Dell Inc. and Michael & Susan Dell Foundation v. Donald Walker
Claim Number: FA2008001907527
Complainant is Dell Inc. and Michael & Susan Dell Foundation (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is Donald Walker (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michaelsdellfoundations.com> (‘the Domain Name’), registered with NameSilo, LLC.
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 the Forum electronically on August 6, 2020; the Forum received payment on August 6, 2020.
On August 6, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <michaelsdellfoundations.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2020 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@michaelsdellfoundations.com. Also on August 11, 2020, 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 September 1, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
Dell Inc. has used the famous mark DELL, as well as various other marks that include the word DELL, for many years for laptops, desktops, computer parts and accessories, computer service, repair, and support, and other computer-related products and services. Dell owns a number of trademark registrations for the DELL Marks including, inter alia in the USA with first use recorded as 1987.
Michael Saul Dell is the founder and CEO of Dell. He and his wife, Susan Dell, are co-founders of Complainant Michael & Susan Dell Foundation (the “Foundation”), a charitable entity dedicated to transforming the lives of children living in urban poverty. The Michael & Susan Dell Foundation owns registrations for multiple marks incorporating the wording MICHAEL & SUSAN DELL FOUNDATION including registrations in the USA with first use recorded as 1999. Moreover, the Foundation owns the domain name michaelsdellfoundation.com, which currently redirects to the Foundation’s official website at dell.org.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s marks, in particular it merely adds a letter ‘s’ to the end of foundation so that the Domain Name is a typosquatting registration.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name is not being used and so there is no bona fide offering of goods or services or legitimate noncommercial or fair use. The Domain Name is a typosquatting registration and is being passively held in bad faith. The Respondent has used a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Dell Inc. owns a number of trademark registrations for the DELL Marks for computer related services and goods including, inter alia, in the USA with first use recorded as 1987.
Michael Saul Dell is the founder and CEO of Dell. He and his wife, Susan Dell, are co-founders of the Michael & Susan Dell Foundation (the “Foundation”), a charitable entity dedicated to transforming the lives of children living in urban poverty. The Foundation owns registrations incorporating the wording MICHAEL & SUSAN DELL FOUNDATION including registrations in the USA with first use recorded as 1999. Moreover, the Foundation owns the domain name michaelsdellfoundation.com, which currently redirects to the Foundation’s official website at dell.org.
The Domain Name registered in 2020 has not been used.
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”).
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.
Here, Dell Inc. has rights in the mark DELL and the Foundation has rights in MICHAEL & SUSAN DELL FOUNDATION and, as such, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants such that it may treat them all as a single entity in this proceeding.
The Domain Name is confusingly similar to the Complainant’s DELL mark which is contained in the Domain Name in its entirety and also to its MICHAEL & SUSAN DELL FOUNDATION marks. In particular, with regard to the latter it merely substitutes ‘Michaels’ their surname for ‘Michael & Susan’ eliding the forenames and adds a single letter ‘s’ to the end (making the Domain Name a typosquatting registration which differs by only one letter to the domain name for the Foundation.) Adding an additional letter along with a gTLD does not distinguish the domain name from the mark per Policy 4(a)(i). See FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”). Additionally, removing words from a mark does not necessarily negate confusing similarity. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum August 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). Removal of an ampersand does not distinguish a domain name from a complainant’s mark. The Panel holds that removing ‘& SUSAN’ and adding an ‘s’ and a gTLD does not prevent confusing similarity between the Domain Name and the Complainant’s MICHAEL & SUSAN DELL FOUNDATION mark under the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. 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).
There has been no use of the mark. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum April 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i).).
Typosquatting is an indication of a lack of rights or legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum April 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s marks.
The registration of a domain name differing by only one letter from the domain name of the Foundation shows that the Respondent is aware of the Complainant, its rights, business and goods and services.
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum March 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing an established third party mark can be bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 <michaelsdellfoundations.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 2, 2020
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