national arbitration forum

 

DECISION

 

Dell Inc. v. dellstorechennai a/k/a Vijayakumar

Claim Number: FA1210001469089

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is dellstorechennai a/k/a Vijayakumar (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellstorechennai.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2012; the National Arbitration Forum received payment on October 25, 2012.

 

On October 28, 2012, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <dellstorechennai.com> domain name is 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 October 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 2012 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@dellstorechennai.com.  Also on October 29, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Dell Inc., is a world leader in computers, computer parts, and other computer-related products and services. Complainant sells its products and services in over 180 countries, including India. Complainant operates the website <www.dell.com>.

 

Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DELL marks (e.g., Reg. No. 1,860,272, registered October 25, 1994), and with the India Controller General of Patents Designs and Trademarks (“CGPDT”) (e.g., Reg. No. 367147, registered July 4, 2003).

 

Respondent’s <dellstorechennai.com> domain name is confusingly similar to Complainant’s DELL marks as it incorporates the DELL mark in its entirety and merely adds the generic term “store” and the geographic term “Chennai.”

 

Respondent has no rights or legitimate interests in the at-issue domain name.

Respondent is not authorized by Complainant to use its DELL marks or to offer its products or services. Respondent is using the disputed domain name to intentionally divert Internet users from Complainant’s website to Respondent’s website which contains a header stating “Dell Authorized Dealer Chennai,” while using the DELL mark and images of DELL products.

 

Respondent has registered and is using the disputed domain name in bad faith. Respondent has attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion between Respondent’s disputed domain name and Complainant’s mark, from which Respondent presumably benefits.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds registered trademarks for its DELL mark and related trademarks with the USPTO, as well as CGPDT.

 

Respondent is not authorized to use the DELL marks.

 

Respondent registered the at-issue <dellstorechennai.com> domain name subsequent to when Complainant acquired rights in the DELL marks.

 

The website referenced by the at-issue domain name resolves to an unauthorized website which contains a header stating “Dell Authorized Dealer Chennai,” while using the DELL mark and images of DELL products.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant owns several trademark registrations with the USPTO and with the CGPDTM for its DELL mark and for related marks. Complainant’s registrations with the USPTO and/or with the CGPDTM establish its rights in a mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). 

 

Respondent’s <dellstorechennai.com> is confusingly similar to Complainant’s DELL marks as it incorporates the DELL mark in its entirety, and merely adds the generic term “store” and the geographic term “Chennai.” The addition of descriptive words and geographic terms does not distinguish Respondent’s <dellstorechennai.com> domain name from Complainant’s DELL marks. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The at-issue domain name also appends the top-level domain “.com” to Complainant’s mark. Nevertheless, it is well settled that the addition of the top level domain name is irrelevant regarding Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s <dellstorechennai.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there is no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.

 

Respondent is not authorized to use Complainant’s DELL marks or to offer Complainant’s products or services. WHOIS information identifies “dellstorechennai a/k/a Vijayakumar” as the registrant of the at-issue domain name. However, there is no other evidence before the Panel which tends to prove that Respondent is commonly known by the disputed domain name. Notwithstanding the WHOIS information stating the Registrant is “dellstorechennai a/k/a Vijayakumar” Respondent has not come forward with any affirmative evidence tending to show that it is known by the at-issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

 

Respondent is using the at-issue domain name to intentionally divert Internet users from Complainant’s website to Respondent’s website where Respondent presumably profits from the enhanced traffic. Respondent’s domain name resolves to a website entitled “Dell Authorized Dealer Chennai,” which uses Complainant’s DELL marks and images of DELL products. Respondent’s false claim and unauthorized use of the DELL marks shows that Respondent intends to mislead Internet users into believing that the <dellstorechennai.com> website is sponsored by Complainant. Respondent’s use of the DELL marks and false claim to be an authorized DELL dealer to advertise and sell Complainant’s goods is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below a Policy ¶4(b) bad faith circumstance is present and there is non-Policy ¶4(b) evidence from which the Panel may likewise conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).

 

As mentioned elsewhere herein, Respondent has attempted to attract Internet users to its <dellstorechennai.com> website by creating a likelihood of confusion between Respondent’s at-issue domain name and Complainant’s mark. Respondent intends to benefit from such confusion. Respondent’s attempt to attract Internet users for commercial gain is evidenced by Respondent’s false claim to be an authorized dealer of DELL products and through the unauthorized use of DELL trademarks and images on the <dellstorechennai.com> website. The Panel therefore concludes that Respondent is attempting to attract Internet users to its <dellstorechennai.com> website by creating confusion between the at-issue domain name and Complainant’s mark in order to promote the advertising and sale of Complainant’s goods.  Using the domain name in this manner demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).

 

Finally, Respondent was well-aware of Complainant’s DELL trademark when it registered the at-issue domain name. Complainant’s DELL mark is known throughout the world. Respondent’s use of the confusingly similar at-issue domain name to front a website which deceptively appears to be authorized by Complainant could only have been designed with Complainant’s trademark in mind. That Respondent must have had actual knowledge of Complainant’s rights in the DELL mark prior to the time when it registered the at-issue domain name urges that Respondent registered the <dellstorechennai.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dellstorechennai.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  December 2, 2012

 

 

 

 

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