Dell Inc. v. Kriengkrai Kaewprasertsri / Miss Nisa Na Nakorn
Claim Number: FA2105001947257
Complainant is Dell Inc. ("Complainant"), represented by Caitlin Costello of Pirkey Barber PLLC, Texas, USA. Respondent is Kriengkrai Kaewprasertsri / Miss Nisa Na Nakorn ("Respondent"), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <batterydell.com> and <dellgadget.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2021; the Forum received payment on May 24, 2021.
On May 25, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <batterydell.com> and <dellgadget.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@batterydell.com, postmaster@dellgadget.com. Also on May 28, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 June 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is a leading seller of computers, computer accessories, and other computer- and technology-related products and services around the world. Complainant has used DELL and related marks in connection with this business for many years, and claims that the DELL mark has become famous in the United States, Thailand, and elsewhere as a result of Complainant's marketing and sales success. Complainant owns numerous trademark registrations for DELL, including registrations for the mark in standard character form in both the United States and Thailand, and for DELL in stylized form.
Respondent registered the disputed domain names <batterydell.com> and <dellgadget.com> in October 2017 and March 2020 respectively, and is using both domain names for websites that prominently display Complainant's mark and logo, a color scheme similar to that used by Complainant, and images of Complainant's products. Respondent appears to refer to itself on the websites as "Dell Thailand" and "Dell Gadget." The websites offer Complainant's products for sale and feature links to purchase competing products. Complainant states that Respondent is not commonly known by the disputed domain names, is not an authorized provider of Complainant's products or services, and is not licensed or otherwise permitted to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain names <batterydell.com> and <dellgadget.com> are confusingly similar to its DELL mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <batterydell.com> incorporates Complainant's registered DELL trademark, adding the generic term "battery" and the ".com" top-level domain. The disputed domain name <dellgadget.com> similarly incorporates Complainant's registered DELL trademark, adding the generic term "gadget" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Dell Inc. v. Face Coolss / iuvclampt, FA 1923420 (Forum Jan. 4, 2021) (finding <dellbattery.net> confusingly similar to DELL); Groupon Inc. v. Andrew Williamson, D2015-0488 (WIPO June 8, 2015) (finding <groupongadgets.com> confusingly similar to GROUPON). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
Both of the disputed domain name incorporate Complainant's registered mark without authorization. They are being used for commercial websites that pass off as Complainant, using Complainant's logo and images of its products to create the false appearance of a connection to Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Dell Inc. v. Liu Ying Jun, FA 1928280 (Forum Feb. 15, 2021) (finding lack of rights or interests in similar circumstances); Dell Inc. v. Face Coolss / iuvclampt, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered two domain names incorporating Complainant's famous mark and is using them to pass off as Complainant, promoting products for sale in a manner clearly designed to create the false impression of association or affiliation with Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Dell Inc. v. Liu Ying Jun, supra (finding bad faith in similar circumstances); Dell Inc. v. Face Coolss / iuvclampt, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <batterydell.com> and <dellgadget.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 21, 2021
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