Dell Inc. v. shivaraj mb / Staci Solutions Pvt Ltd
Claim Number: FA2101001930104
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, USA. Respondent is shivaraj mb / Staci Solutions Pvt Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-computerrepair.com> and <dell-laptoprepairs.com>, registered with GoDaddy.com, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2021; the Forum received payment on January 28, 2021.
On January 28, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dell-computerrepair.com> and <dell-laptoprepairs.com> Domain Names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 22, 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-computerrepair.com, and postmaster@dell-laptoprepairs.com. Also on February 1, 2021, 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 February 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant alleges that both Domain Names are effectively controlled by the same person. 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.” Here, both Domain Names are registered at the same registrar (GoDaddy), were registered the same day (December 28, 2020), and have the same registrant and registrant information except for the email addresses. Moreover, they both resolve to web sites that are very nearly identical (Complaint Exhibit A). On these facts the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
A. Complainant
Complainant is a well-known provider of computers, computer accessories, and other computer-products and services. It has rights in the DELL mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <dell-computerrepair.com> and <dell-laptoprepairs.com> Domain Names are confusingly similar to Complainant’s DELL mark, as they incorporate the mark in its entirety and add generic terms like “computer repair” and “laptop repairs” that are highly associated with Complainant’s business.
Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by the Domain Names. It is not an authorized provider of Complainant’s products or services, and Complainant has not authorized it to use the DELL mark in any way. Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, they resolve to almost identical webpages which falsely imply an association with Complainant and purport to offer services similar to those offered by Complainant for its products.
Respondent registered and uses the Domain Names in bad faith. It attempts for commercial gain to create a likelihood of confusion with Complainant by displaying webpages that make use of Complainant’s mark and color scheme, and solicit Internet users’ personal information. Also, Respondent had actual knowledge of Complainant’s rights in the DELL mark when it registered the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The DELL mark was registered to Complainant with the USPTO (Reg. No. 1,860,272) on October 25, 1994 and was subsequently assigned to Complainant (Complaint Exhibit D). Complainant’s ownership of a mark registered with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <dell-computerrepair.com> and <dell-laptoprepairs.com> Domain Names are confusingly similar to Complainant’s DELL mark. They fully incorporate the mark, merely adding a hyphen and the generic terms “computer repair” in one case and “lap top repairs” in the other, both of which are highly associated with Complainant’s business, together with the ”.com” generic top-level domain. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”), Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the DELL mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s 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;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not commonly known by the Domain Names, (ii) Respondent is not an authorized provider of Complainant’s products or services and Complainant has not licensed or authorized Respondent to use its mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites resolving from them attempt to deceive Internet users into believing that they are owned by or affiliated with Complainant and purport to offer repair services for complainant’s products. These allegations are addressed as follows:
The information furnished to the Forum by the registrar lists “shivaraj mb / c/o STACI SOLUTIONS PVT LTD” as the registrant of the Domain Names. Neither of these names bears any resemblance to the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not an authorized provider of Complainant’s products or services and that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit G contains screenshots of the web sites resolving from the Domain Names. They prominently feature the name DELL and logo, and photos of Dell products, and purport to offer repair services for Complainant’s products. The web sites do not, however, attempt to impersonate or represent that they are sponsored by Complainant, stating instead as follows:
Powered by Staci Solutions Pvt ltd., dell-computerrepair.com is providing service since 2008 in the name of Src Infosolutionz. Here we provide computer servicing for wide range of brands and products.
The foregoing quote is from the website at <dell-computerrepair.com>. A virtually identical statement appears at the web site resolving from <dell-laptoprepairs.com>.[i] Complainant alleges that the sites “attempt to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant.” This allegation appears to be based upon Respondent’s admittedly liberal use of Complainant’s mark and logo and photos of Complainant’s products on its web sites, but these factors are outweighed by the clear, unambiguous language of Respondent’s description of itself and its business quoted above. The fact remains, however, that Respondent is using the Domain Names to attract Internet traffic to its web sites and that its repair services compete with those offered by Complainant. There is no question that if Respondent does in fact offer the repair services advertised on its web sites it is competing with Complainant. Using a confusingly similar domain name to offer services which compete with those of a complainant is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent having defaulted, the affirmative defense of fair nominative use is not asserted here but the Panel notes that even if it were, Respondent’s web sites purport to offer repair services on many brands of computers in addition to those of Complainant (Complaint Exhibit G). This would defeat any claim of nominative fair use, had it been asserted. Inter-Tel, Inc. v. Marcus, FA 727697 (Forum July 27, 2006) (respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 which 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; 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is using the Domain Names to attract, for commercial gain, Internet users to its competing web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. This fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant asserts that Respondent’s bad faith is also demonstrated by its attempts to gather Internet users’ personal information, citing a prior UDRP decision which found that the respondent in that case was guilty of phishing, which is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. Respondent’s web sites solicit the visitor’s name, email address, and a “Contact Number,” and offer the visitor an opportunity to type a message (Complaint Exhibit G). This does not rise to the level of soliciting sensitive personal, private information such as usernames, passwords or credit card or banking information. To the extent that Complainant has implied a claim of phishing here, the evidence does not support such a claim.
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in December 2020 (Complaint Exhibit A shows creation date). Complainant’s DELL mark has been used by it in commerce at least since 1987 (Complaint Exhibit D). It is well known throughout the world in the computer industry. Respondent copied that mark exactly into the Domain Names and purports to offer repair services specifically for Complainant’s products. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in an incorporated mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant 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-computerrepair.com> and <dell-laptoprepairs.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
February 26, 2021
[i] Powered by Staci Solutions Pvt ltd., dell-Laptoprepairs.com is providing service since 2008 in the name of Src Infosolutionz. Here we provide DELL Laptop servicing for wide range of brands and products. For commercial and residential purpose at you roof.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page