Dell Inc. v. itel computer solutions c/o raj kumar
Claim Number: FA1304001494154
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is itel computer solutions c/o raj kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellservicecenters.com>, <delllaptopprice.com>, <dellbatteryprice.com>, and <dellchargerprice.com>, registered with Good Domain Registry Pvt Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2013; the National Arbitration Forum received payment on April 16, 2013.
On April 11, 2013, Good Domain Registry Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <dellservicecenters.com> domain name is registered with Good Domain Registry Pvt Ltd. and that Respondent is the current registrant of the names. Good Domain Registry Pvt Ltd. has verified that Respondent is bound by the Good Domain Registry Pvt Ltd. 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 Apr 24, 2013, Good Domain Registry Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <delllaptopprice.com>, <dellbatteryprice.com>, and <dellchargerprice.com> domain names are registered with Good Domain Registry Pvt Ltd. and that Respondent is the current registrant of the names. Good Domain Registry Pvt Ltd. has verified that Respondent is bound by the Good Domain Registry Pvt Ltd. 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 April 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2013 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@dellservicecenters.com, postmaster@delllaptopprice.com, postmaster@dellbatteryprice.com, and postmaster@dellchargerprice.com. Also on April 30, 2013, 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 May 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. <dellservicecenters.com> incorporates the famous mark DELL in its entirety, merely tacking on the words “service” and “centers,” terms that are highly likely to be associated with Complainant and its goods and services.
ii. <delllaptopprice.com> incorporates the famous mark DELL in its entirety, merely tacking on the words “laptop” and “price,” terms highly likely to be associated with Complainant and its goods and services.
iii. <dellbatteryprice.com> incorporates the famous mark DELL in its entirety, merely tacking on the words “battery” and “price,” terms that are highly likely to be associated with Complainant and its goods and services.
iv. <dellchargerprice.com> incorporates the famous mark DELL in its entirety, merely tacking on the words “charger” and “price,” terms that are highly likely to be associated with Complainant and its goods and services.
i. Respondent is not commonly known by the domain names at issue.
ii. The domain names <dellservicecenters.com> and <delllaptopprice.com> are used for websites prominently displaying the DELL marks, and offering or promoting products and services that Respondent represents are genuine DELL products and services, but which in fact are not.
iii. The domain names <dellbatteryprice.com> and <dellchargerprice.com> are used for monetized parking pages.
i. The websites at <dellbatteryprice.com> and <dellchargerprice.com> are used to redirect Internet users to a website offering counterfeit products that compete directly with products offered by Complainant.
ii. Respondent is using the <dellservicecenters.com> and <delllaptopprice.com> for websites that attempt to deceive consumers into believing that Respondent is an authorized DELL distributor and service provider and that the products promoted on the websites are genuine DELL products. Respondent is presumably paid a fee or commission when Internet users visit the websites at <dellbatteryprice.com> and <dellchargerprice.com>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant (“Dell”) is a world leader in computers, computer accessories, and other computer-related products and services. Dell sells its products and services in over 180 countries, including India.
2. Dell’s primary website is located at the website www.dell.com from which it does a significant volume of its business online and around the world.
3. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DELL mark (e.g., Reg. No. 1,860,272, registered October 25, 1994).
4. Respondent registered the <delllaptopprice.com> domain name on August 19, 2010. Respondent registered the <dellservicecenters.com> domain name on April 19, 2011.Respondent registered the <dellbatteryprice.com> and <dellchargerprice.com> domain names on March 6, 2013.
5. The domain names <dellservicecenters.com> and <delllaptopprice.com> are used for websites prominently displaying the Dell Marks, and offering or promoting products and services that Respondent represents are genuine Dell products and services, but which in fact are not. The domain names <dellbatteryprice.com> and <dellchargerprice.com> are used for monetized parking pages.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is a world leader in computers, computer accessories, and other computer-related products and services. Complainant contends that it is the owner of trademark registrations with the USPTO for the DELL mark (e.g., Reg. No. 1,860,272, registered October 25, 1994). See Complainant’s Exhibit B. The Panel notes that although Respondent appears to reside in India, the Panel determines that Policy ¶ 4(a)(i) does not require that Complainant register the mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the DELL mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DELL trademark.
