Dell Inc. v. Harry Ron
Claim Number: FA1309001518221
Complainant is Dell Inc. (“Complainant”), represented by Zulfiqar Khan of Khursheed Khan & Associates, Pakistan. Respondent is Harry Ron (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delltronics.org>, registered with GoDaddy.com, LLC.
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 September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <delltronics.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@delltronics.org. Also on September 6, 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 October 1, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant: made the following contentions.
1. Policy ¶ 4(a)(i)
a. Complainant is a multinational computer technology corporation that develops, sells and supports computers and related products and services.
b. Complainant is one of the largest technological corporations in the world, employing more than 100,000 people worldwide. See Complainant’s Exhibit 13.
c. Complainant sells its DELL products and services directly in over 80 countries, achieving revenue of almost $62.1 billion for the 2012 fiscal year. Complainant has been the world’s largest direct seller of computer systems for several years. See Complainant’s Exhibits 13-15.
d. Complainant owns rights in the DELL mark through its registration of the mark with trademark authorities around the world, including registration with the Pakistani government’s Trade Marks Registry (e.g., Reg. No. 133,178 registered December 4, 1995). See Complainant’s Exhibit 2.
e. Respondent’s <delltronics.org> domain name is confusingly similar to Complainant’s DELL trademark.
i. Specifically, the disputed domain name incorporates the DELL mark in its entirety, merely adding “tronics” onto the end of the mark, followed by the generic top-level domain (“gTLD”) “.org.”
ii. Because Complainant is also engaged in the business of selling electronics, the term “tronics” (derived from or referring to “electronics”) has an obvious relationship to Complainant’s business.
2. Policy ¶ 4(a)(ii)
a. Respondent is using the DELL mark in the disputed domain name to divert Internet users to Respondent’s competing site, through which Respondent purports to offer for sale unauthorized versions of Complainant’s products. Through its use of the disputed domain name, Respondent attempts to falsely hold itself out as Complainant.
i. Respondent uses the disputed domain name to route Internet users to a site offering what purports to be Information “Technology and Computer Trading” services and the sale of related goods by Respondent, including personal and clone computers, using Complainant’s DELL brand and various third-party brands including those of Complainant’s competitors. See Complainant’s Exhibit 20.
ii. Respondent’s website also features an outdated version of Complainant’s DELL logo. See Complainant’s Exhibit 21.
iii. Respondent’s website provides no option to purchase Respondent’s products online and no physical address for Respondent’s alleged business, listing the email address “harry@delltronics.org” as the only means for contacting Respondent. See Complainant’s Exhibit 22.
b. Respondent is not commonly known by the <delltronics.org> domain name.
i. Respondent has no connection or affiliation with Complainant, nor has Complainant granted Respondent a license or consent, express or implied, to use the DELL mark in a trade name, domain name, or any other manner.
ii. There is nothing in the WHOIS record for the disputed domain name, which identifies Respondent as “Harry Ron,” that suggests Respondent is known by <delltronics.org>.
3. Policy ¶ 4(a)(iii)
a. Respondent’s use of the disputed domain name disrupts Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
i. Respondent is using the <delltronics.org> domain name, which is confusingly similar to Complainant’s DELL mark, to advertise and sell services and products in competition with those offered by Complainant under its marks.
b. Respondent’s use of the disputed domain name also suggests bad faith registration and use pursuant to Policy ¶ 4(b)(iv)
i. Respondent’s use of the disputed domain name to advertise and sell unauthorized products that purport to be those of Complainant is evidence that Respondent is trying to profit by giving the false impression of being affiliated with Complainant.
ii. Respondent’s use of the disputed domain may lead customers to believe that the products offered for sale at Respondent’s website are being made and sold by Complainant.
c. Respondent must have been aware of Complainant and its DELL marks when Respondent registered the disputed domain name.
i. Prior to and at the time of registration of the disputed domain name, Respondent was on notice of Complainant’s exclusive rights in the DELL marks as a result of Complainant’s worldwide trademark filings, prior extensive use of the marks (for more than 20 years, in some cases), websites, and distribution and sale of products in Pakistan and elsewhere through its authorized distributors.
ii. Respondent’s notice is also evident from the following statement appearing on Respondent’s website, “We supply products and provide services for top vendors including the following: [Dell logo is depicted].” See Complainant’s Exhibit 21.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a multinational computer technology corporation that develops, sells and supports computers and related products and services.
2. Complainant owns rights in the DELL mark through its registration of the mark with trademark authorities around the world, including registration with the Pakistani government’s Trade Marks Registry (e.g., Reg. No. 133,178 registered December 4, 1995). See Complainant’s Exhibit 2.
3. The <delltronics.org> domain name was registered on May 25, 2013.
4. Respondent is using the disputed domain name to divert Internet users to Respondent’s competing site, through which Respondent purports to offer products in competition with those of Complainant but which in fact are unauthorized versions of Complainant’s products.
