Dell Inc. v. NG HOY
Claim Number: FA2111001973053
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is NG HOY (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-international.com>, registered with Shinjiru Technology Sdn Bhd..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2021; the Forum received payment on November 12, 2021.
On November 14, 2021, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <dell-international.com> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 November 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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-international.com. Also on November 16, 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 December 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DELL trademark and service mark established by its ownership of its portfolio of national registrations described below and its extensive use of the mark on its laptops, desktops, computer parts and accessories, computer service, repair, and support, and other computer-related products and services in over 180 countries. Complainant has adduced evidence showing that it generated $92.2 billion in revenue in fiscal year 2020 and is #34 on the Fortune 500. Complainant adds that it hosts a website at <www.dell.com>.
Complainant submits that the disputed domain name is identical or confusingly similar to the DELL mark in which it has rights, because the disputed domain name <dell-international.com> incorporates the famous mark DELL in its entirety, tacking on the generic term “international,” which Complainant submits is unlikely to diminish the similarity between Complainant’s mark and the disputed domain name.
Complainant adds that moreover, that Internet users are likely to associate the term “international” with Complainant’s products and services throughout the world, and the presence of a generic Top-Level Domain (“gTLD") extension <.com> is irrelevant in an analysis for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is named NG HOY, and is not commonly known by the disputed domain name. In addition, Complainant asserts that it has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant.
Complainant further argues that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Complainant refers to a screen capture of the screen generated by the disputed domain name, submitted in evidence as an annex to the Complaint, which illustrates that the disputed domain name does not currently resolve to any substantive content; instead, it resolves to an error message that says “This site can’t be reached”.
Complainant submits that such Inactive holding of a domain name generally does not equate to a bona fide offering of goods and services.
Complainant further alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name arguing that Respondent’s inclusion of DELL in the domain name is not a nominative fair use, but instead falsely conveys the impression that the disputed domain name is authorized or sponsored by Complainant and furthermore argues that the passive holding of the disputed domain name is not a legitimate noncommercial or fair use of the domain name.
Complainant adds that Respondent is passively holding of the disputed domain name that incorporates the DELL mark in its entirety; that the disputed domain name is confusingly similar to Complainant’s DELL mark; that Respondent has not used the disputed domain name in connection with any bona fide offering of any goods or services; that Respondent has not made any bona fide noncommercial or fair use of the DELL mark in a site accessible by means of the disputed domain name. Complainant submits that these circumstances, taken together, show that Respondent’s unauthorized registration and passive holding of the disputed domain name are evidence that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures computers, computer accessories, and other computer-related products and provides related services under the DELL mark for which it owns a portfolio of registrations including the following:
· United States registered trademark DELL, registration number 1,860,272, registered on the Principal Register on October 25, 1994 for goods in international class 9;
· United States registered service mark DELL, registration number 2,236,785, registered on the Principal Register on April 6, 1999 for services in international class 40;
· United States registered trademark DELL, registration number 2,794,705, registered on the Principal Register on December 16, 2003 for goods in international class 9;
· United States registered service mark DELL, registration number 2,806,769, registered on the Principal Register on January 20, 2004 for services in international class 37;
· United States registered service mark DELL, registration number 2,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States registered trademark DELL, 2,808,852, and registered on the Principal Register on January 27, 2004 for goods in international class 2;
· United States trademark and service mark DELL, registration number 3,215,023; and registered on the Principal Register on March 6, 2007 for goods and services in international classes 2, 9, 36, 37, 40 and 42; and
· Singapore registered trademark DELL, registration number 907821A, registered on November 27, 1989 for goods in class 9.
Complainant has an established Internet presence, hosting its official website at <www.dell.com>.
The record shows that the disputed domain name was registered on August 19, 2021 and does not resolve to any active website.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
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 has provided convincing evidence that it has rights in the DELL mark established by its ownership of the trademark and service mark registrations described above and its extensive use of the mark on its laptops, desktops, computer parts and accessories, computer service, repair, and support, and other computer-related products and services in over 180 countries, having grown to be a business generating $92.2 billion in revenue in fiscal year 2020, being listed at #34 on the Fortune 500.
The disputed domain name <dell-international.com>, consists of Complainant’s mark, a hyphen, the word “international” and the gTLD extension <.com>.
Complainant’s DELL mark is the initial, dominant and only distinctive element in the disputed domain name. Neither hyphen nor the generic term “international” add any distinguishing character to the disputed domain name and in the circumstances of this case, on the balance of probabilities an Internet user would consider the gTLD extension to be a necessary technical element.
This Panel finds therefore that the disputed domain name is confusingly similar to the DELL mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the domain name, arguing that
· Respondent, named NG HOY, is not commonly known by the domain name at issue;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant;
· Respondent has not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
· The screen capture submitted in evidence as an annex to the Complaint, illustrates that the disputed domain name does not currently resolve to any substantive content; instead, it resolves to an error message that says “This site can’t be reached” and such Inactive holding of a domain name generally does not equate to a bona fide offering of goods and services;
· Respondent’s inclusion of DELL in the domain name is not a nominative fair use, but instead falsely conveys that the domain name is authorized or sponsored by Complainant;
· the passive holding of the disputed domain name is not a legitimate noncommercial or fair use of the domain name.
It is well established that when a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to provide the existence of such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has an extensive worldwide reputation in the use of the DELL mark on its products and services, with an established Internet presence. It is improbable therefore that the registrant of the disputed domain name was chosen and registered without prior knowledge of Complainant, its products, services, and the DELL trademark and service mark.
Respondent has not responded to this Complaint, and Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore. DELL is a distinctive mark, and there is no active website associated with the disputed domain name.
In these circumstances, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind with the intention of causing confusion among Internet users.
This Panel further finds that the passive holding of the disputed domain name in such circumstances constitutes bad faith use for the purposes of the Policy.
As this Panel has found that on the balance of probabilities, the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
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-international.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 13, 2021
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