers into thinking Respondent is somehow affiliated with Complainant. Respondent also uses the disputed domain name to offer support services that are in competition with Complainant. Respondent also improperly attempts to gather Internet users’ personal information such as their name, phone number, and email address;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <dellphonesupport.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the DELL mark or register domain names using Complainant’s mark. 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. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Saurabh Gupta” and there is no other evidence to suggest that Respondent was authorized to use the DELL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent displays Complainant’s mark and attempts to deceive consumers into thinking Respondent is somehow affiliated with Complainant. Use of a disputed domain name to confuse and deceive internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use 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).”). Here, Complainant has provided screenshots of Respondent’s <dellphonesupport.com> domain name that shows Complainant’s DELL mark and products. See Compl. Ex. E. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent uses the <dellphonesupport.com> domain name to support services that are in competition with Complainant. Use of a disputed domain name to support services that are in competition with a complainant is not a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that the complainant provides freelance talent services, and that the respondent competes with the complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Complainant argues that the phone number seen on Respondent’s resolving webpage promotes a computer support service that competes with Complainant. See Compl. Ex. D. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant argues that Respondent attempts to gather Internet user’s personal information such as name, phone number, and email address. Use of a disputed domain name to obtain Internet user’s personal information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Here, Complainant has provided a screenshot of Respondent’s <dellphonesupport.com> domain name’s resolving “Contact Us” webpage that shows users can provide their name, phone number, and email address, which Respondent could commercially benefit by selling that information to third parties. See Compl. Ex. E. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <dellphonesupport.com> domain name in bad faith by offering competing repair and maintenance services. Use of a disputed domain name to offer competing repair and maintenance services may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products); see also 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.”). Here, Complainant has provided the Panel with screenshots of Respondent’s domain name’s resolving webpage that shows Respondent offering services that repair Complainant’s products. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and is using the <dellphonesupport.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant contends that Respondent’s impersonation or false affiliation with Complainant, which purportedly is designed to obtain users’ information fraudulently, evinces Respondent’s bad faith. Such use of a domain name can be used to support a finding of bad faith registration and use per Policy ¶ 4(b)(iv). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of the “Contact Page” located at the disputed domain name’s resolving websites in which users provide their name, email and phone number. See Compl. Ex. E. The Panel therefore finds Respondent to have registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the DELL mark prior to registration of the <dellrepairsandiego.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of a complainant’s rights in the mark prior to registering the disputed domain name is adequate to find 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.”). Use of a disputed domain name that uses a Complainant’s mark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Here, Complainant argues that Respondent’s knowledge of Complainant’s rights in the DELL mark is indicated by its use of the disputed domain name to display the DELL mark and related products. See Compl. Ex. D. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registration of the disputed domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
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 name using the DELL mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it 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 <dellphonesupport.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 30, 2019
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