Dell Inc. v. Mahesh Lalwani
Claim Number: FA1410001587876
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Mahesh Lalwani (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellstorejaipur.com> and <dellstoreinjaipur.com>, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2014; the National Arbitration Forum received payment on October 31, 2014.
On November 3, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 November 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@dellstorejaipur.com, postmaster@dellstoreinjaipur.com. Also on November 3, 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.
On November 9, 2014, the FORUM was copied on an e-mail correspondence from Respondent to Complainant which was not a proper Response to the Complaint.
Having received no proper response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 3, 2014, 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 names be transferred from Respondent to Complainant.
Complainant
Complainant owns the DELL mark through trademark registrations with numerous countries, including registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,860,272 registered Oct. 25, 1994) and India’s Trade Marks Registry (e.g., Reg. No. 367,147 registered April 7, 2003). Complainant uses the DELL mark for computers, computer parts, and other computer-related products. The <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names are confusingly similar to the DELL mark as the names incorporate the DELL mark in full and merely add the geographic identifier “Jaipur.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not an authorized reseller of Complainant’s products, and Complainant has not licensed or otherwise permitted Respondent to use the DELL mark. Respondent is not commonly known by the disputed domain names. Further, Respondent has not used the domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain names resolve to a website copying the look and feel of Complainant’s own websites, and feature slogans and images used by Complainant. The resolving websites are used to sell Complainant’s products and related services. The websites also feature opportunities for consumers to win products of Complainant’s competitors including “Apple,” “Lenovo,” “Acer,” “HP,” and “Sony.” Respondent’s attempt to pass itself off as Complainant demonstrates Respondent’s lack of rights.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name to promote opportunities for customers to win products of Complainant’s competitors evinces Policy ¶ 4(b)(iii) bad faith. Further, Respondent’s efforts to pass itself off as an affiliate of Complainant creates a likelihood of Internet user confusion from which Respondent commercially benefits through the sale and promotion of Complainant’s products and products of Complainant’s competitors. Respondent’s registration and use of the <dellstorejaipur.com> and <dellstoreinjaipur.com> in connection with Complainant’s mark, slogan, and products, indicate that Respondent had actual knowledge of Complainant’s rights at the time of domain name registration.
Respondent
Respondent failed to submit a formal response in this proceeding. However, the FORUM was copied on an e-mail correspondence from Respondent to Complainant in which Respondent claims to be an authorized retailer of Complainant’s products. Respondent claims that the domain names were registered to promote the sale of Complainant’s products in Jaipur, India. Respondent writes, “If you [Complainant] feel that it could be a threat to the Dell Brand name I am open to cancelling or transferring the said domain.”
Preliminary Issue: Consent to Transfer
As noted above, the National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In these documents, Complainant states, “If you [Complainant] feel that it could be a threat to the Dell Brand name I am open to cancelling or transferring the said domain.” The Panel will however analyze the case pursuant to the UDRP.
For the 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 proper 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 uses the DELL mark for computers, computer parts, and other computer-related products. Complainant claims to owns the DELL mark through trademark registrations with numerous authorities, including registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,860,272 registered Oct. 25, 1994) and India’s Trade Marks Registry (e.g., Reg. No. 367,147 registered April 7, 2003). The Panel finds that Complainant’s trademark holdings with various trademark agencies sufficiently demonstrate Complainant’s rights in the DELL mark pursuant to Policy ¶ 4(a)(i). Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office”).
Complainant argues that the <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names are confusingly similar to the DELL mark as the names incorporate the DELL mark in full and merely add the geographic identifier “Jaipur,” the generic term “store,” and one name also sees the inclusion of the preposition “in.” The disputed domain names each include the generic top-level domain (“gTLD”) “.com.” In Clark Equip. Co. v. Equip. Distribs., Inc., FA 1315702 (Nat. Arb. Forum Apr. 28, 2010), the panel found the <bobcatofmaryland.com> domain name to be confusingly similar to the BOBCAT mark despite the addition of the preposition “of” and the geographic term “maryland.” See also Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). The Panel agrees that the <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names are confusingly similar to the DELL mark pursuant to Policy ¶ 4(a)(i) despite the additions of generic and geographic terms, a preposition, and gTLD.
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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that Respondent is not an authorized reseller of Complainant’s products, and Complainant has not licensed or otherwise permitted Respondent to use the DELL mark. Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS records list “Mahesh Lalwani” as the registrant of both domain names. The Panel determines that there is no basis to find Respondent commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent has not used the domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial of fair use. Complainant alleges that the disputed domain names resolve to a website copying the look and feel of Complainant own websites, and feature slogans and images used at Complainant’s website. Complainant notes that the resolving websites are used to sell Complainant’s products and related services, and also feature opportunities for consumers to win products of Complainant’s competitors including “Apple,” “Lenovo,” “Acer,” “HP,” and “Sony.” The Panel agrees that Respondent’s attempts to pass itself off as Complainant, or as an affiliate of Complainant in order to promote and sell Complainant’s products and products in competition with Complainant amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. 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); Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant argues that Respondent’s use of the disputed domain name to promote opportunities for customers to win products of Complainant’s competitors is evidence of Policy ¶ 4(b)(iii) bad faith. The sweepstakes involves several of Complainant’s competitors, including “Apple,” “Lenovo,” “Acer,” “HP,” and “Sony.” The Panel agrees that Respondent’s use of the <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names to promote products from Complainant’s competitors disrupts Complainant’s own business, and therefore finds evidence of Policy ¶ 4(b)(iii) bad faith. 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’s efforts to pass itself off as an affiliate of Complainant creates a likelihood of Internet user confusion from which Respondent commercially benefits through the sale and promotion of Complainant’s products and products of Complainant’s competitors. Complainant states the resolving pages rely on colors and fonts synonymous with Complainant’s own website, that Respondent purports to be an authorized “Dell Company Dealer Distributor,” and uses Complainant’s slogan and logo. The Panel agrees that Respondent’s use of the disputed domain names, as shown in Complainant’s exhibits, demonstrates a scheme to profit from the likelihood of Internet user confusion, and finds this is evidence of Policy ¶ 4(b)(iv) bad faith. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant argues that Respondent’s registration and use of the <dellstorejaipur.com> and <dellstoreinjaipur.com> in connection with Complainant’s mark, slogan, and products, indicate that Respondent had actual knowledge of Complainant’s rights at the time of domain name registration. Based on Respondent’s use of the <dellstorejaipur.com> and <dellstoreinjaipur.com> in connection with DELL-branded goods and logos, the Panel agrees Respondent registered the disputed domain names despite actual knowledge of Complainant’s rights in the DELL mark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). As such, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
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 <dellstorejaipur.com> and <dellstoreinjaipur.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 8, 2014
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