Dell Inc. v. United Systems c/o S Karthick
Claim Number: FA1311001530688
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is United Systems c/o S Karthick (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptopservicecenterinchennai.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2013; the National Arbitration Forum received payment on November 19, 2013.
On November 20, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <delllaptopservicecenterinchennai.com> domain name is registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. 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 November 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@delllaptopservicecenterinchennai.com. Also on November 20, 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 December 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. Policy ¶ 4(a)(i)
a. Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant sells its products and services in over 180 countries, including India. Complainant has sold its products in India for over ten years, and now accounts for fifteen percent of the Indian PC market.
b. Complainant has used the DELL mark for many years in connection with computers, computer parts and accessories, computer service and support, and other computer-related products and services. Complainant owns trademark registrations for the DELL mark in numerous jurisdictions, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,236,785 registered April 6, 1999).
c. Respondent’s <delllaptopservicecenterinchennai.com> domain name is confusingly similar to Complainant’s DELL mark.
i. The disputed domain name includes Complainant’s DELL mark in its entirety, merely tacking on the generic term “laptop service center” and the geographic identifier “in Chennai.” These terms are highly likely to be associated with Complainant and its presence in India, in particular.
ii. The presence of the generic top-level domain (“gTLD”) “.com” in the disputed domain name is irrelevant.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the <delllaptopservicecenterinchennai.com> domain name.
b. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s DELL mark or any other mark owned by Complainant.
c. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent’s domain name is used for a website offering or promoting products and services that Respondent represents are genuine DELL products and services, but which in fact are not.
ii. The top of each page of Respondent’s website prominently features a DELL logo that incorporates the words “DELL SERVICE CENTER.” The website features additional links entitled “Dell Services,” “Dell Spares,” “Dell Accessories,” and “Dell Warranty.” Moreover, this website as a whole copies the look and feel of Complainant’s official <dell.com> website. For example, Respondent’s site uses colors and fonts similar to those used on Dell’s official website.
iii. A link entitled “For Service” found on each page of Respondent’s website leads to a pop-up online form that solicits contact information of Internet users and prominently displays the DELL logo and the text “Dell Service now at your doorstep.” This same pop-up form also automatically appears when first visiting Respondent’s website or clicking on the “Home” link.
3. Policy ¶ 4(a)(iii)
a. By using the disputed domain name for a website promoting non-genuine DELL services and products that Respondent represents are authorized by Complainant, offering for sale products that compete directly with products offered by Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant asserts that it is a world leader in computers, computer accessories, and other computer-related products and services. Complainant asserts that it sells its products and services in over 180 countries, including India. According to Complainant, it has sold its products in India for over ten years, and now accounts for fifteen percent of the Indian PC market. Complainant maintains that it has used the DELL mark for many years in connection with computers, computer parts and accessories, computer service and support, and other computer-related products and services. Complainant claims to own trademark registrations for the DELL mark in numerous jurisdictions, including registration with the USPTO (e.g., Reg. No. 2,236,785 registered April 6, 1999). The Panel determines that Complainant’s USPTO registration is sufficient to confer rights in the mark under Policy ¶ 4(a)(i), notwithstanding the fact that Respondent appears to reside outside of the United States. 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <delllaptopservicecenterinchennai.com> domain name is confusingly similar to Complainant’s DELL mark. Complainant notes that the disputed domain name includes Complainant’s DELL mark in its entirety, merely tacking on the generic phrase “laptop service center” and the geographic identifier “in Chennai.” Complainant urges that these terms are highly likely to be associated with Complainant and its presence in India in particular. The Panel agrees that these additional terms do not distinguish the disputed domain name from Complainant’s mark. 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 also urges that the presence of the gTLD “.com” in the disputed domain name is irrelevant. The Panel agrees that gTLDs have no significance in a Policy ¶ 4(a)(i) analysis, the Panel finds that Respondent’s <delllaptopservicecenterinchennai.com> domain name is confusingly similar to Complainant’s DELL mark within the meaning of Policy ¶ 4(a)(i). 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.”).
Complainant has proven this element.
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.”).
Complainant alleges that Respondent is not commonly known by the <delllaptopservicecenterinchennai.com> domain name. Complainant claims that it has not licensed or otherwise permitted Respondent to use Complainant’s DELL mark or any other mark owned by Complainant. In light of Respondent’s failure to refute these contentions in any capacity, the Panel finds that Respondent is not commonly known by the <delllaptopservicecenterinchennai.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant next alleges that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent’s domain name is used for a website offering or promoting products and services that Respondent represents are genuine DELL products and services, but which in fact are not. The panel in Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002), found that the respondent’s use of a confusingly similar domain name to sell counterfeit versions of the complainant’s products did not confer rights or legitimate interests in the domain. The Panel finds that Respondent’s use of the <delllaptopservicecenterinchennai.com> domain name to market illegitimate versions of Complainant’s DELL-branded products and services represents neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant also claims that Respondent attempts to pass itself off as Complainant through its use of the disputed domain name. According to Complainant, the top of each page of Respondent’s website prominently features a DELL logo that incorporates the words “DELL SERVICE CENTER.” The website features additional links entitled “Dell Services,” “Dell Spares,” “Dell Accessories,” and “Dell Warranty.” Moreover, Complainant claims that Respondent’s website as a whole copies the look and feel of Complainant’s official <dell.com> website. For example, Respondent’s site uses colors and fonts similar to those used on Complainant’s official website. The Panel agrees that Respondent is attempting to pass itself off as Complainant online through its use of the <delllaptopservicecenterinchennai.com> domain name. The Panel finds that Respondent lacks rights and legitimate interests in the domain under Policy ¶ 4(a)(ii) on that basis. 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).
Complainant further alleges that Respondent uses the disputed domain name in connection with a phishing scheme. Complainant claims that a link entitled “For Service,” found on each page of Respondent’s website, leads to a pop-up online form that solicits contact information of Internet users and prominently displays the DELL logo and the text “Dell Service now at your doorstep.” Complainant says that this same pop-up form also automatically appears when first visiting Respondent’s website or clicking on the “Home” link. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel held that a respondent’s attempt to “phish” for users’ personal information represents neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel agrees that Respondent’s activities at the delllaptopservicecenterinchennai.com> domain name amount to phishing. The Panel finds that Respondent lacks rights and legitimate interests in the domain name on this basis.
Complainant has proven this element.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). Complainant argues that by using the disputed domain name for a website promoting non-genuine DELL services and products that Respondent represents are authorized by Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. As discussed earlier, Complainant maintains that Respondent attempts to pass itself off as Complainant in order to create this likelihood of confusion. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel determined that the respondent’s selling of counterfeit products created a likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allowed the respondent to profit from that confusion in bad faith. Further, the panel in Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) found bad faith under Policy ¶ 4(b)(iv) where the domain name at issue was used to resolve to a website at which the complainant’s trademarks and logos were prominently displayed. Therefore, the Panel finds that Respondent registered and uses the <delllaptopservicecenterinchennai.com> domain name in bad faith according to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent uses the disputed domain name in connection with a phishing scheme. Complainant claims that a link entitled “For Service,” found on each page of Respondent’s website, leads to a pop-up online form that solicits contact information of Internet users and prominently displays the DELL logo and the text “Dell Service now at your doorstep.” Complainant says that this same pop-up form also automatically appears when first visiting Respondent’s website or clicking on the “Home” link. The Panel agrees that Respondent’s activities at the <delllaptopservicecenterinchennai.com> domain name constitute phishing. The Panel finds bad faith registration and use on this basis as well. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <delllaptopservicecenterinchennai.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 20, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page