Dell Inc. v. Domain Admin / Whois Privacy Corp. / Nikita Magomedov
Claim Number: FA2103001935295
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. / Nikita Magomedov (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-spbproservice.com>, <dell-rem.com>, and <msk-assist-dell.com>, (‘the Domain Names) registered with Internet Domain Service BS Corp; Instra Corporation Pty Ltd..
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 March 3, 2021; the Forum received payment on March 3, 2021.
On March 4, 2021, Internet Domain Service BS Corp; Instra Corporation Pty Ltd. confirmed by e-mail to the Forum that the <dell-spbproservice.com>, <dell-rem.com>, and <msk-assist-dell.com> domain names are registered with Internet Domain Service BS Corp; Instra Corporation Pty Ltd. and that Respondent is the current registrant of the names. Internet Domain Service BS Corp; Instra Corporation Pty Ltd. has verified that Respondent is bound by the Internet Domain Service BS Corp; Instra Corporation Pty 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 March 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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-spbproservice.com, postmaster@dell-rem.com, postmaster@msk-assist-dell.com. Also on March 8, 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 March 31, 2021 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA and Russia for computers and related goods and services with first use recorded in the USA as 1987. It operates a web site at www.dell.com.
<dell-spbproservice.com> registered in 2021 incorporates the Complainant’s DELL mark in its entirety merely tacking on, a hyphen, the geographical indication ‘spb’ for St Petersburg and the generic phrase ‘proservice’ and the generic top level domain “.com” which is irrelevant in a UDRP analysis.
<dell-rem.com> registered in 2020 incorporates the Complainant’s DELL mark in its entirety merely tacking on, a hyphen, the generic term ‘rem’ and the generic top level domain “.com” which is irrelevant in a UDRP analysis.
<msk-assist-dell.com>,incorporates the Complainant’s DELL mark in its entirety merely tacking on hyphens, the geographical indication ‘msk’ for Moscow and the generic word ‘assist’ and the generic top level domain “.com” which is irrelevant in a UDRP analysis.
Respondent has no rights or legitimate interests in the Domain Names as the Domain Names are being used for web sites that attempt to deceive customers into thinking the Respondent is or is connected to the Complainant. It does so by using similar blue trade dress, the Complainant’s logo and pictures of the Complainant’s offices to promote computer support services in direct competition with services offered by the Complainant. The site also gathers customer information. Respondent is not an authorized provider of Complainant’s computer repair services and is not licensed by the Respondent to use its DELL mark. The use is not a nominative fair use.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Names.
Respondent registered and is using the Domain Names in bad faith. Use of the Domain Names which are confusingly similar to the Complainant’s DELL mark in relation to web sites using Complainant’s color scheme, logo and pictures of its offices and offering services for Complainant’s products in a way that attempts to suggest the Respondent’s services are associated with DELL shows Respondent’s knowledge of the Complainant’s rights.
Respondent has attempted to attract for commercial gain Internet users to Respondent’s web sites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web sites and providing competing services diverting Internet users for commercial gain. Respondent is attempting to gather Internet users’ personal information after falsely creating an association with the Complainant.
Respondent registered the Domain Names for commercial content using a privacy service which has been taken to be a rebuttable presumption of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA and Russia for computers and related goods and services with first use recorded in the USA as 1987. It operates a web site at www.dell.com.
<dell-spbproservice.com> was registered in 2021 and <dell-rem.com> and <msk-assist-dell.com> were registered in 2020. The Domain Names were pointed to sites offering competing services using the Complainant’s mark, logo, color schemes and pictures of the Complainant’s offices appearing to be an official site of the Complainant.
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 RESPONDENTS
In the instant proceedings, Complainant has alleged that the person or entity which controls the Domain Names are effectively the same person and/or entity. 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.” The resolving webpages of the Domain Names are almost identical, featuring essentially the same text, headings, graphics, and photographs and the Respondent has not disputed that it is the owner of the Domain Names. Accordingly the Panel holds that the Complaint may proceed since it is more likely than not that the Domain Names are controlled by the same person or entity.
The Domain Names consist of the Complainant's DELL mark (which is registered, inter alia in the USA and Russia for computer related goods or services with first use recorded as 1987 in the USA), hyphen or hyphens, the generic terms ‘spb’, ‘proservice’, ‘rem’, ‘msk’ and/or ‘assist’ and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds a generic term or generic terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘spb’, ‘proservice’, ‘rem’, ‘msk’ and/or ‘assist’ to the Complainant's mark does not prevent confusing similarity between the Domain Names and the Complainant's trade mark pursuant to the Policy. Nor does the addition of a hyphen or hyphens. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).”).
The gTLD “.com” does not serve to distinguish the Domain Name from the DELL mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
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 Names. 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).
The use of the Domain Names is commercial and so cannot be legitimate noncommercial use.
It is clear from the evidence that the Respondent has used the Domain Names to promote competing computer services which are not connected with the Complainant. This use of the Domain Names, the Complainant’s logo, color scheme and pictures of the Complainant’s offices on the Respondent’s web sites attached to the Domain Names makes it clear that the Respondent was aware of the significance of the DELL name and the Complainant’s business, rights and services. The usage of the Complainant’s DELL mark which has a significant reputation in relation to computer related services is not fair and the Respondent appears to refer to itself, its business and/or its services using DELL in a misleading way passing itself off as or authorized by the Complainant to get Customer business or information. As such this cannot amount to the bona fide offering of goods and services. See 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.”).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trademarks in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above the Respondent's use of the Domain Names is commercial and it is using them to make profit from competing services not associated with the Complainant in a confusing manner. The use of the Complainant’s mark, logo, color scheme and pictures of the Complainant’s offices shows that the Respondent was aware of the Complainant and the Complainant’s rights, business and services. It seems clear that the Respondent appearing to refer to itself, its business and/or its services using DELL in a misleading way together with the use of a similar blue to the Complainant, the Complainant’s logo and pictures of the Complainant’s offices would cause people to associate the sites attached to the Domain Names with the Complainant and its business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its web sites and services. This also appears designed to disrupt the business of a competitor. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy 4(b)(iii).); See also CAN Financial Corporation v. William Thomson/CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that Respondent had engaged in bad faith under Policy 4(b)(iv) by using a confusingly similar domain name to attract internet users where it offered competing services).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.
There is no need to consider additional alleged grounds of bad faith.
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-spbproservice.com>, <dell-rem.com>, and <msk-assist-dell.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 31, 2021
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