Dell Inc. v. Leo Kap
Claim Number: FA2205001997160
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Leo Kap (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellpromotions.net>, registered with CloudFlare, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2022; the Forum received payment on May 20, 2022.
On May 20, 2022, CloudFlare, Inc. confirmed by e-mail to the Forum that the <dellpromotions.net> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, Inc. 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 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@dellpromotions.net. Also on May 24, 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.
A timely Response was received and determined to be complete on June 1, 2022.
On June 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Dell Inc., is a maker of computers and computer-related services.
Complainant has rights in the DELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <dellpromotions.net> domain name is identical and confusingly similar to Complainant’s mark because it incorporates the DELL mark in its entirety and adds the term “promotions” and the “.net” generic top-level domain (“gTLD”) to form a domain name.
Respondent has no rights or legitimate interests in the <dellpromotions.net> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the DELL mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the at-issue domain name resolves to an inactive webpage.
Respondent registered and uses the <dellpromotions.net> domain name in bad faith. Respondent is inactively holding the disputed domain name. Finally, Respondent registered the domain name with constructive or actual knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent contends as follows:
Dell Inc. can have this domain. I never received any letters from them. I can delete the domain, transfer it to them, have ICANN delete it or transfer it. Thanks again and my apologies for the inconvenience.
Complainant has rights in the DELL mark as demonstrated by its registration of such mark with the USPTO.
Respondent unequivocally consents to transferring the at-issue domain name to 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.
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)(ii) or 4(a)(iii), when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating in its Response that “Dell, can have the domain name.” The Panel, noting that the parties agree as to the disposition of the at-issue domain names, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief ‑even where Respondent agrees to such relief‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Without requiring a prerequisite finding under paragraph 4(a)(i) a Complainant lacking rights in an at-issue domain name might, via the UDRP, acquire such domain name(s) from a Respondent that also has no rights in such domain name(s).
Here, Complainant’s ownership of a USPTO trademark registration for its DELL trademark shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Furthermore, the at-issue domain name domain names contains Complainant’s DELL trademark in its entirety. Respondent merely appends Complainant’s trademark with the term” promotions” and follows all with the “.net” top-level domain name. The inclusion of a descriptive term and a top-level domain name is insufficient to distinguish Respondent’s trademark laden domain name from Complainant’s mark for the purposes of the Policy. Therefore the Panel finds that the at-issue domain name is confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)
In light of Respondent’s consent to transfer the at-issue domain name as discussed above, the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellpromotions.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 6, 2022
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