Dell Inc. v. Mr.Raja c/o Synergy Systems & Pheripharals / Raja T S c/o synergy
Claim Number: FA1405001558073
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is Mr.Raja c/o Synergy Systems & Pheripharals / Raja T S c/o synergy (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <delllaptopschennai.com> and <delllaptopserviceinchennai.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The domain names at issue are <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com>, registered with Good Domain Registry Pvt Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2014; the National Arbitration Forum received payment on May 7, 2014.
On May 8, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <delllaptopschennai.com> and <delllaptopserviceinchennai.com> domain names are 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 May 9, 2014, Good Domain Registry Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.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 May 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2014 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@delllaptopschennai.com, postmaster@delllaptopserviceinchennai.com, postmaster@delllaptopservicehyderabad.com, postmaster@dellshowroomhyderabad.com, postmaster@dellshowroominchennai.com, and postmaster@dellshowroominhyderabad.com. Also on May 9, 2014, 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 June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Dell and its Business
Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer parts, and other computer-related products and services. Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Dell has used television, radio, magazines, newspapers, and the Internet as marketing media. Dell has been, and continues to be, extremely successful. Dell sells its products and services in over 180 countries, including India. For several years, Dell has been the world’s largest direct seller of computer systems. As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States, India, and many other countries. More information about Dell can be found at www.dell.com. Moreover, Dell was recently named by Adweek as #15 of the “Most Loved Companies” in the world. (http://www.adweek.com/news/advertising-branding/check-out-top-100-beloved-brands-last-decade-153026).
Complainant has used the famous mark DELL, as well as various other marks that include the word DELL (the “DELL Marks”), for many years for computers, computer parts, and other computer-related products and services, such as tablets and projectors, among other things. Dell owns many trademark registrations for the DELL Marks in numerous countries, including the United States (a number of which are incontestable) and India. See, e.g., U.S. Reg. Nos. 1,860,272, 2,236,785, 2,794,705, 2,808,852, 3,215,023, and India Reg. Nos. 367147, 404736, 436590, 489847.
Dell’s Presence in India
With 15 percent of the market, Dell is the number one PC maker in India. See, e.g., Anurag Prasad, India's top 5 PC makers by market share, Rediff Business (2011), http://www.rediff.com/business/slide-show/slide-show-1-tech-largest-pc-makers-in-india/20111111.htm. Moreover, India is Dell’s fastest growing market. While Dell has been in India for over ten years, its operations have evolved more recently resulting in efficiencies that have significantly contributed to the company’s success. See How Dell Conquered India, Fortune (2011), http://tech.fortune.cnn.com/2011/02/10/how-dell-conquered-india/.
. FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. The disputed domain names are identical or confusingly similar to Complainant’s DELL Marks.
The disputed domain names each incorporate the famous mark DELL in its entirety, merely tacking on generic words (“laptops,” “laptop service,” and “showroom”) and a geographic identifier (“Chennai” and “Hyderabad”[1]). These terms are highly likely to be associated with Complainant and its presence in India, in particular.
b. Respondent has no rights or legitimate interests in the domain names.
i. Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Respondent participates in Complainant’s authorized reseller program (the “Program”). However, as a participant in the Program, Respondent is bound by all the Program terms and conditions, which specifically state that “[n]o domain name or url’s containing the word “Dell” shall be registered by” Program participants “without the prior written consent of Dell.” See Dell Channel Partner Terms and Conditions—India, paras. 5.1.7 and 5.2.3. Respondent is not, and never has been, authorized by Complainant to use its DELL Marks in domain names. Thus, as each of the disputed domain names contain the mark DELL exactly, Respondent has no rights or legitimate interests in the disputed domain names. Moreover, the fact that Respondent is an authorized reseller does not establish rights or legitimate interests in registering domain names that include Complainant’s DELL Marks.[2]
In addition, several of the disputed domain names are used for websites prominently displaying the Dell Marks, which is also expressly prohibited by the Program terms and conditions. See para. 11, Dell PartnerDirect Program Portal Terms and Conditions (India version). For example, the website at delllaptopservicehyderabad.com prominently features a DELL logo that incorporates the words “Laptop Service Center” at the top of each page of the site. Further, this website also copies the look and feel of Dell’s official www.dell.com website, and features slogans and images used by Dell on its official website. For instance, the site uses colors and fonts similar to those used by Dell on its official website, and (among other similarities with the www.dell.com website) the home page at features an image displaying (in part) three Dell laptops. The website at this domain name also promotes Respondent’s “Dell Autorized [sic] Service Center.” The “Contact Us” page of the website also provides locations for various “Dell” branches, such as “Dell Chennai Branches.” The website at dellshowroomhyderabad.com also prominently features a DELL logo next to the words “Show Room Hyderabad” at the top of each page of the site. In addition, the website at dellshowroominchennai.com displays a pay-per-click advertisements featuring Dell logos and promoting Dell products that leads to the website at dellshowroominchennai.co.in, a domain name also owned by Respondent and used for a website selling Dell-branded products. Each of the websites at the disputed domain names is used to sell Dell products and/or related services, such as computers, computer parts, tablets, and projectors, and displays images of Dell products.
i. Respondent has not been commonly known by the disputed domain names.
