Dell Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2104001943209
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello of Pirkey Barber, Texas, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-help.com>, <dell-serv.com>, and <dell-master.com> (‘the Domain Names’), registered with Internet Domain Service BS Corp.
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 a Complaint to the Forum electronically on April 28, 2021; the Forum received payment on April 28, 2021.
On April 29, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <dell-help.com>, <dell-serv.com>, and <dell-master.com> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 May 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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-help.com, postmaster@dell-serv.com, postmaster@dell-master.com. Also on May 3, 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 May 25, 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 for computers and related goods and services with first use recorded as 1987. It operates a web site at www.dell.com. Its DELL logo has been similarly registered since 1992.
The Respondent registered the <dell-help.com> domain name on February 23, 2021, the <dell-serv.com> domain name on February 23, 2021 and the <dell-master.com> domain name on December 6, 2020.
The Domain Names are confusingly similar to the Complainant’s mark adding only a hyphen, the generic terms ‘help’, ‘serv’ and/or ‘master’ and the gTLD “.com” which do not prevent said confusing similarity.
The Respondent does not have rights or a legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names resolve to a web site offering competing computer services featuring the Complainant’s logo as a masthead and language suggesting that the Respondent’s site is an official site of the Complainant. This is not a bona fide offering of goods or services or a noncommercial legitimate or fair use.
It is registration and use in bad faith causing confusion on the Internet for commercial gain by using and taking advantage of the Complainant’s intellectual property. The Respondent is also collecting the telephone numbers of customers and has used a privacy service.
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 for computers and related goods and services with first use recorded as 1987. It operates a web site at www.dell.com. Its DELL logo has been similarly registered since 1992.
The Respondent registered the <dell-help.com> domain name on February 23, 2021, the <dell-serv.com> domain name on February 23, 2021 and the <dell-master.com> domain name on December 6, 2020.
The Domain Names have been used for a commercial web site offering competing services to the Complainant using the Complainant’s logo as a masthead and language on the web site which suggests the Respondent’s web site is 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”).
The Domain Names consist of, inter alia, the Complainant's DELL mark (which is registered, inter alia in the USA for computer related goods or services and has been used since 1987), a hyphen, the generic terms ‘help’, ‘serv’ and/or ‘master’ and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds 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 ‘help’, ‘serv’ and/or ‘master’ 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. 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 Names from the DELL mark, which is the distinctive component of the Domain Names. 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. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. 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). The use is commercial so cannot be legitimate noncommercial fair use.
The web site attached to the Domain Names uses the Complainant's DELL marks, multiple copies of the Complainant’s logo as a masthead on each page, and language suggesting that the Respondent’s site is an official site of the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
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
In the opinion of the Panelist the use made of the Domain Names in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe that it is connected to or approved by the Complainant as it uses a copy of the Complainant’s logo on each page as a masthead. This shows that the Respondent is aware of the Complainant its business, rights and services. The site also contains language suggesting that the Respondent’s site is an official site of the Complainant.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site and services on it likely to disrupt the business of the Complainant. The panel also notes the registration of three Domain Names containing the trade mark of the Complainant used for competing services suggesting a pattern of activity.
As such, the Panelist believes 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 under ¶¶¶ 4(b)(ii), (iii) and (iv).
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-help.com>, <dell-serv.com>, and <dell-master.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 27, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page