Dell Inc. v. tawnya grilth c/o dellpc.us
Claim Number: FA1107001400620
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is tawnya grilth c/o dellpc.us (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellpc.us>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 28, 2011. The National Arbitration Forum received a hard copy of the Complaint on July 28, 2011.
On July 27, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellpc.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 28, 2011, a Notification of Complaint and a Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 17, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dellpc.us> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellpc.us> domain name.
3. Respondent registered or used the <dellpc.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., is a large global provider of computers and computer related accessories. Complainant owns a vast array of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DELL mark (e.g. Reg. No. 1,616,571 registered October 9. 1990). Complainant uses the mark extensively in advertisements and promotional campaigns. Complainant also places the mark on many of its products.
Respondent, tawnya grilth c/o dellpc.us, registered the disputed domain name on November 17, 2005. The disputed domain name resolves to a website offering downloads to malware and malicious software.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has established its rights in the DELL mark by registering that mark with the USPTO. Complainant has submitted multiple trademark certificates verifying both that the mark is duly registered and that it is the owner. Thus, the Panel finds that Complainant has established its rights in the DELL mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g. Reg. No. 1,616,571 registered October 9. 1990). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant also contends that Respondent’s <dellpc.us> domain name is confusingly similar to its DELL mark. The disputed domain name includes the entire mark while adding the country-code top-level domain (“ccTLD”) “.us” and a term descriptive of Complainant’s products, “pc.” The Panel finds that adding a ccTLD to the mark along with a term descriptive of Complainant’s business does not sufficiently differentiate Respondent’s disputed domain name from Complainant’s mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant claims, and the Panel agrees, that it has made a prima facie case indicating Respondent lacks rights or legitimate interest in the disputed domain name. Due to that showing, Respondent now bears the burden of proving it has rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to UDRP ¶ 4(c)). Respondent, having failed to file a Response in this case, has allowed this Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, before making such a determination the Panel will still examine the entire record and make findings in accordance with the factors listed in UDRP ¶ 4(c).
The Panel finds that Complainant does not have a trademark registration related to its disputed domain name. Therefore, the Panel finds that Respondent has not established its rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant also claims that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “tawnya grilth c/o dellpc.us.” Although the WHOIS information appears to suggest that Respondent may be commonly known by the disputed domain name, more evidence is required to support such a finding. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to [UDRP] ¶ 4(c)(ii).”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
Finally, Complainant claims that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a site offering malware and malicious software downloads. Respondent may be attempting to collect information from the unsuspecting downloader who happens upon the malicious software offered at the site. Presumably, Respondent is benefitting financially from this arrangement. Thus, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website,…[which] may annoy or harm the users in some way,…is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to [UDRP] ¶¶ 4(c)(i) or (iii).”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Although Policy ¶ 4(b) offers four avenues through which Complainant may prove bad faith, the Panel finds that Complainant is not limited to those options alone because, 4(b) is merely provides illustrative examples of bad faith and is not exclusive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that UDRP ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Because of this, Complainant may use the entirety of the situation surrounding the registration and use of the disputed domain name to prove bad faith under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent ostensibly uses the disputed domain name to download malicious software onto the computers of the Internet users diverted to its website. Presumably, Respondent is doing this to collect personal and financial information about the unsuspecting downloader’s and is then using that information as it sees fit. The Panel finds that Respondent’s use of the disputed domain name to trick Internet users into downloading malware for its own benefit constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellpc.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 1, 2011
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