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 identifies itself as a multinational computer technology corporation that develops, sells and supports computers and related products and services. Complainant claims to be one of the largest technological corporations in the world, employing more than 100,000 people worldwide. See Complainant’s Exhibit 13. Complainant also claims to be the world’s largest direct seller of computer systems, selling its DELL products and services directly in over 80 countries and achieving revenue of almost $62.1 billion for the 2012 fiscal year. See Complainant’s Exhibits 13-15. Complainant claims rights in the DELL mark through its registration of the mark with trademark authorities around the world, and includes evidence of its registration of the mark with the Pakistani government’s Trade Marks Registry (e.g., Reg. No. 133,178 registered December 4, 1995). See Complainant’s Exhibit 2. In light of Complainant’s Pakistani trademark registrations, the Panel finds that Complainant has successfully established rights in the DELL mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DELL mark. Complainant submits that Respondent’s <delltronics.org> domain name is confusingly similar to Complainant’s DELL trademark for the purposes of Policy ¶ 4(a)(i). Complainant notes that the disputed domain name incorporates the DELL mark in its entirety, merely adding the term “tronics” and the “.org” gTLD. Complainant argues that because it is also engaged in the business of selling electronics, the term “tronics” (derived from or referring to “electronics”) has an obvious relationship to Complainant’s business. As the Panel agrees that the term “tronics” patently relates to Complainant’s business, the Panel finds that Respondent’s addition of the term does not reduce the confusing similarity between the disputed domain name and Complainant’s mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel therefore concludes that Respondent’s <delltronics.org> domain name is confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i) for the above reasons and as gTLDs are incapable of influencing an analysis of confusing similarity. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
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 DELL
trademark and to use it in its domain name, adding only the
word ‘tronics’, thus enhancing the confusing similarity between
the domain name and the trademark;
(b) Respondent has then used the disputed domain name to divert Internet users to Respondent’s competing site, through which Respondent purports to offer products in competition with those of Complainant but which in fact are unauthorized versions of Complainant’s products;
(c) Respondent has engaged in these activities without the consent
or approval of Complainant;
(d) Complainant alleges that Respondent is not known by the domain name, on the basis that Respondent has no connection or affiliation with Complainant or the DELL mark, nor has it been granted consent to use the DELL mark in a domain name. Complainant argues that Respondent is unable to provide proof that it is commonly known by the <delltronics.org> domain name, as a result of the WHOIS information, which Complainant states lists the domain name’s registrant as “Harry Ron.” See Complainant’s Exhibit 25. Previous panels have found that the WHOIS information associated with a domain name lends weight to an argument that the respondent is not commonly known by a domain name. 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). Further, prior findings have established that a complainant’s contention that the respondent had no permission to use the mark contained in the disputed domain name tends to support a finding that the respondent is not commonly known by the domain name at issue. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel agrees with the aforementioned conclusions, and determines that without permission to use the DELL mark, and as a result of the WHOIS information, it is unlikely that Respondent is commonly known by the <delltronics.org> domain name under Policy ¶ 4(c)(ii);
(e) Complainant asserts that Respondent neither offers legitimate products, nor authorized DELL branded goods at the resolving website. Complainant argues that Respondent attempts to bait Internet users and switch them to other goods, and fails to disclose Respondent’s status accurately as being unrelated to DELL. Complainant contends that Respondent provides DELL branded computers and related services at the resolving website, without authorization. The Panel concludes that Respondent does not possess any rights or legitimate interests in the disputed domain name, because Respondent’s use of the resolving website to offer goods under Complainant’s name without authorization does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant);
(f)
Complainant further contends that Respondent attempts to pass itself off as
Complainant by using an outdated version of Complainant’s DELL logo at the resolving
website. As the Panel agrees that posting an old version of Complainant’s logo
at the resolving website amounts to an attempt by Respondent to pass itself off
as Complainant, the Panel concludes that Respondent does not use the <delltronics.org>
domain name in a manner demonstrating a bona fide offering of
goods or services or a legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) or 4(c)(iii). See Am.
Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts
to pass itself off as the complainant online, which is blatant unauthorized use
of the complainant’s mark and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name).
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent uses the <delltronics.org> domain name purportedly to advertise and sell services and products in competition with those offered under Complainant’s marks, thereby disrupting Complainant’s business and showing bad faith registration and use. Complainant contends that the products sold at the resolving website are unauthorized goods and that consequently Respondent is not authorized to sell them by using Complainant’s trademark to make such sales. The panel in Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) transferred the domain name to the complainant when it determined that the respondent was a dealer not authorized to sell the complainant’s goods. The Panel likewise determines that selling computer products under Complainant’s name without Complainant’s authorization leads to a finding of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Secondly,
Complainant also contends that Respondent’s efforts to advertise and sell
products originating from Complainant provide evidence of Respondent’s attempt
to profit by giving the impression of affiliation with Complainant’s business.
Complainant argues that its consumers may be led to believe that the products
at the resolving website are sold by Complainant. The Panel concludes that
Respondent’s bad fad faith registration and use under Policy ¶ 4(b)(iv) is
evidence by its use of Complainant’s mark in the disputed domain name, and the
content at the resolving website, which has the potential to confuse consumers
and improperly attract Internet traffic to the website. See Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant).
Thirdly, Complainant asserts that Respondent was on notice of Complainant’s exclusive rights in the DELL marks as a result of Complainant’s worldwide trademark registrations and prior extensive use of the marks. Complainant claims that Respondent must have been aware of Complainant and its DELL marks when it registered the disputed domain name due to its use of Complainant’s mark and logo at the resolving website. The Panel determines that by using Complainant’s mark and logo at the website, and purporting to sell products made by Complainant, Respondent had actual knowledge of Complainant’s DELL mark when Respondent registered the <delltronics.org> domain name, and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Fourthly, 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 name using the DELL mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name 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 <delltronics.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 2, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page