iii. As discussed above, Respondent is not making a legitimate noncommercial or fair use of the domain names.
c. Respondent registered and is using the domain names in bad faith.
i. Under the Program terms and conditions, Respondent is not authorized to register any domain names containing the word “Dell,” as explained above in paragraph 5(b)(i). Moreover, websites at several of the disputed domain names display DELL Marks without Dell’s permission, also in violation of the Program’s terms.
ii. As an authorized reseller, Respondent has actual knowledge of Complainant’s rights in the DELL Marks, and is on notice of Respondent’s own lack of rights in those marks, including the express prohibitions on Program participants using the DELL Marks explained above in paragraph 5(b)(i). Respondent’s registration of the disputed domain names in the face of this actual notice is evidence of bad faith registration and use.[3]
iii. By using the disputed domain names for websites displaying the DELL Marks and images of Dell’s products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites.
iv. Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the DELL Marks in a site accessible under the domain names; and Respondent’s domain names incorporates exactly the famous mark DELL. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 is a world leader in computers, computer parts, and other computer-related products and services. Complainant owns trademark registrations for the DELL mark, which it has registered with India’s Controller General of Patents Designs and Trademarks (e.g., Reg. No. 367,147, registered July 4, 2003), inter alia. Complainant’s registration of the DELL mark with India’s Controller General of Patents Designs and Trademarks adequately shows Complainant has rights in the mark pursuant to Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations).
Complainant claims Respondent’s <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names are confusingly similar to Complainant’s DELL mark. Each of the disputed domain names incorporates the DELL mark in its entirety, merely adding a descriptive, generic word (“laptops,” “laptop service,” and “showroom”) and a geographic identifier (“Chennai” and “Hyderabad”). Adding a generic or geographic term does not adequately differentiate the disputed domain names from the mark pursuant to Policy ¶4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Respondent also adds the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names, which does not adequately distinguish the domain names from the mark under Policy ¶4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Respondent’s <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names are confusingly similar to Complainant’s DELL mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has not been commonly known by the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names. Complainant has never authorized Respondent to use the DELL mark in a domain name (in fact, Complainant has specifically prohibited Respondent from doing so). The WHOIS record indicates “Mr.Raja c/o Synergy Systems & Pheripharals / Raja T S c/o synergy” registered and is using the disputed domain names. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel held a respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that respondent was commonly known by the domain names in dispute. The facts are similar to this case and this Panel concludes Respondent is not commonly known by the disputed domain names according to Policy ¶4(c)(ii).
Respondent is using the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names as part of Complainant’s authorized reseller program. As a participant in the “program,” Respondent is bound by all of the program terms and conditions, which specifically state no domain name containing the word DELL can be registered without the prior written consent of Complainant. Respondent does not contest this and has not claimed to have Complainant’s permission. Respondent’s disputed domain names prominently display the DELL mark, which is prohibited by the program’s terms and conditions. It appears Respondent is using the disputed domain names to sell Complainant’s goods in violation of Complainant authorized reseller program. This means Respondent is not using the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com> and <dellshowroominhyderabad.com> domain names in connection with a Policy ¶4(c)(i) bona fide offering of goods or services or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Respondent is a participant in Complainant’s authorized reseller program and is bound by all of the program terms and conditions. The terms and conditions specifically state no domain name containing the word DELL can be registered without the prior written consent of Complainant, which Respondent apparently has not obtained. Respondent’s <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names prominently display the DELL mark, which is clearly prohibited by the program’s terms and conditions. Even though Respondent is using the disputed domain names to sell Complainant’s goods, Respondent’s use of the disputed domain names may divert Internet users away from Complainant to Respondent’s commercial benefit (all in violation of the reseller agreement). In light of all of these facts, Respondent is using the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names in bad faith under Policy ¶4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also IndyMac Bank, F.S.B. v. Kato, FA 190366 (Nat. Arb. Forum Oct. 6, 2003) (“Registration of a domain name in violation of a license agreement between the Complainant and Respondent that states that no use of the trademark is permissible without authorization . . . is evidence of bad faith registration.”).
Respondent had actual knowledge of Complainant’s rights in the DELL mark at the time it registered the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names because Respondent was an authorized reseller of Complainant’s products. It seems clear Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”)
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <delllaptopschennai.com>, <delllaptopserviceinchennai.com>, <delllaptopservicehyderabad.com>, <dellshowroomhyderabad.com>, <dellshowroominchennai.com>, and <dellshowroominhyderabad.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 9, 2014
[1] Chennai is a capital city in India with nearly five million people. Hyderabad is the capital and largest city of the southern Indian state of Andhra Pradesh and has a population of approximately 7.8 million. See, e.g., 2011 census data at http://www.census.tn.nic.in/whatsnew/ppt_total2011.pdf and http://www.censusindia.gov.in/2011-prov-results/paper2/data_files/India2/Table_3_PR_UA_Citiees_1Lakh_and_Above.pdf.
[3] See Associated Materials, Inc. v. Perma Well Inc., FA154121 (NAF 2003) (finding that Respondent’s actual knowledge of Complainant’s rights in the ULTRAGUARD mark, inferred from the fact that Respondent was a distributor of Complainant, along with Respondent being on notice of its own lack of rights, evidenced that the domain name was registered and used in bad faith); Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
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