Complainant argues that the <dellservicecenters.com>, <delllaptopprice.com>, <dellbatteryprice.com>, <dellchargerprice.com> domain names incorporate the famous mark DELL in its entirety, merely tacking on the words “service,” “centers,” “laptop,” “price,” “battery,” or “charger,” terms that are highly likely to be associated with Complainant and its goods and services. The Panel finds that Respondent’s addition of generic and descriptive terms does not negate confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant argues that the presence of a generic top-level domain (“gTLD”) “.com” in these domain names is irrelevant in a UDRP 4(a)(i) analysis. The Panel agreeS that Respondent’s addition of gTLDs to the domain names is irrelevant to a Policy ¶ 4(a)(i) analysis. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Consequently, the Panel concludes that Respondent’s <dellservicecenters.com>, <delllaptopprice.com>, <dellbatteryprice.com>, <dellchargerprice.com> domain names are confusingly similar to Complainant’s DELL marks to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous DELL trademark and to use it in its domain name, making only the addition of generic words, thus implying that the domain name in each case is an official domain name of Complainant and that it will lead to official websites of Complainant dealing with service centers, laptop prices, battery prices and charger prices;
(b) Respondent has then caused the respective domain names to redirect unsuspecting Internet users to websites that are designed to featuring generic links to third-party websites, two of which are offering or promoting products and services that Respondent represents are genuine DELL products and services, but which in fact are not and two of which are used for monetized parking pages;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is not commonly known by the domain names at issue. Complainant argues that it has not licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant. The Panel notes that the WHOIS information lists “itel computer solutions c/o raj kumar” as the registrant of the domain names. See Complainant’s Exhibit C. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant contends that the domain names <dellservicecenters.com> and <delllaptopprice.com> are used for websites prominently displaying the DELL marks, and offering or promoting products and services that Respondent represents are genuine DELL products and services, but which in fact are not. The Panel finds that Respondent’s use of the <dellservicecenters.com> and <delllaptopprice.com> domain names to attempt the sale of counterfeit products is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011)(“Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”);
(f) Complainant argues that <dellservicecenters.com> prominently features a DELL logo that incorporates the words, “DELL SERVICE CENTERS.” Complainant asserts that the home page provides links to various “Dell Laptop Service Center[s]” in India that lead to pages containing contact information for the various service centers and text representing the centers as being authorized by Complainant. Complainant further claims that Respondent’s <delllaptopprice.com> claims to be “India’s largest Dell online laptop shop offering all Dell Laptops, Dell Notebooks, Dell Notebook Accessories.” See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the <dellservicecenters.com> and <delllaptopprice.com> domain names constitutes Respondent’s attempt to pass itself off as Complainant, which is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website);
(g) Complainant argues that the domain names <dellbatteryprice.com> and <dellchargerprice.com> are used for monetized parking pages displaying various links that consumers are likely to associate with Complainant and/or its products and services, yet in reality divert traffic to third-party websites not affiliated with Complainant. The Panel notes that Respondent’s <dellbatteryprice.com> and <dellchargerprice.com> domain names feature competing links such as “Dell Desktop Computers,” “New Inspiron PCs at Dell,” “Fix My PC Free,” and others. See Complainant’s Exhibit D. The Panel finds that Respondent’s use of the <dellbatteryprice.com> and <dellchargerprice.com> domain name to display competing links is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that the websites at <dellbatteryprice.com> and <dellchargerprice.com> are used to redirect Internet users to a website offering products that compete directly with products offered by Complainant. The Panel notes that Respondent’s <dellbatteryprice.com> and <dellchargerprice.com> domain names feature competing links such as “Dell Desktop Computers,” “Inspiron Deals at Dell,” “Dell Drivers,” and others. See Complainant’s Exhibit D. The Panel determines that Respondent’s use of the <dellbatteryprice.com> and <dellchargerprice.com> domain names to list competing hyperlinks disrupts Complainant’s business, evidencing bad faith use and registration under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Secondly, Complainant alleges that Respondent is using the <dellservicecenters.com> and <delllaptopprice.com> for websites that attempt to deceive consumers into believing that Respondent is an authorized DELL distributor and service provider and that the products promoted on the websites are genuine DELL products. Complainant argues that the <dellservicecenters.com> and <delllaptopprice.com> domain names are used to redirect Internet users to a website <www.laptopstoreindia.com> offering for sale counterfeit products that compete directly with products offered by Complainant. See Complainant’s Exhibits C and D. Complainant contends that Respondent’s registration of the <dellservicecenters.com> and <delllaptopprice.com> domain names has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s DELL marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites. The Panel agrees that Respondent is using the domain names to attract Internet users for its own commercial gain, demonstrating bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood that Internet users may find a respondent’s website whilst searching for the complainant’s website, become confused as to the affiliation with or sponsorship of the disputed domain name to the complainant, and purchase goods through the disputed domain name rather than through the complainant).
Thirdly, Complainant asserts that Respondent is presumably paid a fee or commission when Internet users visit the websites at <dellbatteryprice.com> and <dellchargerprice.com>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites. Complainant contends that Respondent’s registration of the <dellbatteryprice.com> and <dellchargerprice.com> domain names has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s DELL marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites. The Panel agrees that Respondent’s use of the <dellbatteryprice.com> and <dellchargerprice.com> domain names to provide competing links proves bad faith use and registration under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Fourthly, Complainant argues that <dellservicecenters.com> prominently features a DELL logo that incorporates the words, “DELL SERVICE CENTERS.” Complainant asserts that the home page provides links to various “Dell Laptop Service Center[s]” in India that lead to pages containing contact information for the various service centers and text representing the centers as being authorized by Complainant. Complainant further claims that Respondent’s <delllaptopprice.com> claims to be “India’s largest Dell online laptop shop offering all Dell Laptops, Dell Notebooks, Dell Notebook Accessories.” See Complainant’s Exhibit D. The Pane finds that Respondent’s use of the <dellservicecenters.com> and <delllaptopprice.com> domain names constitutes Respondent’s attempt to pass itself off as Complainant, demonstrating bad faith registration and use on the part of Respondent in accordance with Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the Complainant’s trademarks in the manner described above and its subsequent use of the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellservicecenters.com>, <delllaptopprice.com>, <dellbatteryprice.com>, and <dellchargerprice.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page