Dell Inc. v. dell Ada / rick xie
Claim Number: FA1911001870925
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, US. Respondent is dell Ada / rick xie (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-partner-dom.com> and <dellemc-solution.com>, registered with GoDaddy.com, LLC; Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2019; the Forum received payment on November 12, 2019. The Complainant was received in both English and Chinese
On November 13, 2019, GoDaddy.com, LLC; Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <dell-partner-dom.com> and <dellemc-solution.com> domain names are registered with GoDaddy.com, LLC; Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the GoDaddy.com, LLC; Alibaba Cloud Computing (Beijing) Co., Ltd. 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 November 20, 2019, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 10, 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@dell-partner-dom.com, postmaster@dellemc-solution.com. Also on November 20, 2019, the Chinese language 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 December 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in DELL and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures and sells computers and computer equipment reference to the trademark DELL;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 1,860,272, registered October 25, 1994 for the trademark;
3. the disputed domain name <dell-partner-dom.com> was registered on September 16, 2019 and the <dellemc-solution.com> domain name on February 14, 2018;
4. the domain names have been used in connection with a phishing scheme, as later described; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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."
Preliminary Issue 1: Multiple Respondents
The identity of the underlying domain name registrants was protected by a privacy service but in consequence of these proceedings the Registrar disclosed that the holder of the <dell-partner-dom.com> domain name is “dell Ada” and the <dellemc-solution.com> domain name as “rick xie”.
Paragraph 3(c) of 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 has alleged that the domain names are effectively controlled by the same person and/or entity, operating under aliases. In particular, the Complaint reads:
“While the information contained in the WhoIs records does not match, the page found at Respondents’ dell-partner-dom.com website states (as translated using Google Translate): “. . . in order to better serve the enterprise procurement users, we bring you DELLEMC Dell Essence enterprise procurement platform , you can get more information by visiting www.dellemc-solution.com” and provides a click-through link to dellemc-solution.com, which hosts a website that is not associated with not associated with Complainant.”
There is some cogency to that submission in so far as the creation of the <dellemc-solution.com> domain name predates the creation of the domain name <dell-partner-dom.com> by more than 12 months. Nonetheless, in the absence of better evidence, the click-through link is no assurance of common ownership or control. However, further into the Complaint there is evidence of other commonalities, such as the fact that:
“… the links in the footer of the webpage at the disputed domain name, dell-partner-dom.com—which translate to “Laws and Regulations,” “Website,” “Terms and Conditions,” “Unresolved Issues,” “Privacy Policy,” “Dell Recycling,” and “Contacts”—all appear to forward visitors to pages on Complainant’s official websites. The dell-partner-dom.com website footer likewise contains the statement “Please visit the following website for more product information www.dell.com.cn/product_information”; the link leads to Complainant’s official sites.”
Later still, the Complaint reads:
“The website found at Respondents’ dell-partner-dom.com page contains an announcement that directs users to Respondents’ dellemc-solution.com website, namely, as translated by Google Translate, it announces “the suspension of support for DOM member procurement by the Dell Technologies Partner Program” and states “At the same time, in order to better serve the enterprise procurement users, we bring you DELLEMC Dell Essence enterprise procurement platform , you can get more information by visiting www.dellemc-solution.com.” The domain name provided, dellemc-solution.com, hosts yet another site by Respondents that attempts to deceive consumers into thinking that Respondents or Respondents’ business is Complainant or is at least affiliated or connected with, or authorized by, Complainant.
Namely, Respondents’ dellemc-solution.com prominently displays the DELL logo, as well as the DELL EMC mark, at the top of all of its pages; offers Complainant’s products; features news on Complainant; advertises alleged conferences and events run by Complainant on its products; and features statements at the bottom of many of its pages that translate to
“Dell's general terms and conditions apply here and are available online or by letter. Dell will try to troubleshoot quoting errors or other errors, but due to our omissions, some errors may still occur. Dell has the right not to accept any order with incorrect information. The above pictures are for reference only. Dell, Dell logo, the stylized E logo, E-Value, Easy as Dell, Dimension, OptiPlex, Inspiron, Latitude, Dell Precision, PowerEdge, PowerVault, PowerConnect, Dell OpenManage, CompleteCover, Premier Access, DellNet, SmartStep, TrueMobile, Axim Is a registered trademark or trademark of Dell Inc” and “Copyright: © 2018 Dell Inc. All rights reserved.”
After falsely creating an association with Complainant as described…, Respondents are attempting to gather Internet users’ personal information. On dell-partner-dom.com, Respondents attempt to gather user’s information through use of the fake login page that requires the visitor’s Dell Technologies Partner Program username and password.. Moreover, on dellemc-solution.com, Respondents attempt to gather user’s information through the “Project consultation” contact form, which requests, according to Google Translate, users’ name, phone number, and other information. Further, dellemc-solution.com offers a chat service, the initial automatic message of which states (once translated): “Please leave your mobile phone number, and you will get in touch with you at the first working time.” Through these information gathering methods, Respondents may illicitly collect the username, password, phone number, and/or other personal information of users or commercially benefit by abusing that information and/or by selling that information to third parties.
On balance, the Panel finds sufficient evidence of systemic similarities pointing to a single mind behind the two domain names and so concludes that these proceedings can continue, treating the named domain name owners as the single Respondent.
Preliminary Issue 2: Language of the Proceedings
The Panel notes the Chinese language Registration Agreements. Under Rule 11(a), the language of these proceedings is therefore Chinese. The Panel notes that Complainant has filed the Complainant in both Chinese and English. Given that there was no Response the Panel determines that the proceedings should continue in English and this Decision is therefore made in English.
Substantive Issues
Moving on, 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 based on 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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant provides evidence of its USPTO trademark registration for DELL, the Panel is satisfied that it has rights.
The domain names take the trademark and add non-distinctive matter in the form of the “.com” gTLD, together with descriptive/generic terms of no source distinguishing value. The Panel finds the disputed domain names to be confusingly similar to Complainant’s trademark[iii] and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
As stated above, the publicly available WHOIS information shielded the domain name holders but in consequence of these proceedings the names of the underlying registrants were disclosed. Neither name provides any prima facie evidence that Respondent might be commonly known by the disputed domain names. In the case where the word “Dell” incorporated into the name, the Panel finds that the use of that word is simply a ruse.
There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The use of the disputed domain names is as described above. Clearly, there has been no bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names[v].
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
On the evidence, the Panel finds bad faith under subparagraph (iv) above. The Panel has already found the disputed domain name to be confusingly similar to the trademark. There is no apparent reason for Respondent to register the names in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning. The evidence makes it plain that Respondent targeted Complainant trademark and business at the time of registration. The Panel finds registration in bad faith. Further, the Panel finds bad faith use since the redirection notice and the resolving website are likely to generate commercial gain for Respondent in one form or another since they fraudulently seek to obtain potentially sensitive personal information from users[vi].
The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-partner-dom.com> and <dellemc-solution.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 17, 2019
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 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; 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.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of the gTLD “.com” did not negate a finding of confusing similarity under Policy ¶ 4(a)(i)
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages, each of which display Complainant’s mark, logo, and reference Complainant’s products while prompting users to create an account, thereby asking for personal information. See Compl. Exs. H and I. The Panel may therefore find Respondent does not use the disputed domain names to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
[vi] See, for example, Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts.
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