Dell Inc. v. bo wu / wubo
Claim Number: FA2203001987905
Complainant is Dell Inc. (“Complainant”), represented by Kimberly Arriola, Virginia, USA. Respondent is bo wu / wubo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-usa.com>, registered with MAT BAO CORPORATION.
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 March 11, 2022; the Forum received payment on March 11, 2022.
On March 14, 2022, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <dell-usa.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 2022 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-usa.com. Also on March 15, 2022, 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 April 6, 2022 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 relies on its rights in the DELL mark established by its ownership of the portfolio of trademark and service mark registrations described below and its extensive use of the mark in its international business as a manufacturer and supplier of computers and related goods and services.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s DELL mark in which it has rights because it incorporates the DELL in its entirety, merely appending the abbreviation “USA” signifying the United States of America, which is a place likely to be associated with Dell and its goods and services and is the country where Dell is headquartered.
Complainant adds that the presence of a generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant in a UDRP 4(a)(i) analysis.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name, and asserting that Complainant has not licensed or otherwise permitted Respondent to use Complainant’s DELL mark.
Referring to a screen capture of the website to which the disputed domain name resolves which has been annexed as an exhibit to the Complaint, Complainant contends that Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services as Respondent’s website features and advertises adult-oriented content which are offerings unrelated to Complainant which is the owner of the DELL mark.
Complainant adds that Respondent is putting the disputed domain name to a diversionary use by using the DELL mark to attract Internet traffic and it diverting to Respondent’s adult-oriented website which it submits tarnishes Complainant’s mark and is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
Complainant adds that Respondent’s inclusion of the DELL mark in the disputed domain name is not a nominative fair use, but instead Respondent’s use of the disputed domain name falsely conveys the impression that the content on Respondent’s website is authorized or sponsored by Complainant.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent’s bad faith is evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the disputed domain name; the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the DELL mark in a site accessible under the domain name; and Respondent’s domain name incorporates exactly the famous mark DELL mark.
Complainant contends that by using the disputed domain name that is confusingly similar to Complainant’s famous DELL mark to redirect users to Respondent’s website featuring adult-oriented content, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s DELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s web site.
Moreover, Complainant adds that Respondent’s tarnishing use of the disputed domain name for a site that features adult content constitutes bad faith use.
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; and
· 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.
Complainant has an established Internet presence, hosting its official website at <www.dell.com>.
The disputed domain name was registered on on August 23, 2021 and resolves to a website with adult content unrelated to Complainant.
There is no information available about Complainant except for that provided in the Complaint, 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 for the purposes of this proceeding.
The Registrar confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant 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 its portfolio of trademark and service mark registrations described above and extensive use of the mark in its business as a manufacturer and supplier of computers and computer related goods and services.
The disputed domain name <dell-usa.com> consists of Complainant’s mark in its entirety, in combination with a hyphen, the letters “usa” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s DELL mark is the dominant and only distinctive element in the disputed domain name. The hyphen adds no distinguishing character, and the letters ”USA” designate the United States of America where Complainant has its global headquarters.
Neither does the gTLD extension <.com> add any distinguishing character. It would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the DELL mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Complainant has not licensed or otherwise permitted Respondent to use Complainant’s DELL mark;
· The screen capture of the website to which the disputed domain name resolves which has been annexed as an exhibit to the Complaint, shows that Respondent is using the disputed domain name to attract traffic to Respondent’s website features and advertises adult-oriented content which are offerings unrelated to Complainant which is the owner of the DELL mark;
· Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
· Respondent is putting the disputed domain name to a diversionary use by using the DELL mark to attract Internet traffic and diverting it to Respondent’s adult-oriented website which tarnishes Complainant’s mark and is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name;
· Respondent’s inclusion of the DELL mark in the disputed domain name is not a nominative fair use, but instead Respondent’s use of the disputed domain name falsely conveys the impression that the content on Respondent’s website is authorized or sponsored by Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s distinctive DELL mark is internationally famous and its trademark rights long predate the registration of the disputed domain name.
It most improbable that the registrant of the disputed domain name, which contains Complainant’s mark in its entirety as a distinct and dominant feature was chosen and registered without knowledge of Complainant, its business, DELL marks and global reputation. This finding is supported by the fact that Complainant has an established Internet presence.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the DELL mark.
The uncontested evidence shows that Respondent is using the disputed domain name as the address of a website that presents adult content which is unrelated to Complainant or its business.
The intentional use of the disputed domain name in this manner is clearly an attempt to confuse, attract and misdirect, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site which constitutes bad faith use of the disputed domain name for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint, and had not contested Complainant’s allegations.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
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-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________
James Bridgeman SC
Panelist
Dated: April 11, 2022
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