Dell Inc. v. Domain Admin / Whois Privacy Corp. / Nikita Magomedov
Claim Number: FA2101001927886
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. / Nikita Magomedov (“Respondent”), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-commonhelp.com>, <dell-commonaid.com>, <dell-helpservice.com>, and <dell-servicepro.com>, registered with Internet Domain Service BS Corp; Registrar of Domain Names REG.RU 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2021; the Forum received payment on January 11, 2021. The Complaint was received in both Russian and English.
On January 12, 2021, Internet Domain Service BS Corp; Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the<dell-commonhelp.com>, <dell-commonaid.com>, <dell-helpservice.com>, and <dell-servicepro.com> domain names are registered with Internet Domain Service BS Corp; Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Internet Domain Service BS Corp; Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Internet Domain Service BS Corp; Registrar of Domain Names REG.RU 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 January 19, 2021, the Forum served the Russian and English language Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of February 8, 2021 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-commonhelp.com, postmaster@dell-commonaid.com, postmaster@dell-helpservice.com, postmaster@dell-servicepro.com. Also on January 19, 2021, the Russian and English 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 February 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 contends that all four disputed domain names are under common control of the same Respondent because the resolving websites for each domain are almost identical. Additionally, the domain names were created within two days of each other. The Panel finds all four disputed domain names are commonly controlled by a single Respondent who is using multiple aliases.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, the remainder of the proceedings should be conducted in English.
A. Complainant
i) Complainant, Dell Inc., is a world leader in computers and computer-related products. Complainant has rights in the DELL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,236,785, registered April 6, 1999). The disputed domain names are confusingly similar to Complainant’s mark because they each contain the entire DELL mark and simply add the terms “common help,” “common aid,” “service pro,” or “help service,” along with the “.com” generic top level domain (“gTLD”) to form the disputed domain names.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not licensed, or permitted Respondent to use the DELL mark. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to pass off as Complainant, offering competing technology support services, and phishes for users’ personal information.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the domains to pass off as Complainant, offering competing services, and engages in phishing. Additionally, Respondent’s bad faith is evidenced by the use of a privacy service. Furthermore, Respondent has constructive and/or actual knowledge of Complainant’s rights in the DELL mark based on Respondent’s efforts to pass of as Complainant.
B. Respondent
Respondent did not submit a response.
1. The disputed domain names were registered on November 24 and 26, 2020.
2. Complainant has established rights in the DELL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,236,785, registered April 6, 1999).
3. Each resolving website for the disputed domain names features Complainant’s DELL mark and products and purports to offer competing technology support services under the name “Dell Service Center.”
4. The websites also prompt users to provide their name and phone number upon clicking the “Order Repair” buttons.
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”).
Complainant asserts rights in the DELL mark based on registration with the USPTO (e.g., Reg. No. 2,236,785, registered April 6, 1999). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Since Complainant provides evidence of registration of the DELL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s DELL mark. Under Policy ¶ 4(a)(i), the addition of generic or descriptive terms and gTLD to a mark is insufficient to distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Complainant notes that the terms “common help,” “common aid,” “service pro,” and “help service” added to the DELL mark in the disputed domain names refer directly to services Complainant provides. Thus, the Panel finds that the disputed domain names are confusingly similar to the DELL mark under Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names, and Complainant has not licensed, or permitted Respondent to use the DELL mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization, license, or permission to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). Here, the WHOIS information of record notes “Domain Admin / Whois Privacy Corp. / Nikita Magomedov” as the registrant and no information suggests Complainant has authorized Respondent to use the DELL mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domains to pass off as Complainant, offer competing technology support services, and phish for users’ personal information. Under Policy ¶¶ 4(c)(i) or (iii), the use of a disputed domain name to pass off as a complainant in order to offer competing services for sale or to engage in phishing is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see additionally Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant provides screenshots of each resolving website for the disputed domain names, all of which feature Complainant’s DELL mark and products and purport to offer competing technology support services under the name “Dell Service Center.” The websites also prompt users to provide their name and phone number upon clicking the “Order Repair” buttons, which Complainant contends is a phishing attempt and that Respondent may sell that information to third parties. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent uses the domains to pass off as Complainant, offer competing services, and engage in phishing. Under Policy ¶ 4(b)(iv), the use of a disputed domain to pass off as a complainant in furtherance of a phishing scheme or in order to offer competing goods or service for sale is considered evidence of bad faith. See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel recalls that Complainant provides screenshots of the disputed domains which feature the DELL mark and DELL branded products, purportedly offer competing tech services, and likely phish for users’ personal information. Therefore, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant contends that Respondent has constructive and/or actual knowledge of Complainant’s rights in the DELL mark based on Respondent’s efforts to pass off as Complainant. While constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge when a respondent uses a disputed domain name to pass off as a complainant. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel infers, due to the manner of use of the disputed domain names and the notoriety of Complainant’s mark that Respondent had actual knowledge of Complainant’s rights in the DELL mark, and finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
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-commonhelp.com>, <dell-commonaid.com>, <dell-helpservice.com>, and <dell-servicepro.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 22, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page