Dell Inc. v. Ankit Puri
Claim Number: FA1309001520922
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Ankit Puri (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellitsupport.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 23, 2013; the National Arbitration Forum received payment September 23, 2013.
On September 23, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dellitsupport.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@dellitsupport.com. Also on September 24, 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 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Complainant owns the DELL mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No, 1,860,272 registered Oct. 25, 1994).
ii. Complainant is a world leader in computers, computer accessories, and other computer-related products and services and uses the DELL mark in connection with computer-related products and services. Complainant has taken substantial effort to promote the DELL mark, such that it is currently famous throughout the world. Complainant sells its products and services in more than 180 countries.
iii. Complainant’s primary website is located at <dell.com>, where it offers products and services, including IT support services.
i. Policy ¶ 4(a)(i)
1. The <dellitsupport.com> domain name is confusingly similar to the DELL mark. The domain name incorporates the DELL mark in it entirety, adding the phrase “itsupport,” a term that is highly likely to be associated with Complainant and its goods and services. The presence of the generic top-level domain (“gTLD”) “.com” is irrelevant.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights to or legitimate interests in the domain name. Respondent is not commonly known by the <dellitsupport.com> domain name. Further, Complainant has not licensed or otherwise permitted Respondent to use the DELL mark.
2. Respondent has not used the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name is used for a website offering “technical support for your home and business.” Respondent claims to offer DELL support, as well as support for a number of Complainant’s competitors, such as Acer, Toshiba, HP, Lenovo, Asus, and Samsung. See Ex. C.
3. Further, Respondent has listed the disputed domain name for sale for $1,000. See Ex. D.
iii. Policy ¶ 4(a)(iii)
1. Respondent has listed the disputed domain name for sale for $1,000. Such offer is evidence of bad faith because the offer is in excess of Respondent’s out-of-pocket costs directly related to the domain name.
2. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name to offer technical support services for brands competing with Complainant.
3. Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating confusion as to Complainant’s association with the website at issue.
4. Respondent must have been aware of Complainant’s rights in the DELL mark when Respondent registered the domain name at issue.
Complainant established that it has rights to and legitimate interests in the disputed domain name.
Respondent has no such rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar
Complainant claims to own the DELL mark through its trademark registrations with the USPTO (e.g., Reg. No, 1,860,272 registered Oct. 25, 1994). Complainant claims to be a world leader in computers, computer accessories, and other computer-related products and services, and claims to use the DELL mark in connection with computer-related products and services. Complainant’s primary website is located at <dell.com>, where it offers products and services, including IT support services. Complainant argues that its USPTO registrations are sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). Previous panels have determined that USPTO registrations are sufficient to establish rights in a mark, and that the Policy does not require that the mark be registered in the country in which the respondent resides. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Although Respondent resides in India, the Panel finds that Complainant’s USPTO registrations are sufficient to establish Complainant’s rights in the DELL mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that the <dellitsupport.com> domain name is confusingly similar to the DELL mark. Specifically, Complainant contends that the domain name incorporates the DELL mark in it entirety, adding the phrase “itsupport,” a term that is highly likely to be associated with Complainant and its goods and services. Complainant also argues that the presence of the gTLD “.com” is irrelevant to the analysis. The Panel recalls that Complainant uses the DELL mark to offer computer-related products and services, including IT (information technology) support services. Previous panels have found that the use of a term that is directly related to a complainant’s business in a domain name incorporating the mark at issue does not negate the confusing similarity. In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel found that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business. Further, panels have consistently held that the addition of a gTLD is irrelevant in the Policy ¶ 4(a)(i) analysis because it is a required element of all domain names. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Because the appended phrase “itsupport” is directly related to Complainant’s business, and the affixation of a gTLD is irrelevant in the confusingly similar analysis, the Panel finds that the <dellitsupport.com> domain name is confusingly similar to the DELL mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such rights to 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.”).
Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name. Specifically, Complainant asserts that Respondent is not commonly known by the <dellitsupport.com> domain name. The Panel notes that the WHOIS record identifies “Ankit Puri” as the registrant of the domain name at issue. Further, Complainant contends that it has not licensed or otherwise permitted Respondent to use the DELL mark. The Panel recalls that Respondent did not submit a response, and therefore has failed to refute Complainant’s above contentions. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names because the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel finds that the instant case is comparable. Given the evidence from the WHOIS record, as well as the evidence provided by Complainant, the Panel finds that Respondent is not commonly known by the <dellitsupport.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not used the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant asserts that the disputed domain name is used for a website offering “technical support for your home and business.” See Ex. C, where Complainant includes screen shots of the resolving page. Complainant notes that Respondent claims to offer DELL support on the resolving page, as well as support for a number of Complainant’s competitors, such as Acer, Toshiba, HP, Lenovo, Asus, and Samsung. Previous panels have refused to find evidence of a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the respondent uses the domain name to offer services or goods that compete with the complainant. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds that Respondent has not used the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.
Further, Complainant asserts that Respondent has listed the disputed domain name for sale for $1,000. Complainant submits a copy of the WHOIS record stating “The owner of the domain you are searching has it listed for sale $1,000” and “Buy DellitSupport.com now.” See Ex. D. Complainant contends that the offer represents an amount in excess of Respondent’s out-of-pocket costs directly related to the domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name. As such, the Panel accepts Respondent’s offer to sell the domain name for $1000 as further evidence that the domain name is not being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent has listed the disputed domain name for sale for $1,000. The Panel recalls that Complainant submitted a copy of the WHOIS record, which states: “The owner of the domain you are searching has it listed for sale $1,000” and “Buy DellitSupport.com now.” See Ex. D. Complainant argues that such an offer is evidence of bad faith because the offer is in excess of Respondent’s out-of-pocket costs directly related to the domain name. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the panel held that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. This Panel agrees that the $1000 offer is in excess of Respondent’s out-of-pocket costs related to the domain name, and finds that such evidence supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent’s bad faith is further demonstrated by Respondent’s use of the domain name to offer technical support services for brands competing with Complainant. To support its argument, Complainant includes Exhibit C, which includes screen shots of the resolving pages. Complainant recites that the disputed domain name is used for a website offering “technical support for your home and business.” See Ex. C. Complainant also notes that Respondent claims to offer DELL support on the resolving page, as well as support for a number of Complainant’s competitors, such as Acer, Toshiba, HP, Lenovo, Asus, and Samsung. See Ex. C. Given the evidence provided by Complainant, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii), because Respondent is using Complainant’s mark to divert users seeking Complainant’s IT services to Respondent’s competing business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent intentionally attempted to attract, for commercial gain, Internet users by creating confusion as to Complainant’s association with the website at issue. In Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), the panel found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services. In the present case, Complainant notes that on the resolving page Respondent purports to offer DELL support services, as well as support services for a number of Complainant’s competitors, such as Acer, Toshiba, HP, Lenovo, Asus, and Samsung. See Ex. C. The Panel agrees that the domain name is designed to confuse users as to Complainant’s affiliation with the website and that Respondent attempts to commercially benefit from the resulting confusion; and, therefore, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent must have been aware of Complainant’s rights in the DELL mark when Respondent registered the domain name at issue. In Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel found that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name." In the present case, Complainant provides evidence that the domain name is being used in connection with a website that offers technical support for Complainant’s computer products, as well as support for a number of Complainant’s competitors, such as Acer, Toshiba, HP, Lenovo, Asus, and Samsung. See Ex. C. Therefore, using such evidence, the Panel makes an inference that Complainant had actual knowledge of Complainant’s rights in the DELL mark, and therefore finds evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellitsupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 30, 2013.
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