Dell Inc. v. Mohit Singh / FIXFORWORLD
Claim Number: FA1411001588052
Complainant is Dell Inc. (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is Mohit Singh / FIXFORWORLD (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-techsupport.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014.
On November 3, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dell-techsupport.com> 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 November 4, 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@dell-techsupport.com. Also on November 4, 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 December 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns the DELL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered October 25, 1994). Complainant’s rights in the DELL mark are further demonstrated through its trademark registrations with India’s Trademarks Registry (“ITR”) (e.g., Reg. No. 1,190,375, registered May 9, 2005).
Complainant uses the DELL mark in connection with its business in computers, computer parts, and other computer-related products and services.
Respondent’s infringing activities:
The <dell-techsupport.com> domain name is confusingly similar to Complainant’s DELL mark because Respondent has simply added the generic terms “tech” and “support” to the mark, as well as adding a hyphen.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <dell-techsupport.com> domain name. Respondent is neither licensed nor authorized to use the DELL mark. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to pass itself off as Complainant.
Respondent refers to itself as Dell Tech Support. The website displays the DELL marks, including the DELL logo with “Tech Support”. The website uses the same colors and fonts to those used by Complainant on its official website.
Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain. Respondent has registered the following domain names incorporating others’ trademarks: acertechssupport.com, apple-mac-techsupport.com, belkintechssupport247.com, d-linktechsupport.com, gatewaytechsupport.co, hp-compaq-techsupport.com, java-techhelp.com, lenovo-techsupport.com, netgeartech.support, pogotechssupport.com, toshibatechssupport.com, and windows-techsupport.net. These names are used for pay per click sites or pages that prominently display others’ marks.
Respondent must have had actual or constructive knowledge of Complainant’s rights in the DELL marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DELL mark through its registration of such mark with ITR, as well as through registration with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to attempt to pass itself off as Complainant.
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’s ownership of Indian trademark registrations with ITR for its DELL trademark sufficiently demonstrates Complainant’s rights in such mark for the purposes of Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
In forming the at-issue domain name Respondent adds a hyphen and the generic terms “tech” and “support” to Complainant’s DELL mark and then appends the top-level domain name “.com” to the resulting string. Such modifications to Complainant’s trademark fail to differentiate Respondent’s domain name from the mark for the purposes of Policy ¶4(a)(i). Therefore, the panel finds that Respondent’s <dell-techsupport.com> domain name is confusingly similar to Complainant’s DELL trademark. See 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))); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Mohit Singh” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <dell-techsupport.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent refers to itself as “Dell Tech Support” and the website addressed by the at-issue domain name displays DELL trademarks, including the DELL logo with the words “Tech Support”. Additionally, the <dell-techsupport.com> website features the same color scheme and font style as Complainant’s official website. These facts make clear that Respondent uses the domain name to pass itself off as Complainant. Using a domain name to pass itself off as the mark holder of the domain name’s embedded trademark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 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); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The
domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as
well as other circumstance are present which compel the Panel to conclude that
Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent capitalizes on the confusion it created between Complainant’s mark and the <dell-techsupport.com> domain name by profiting from the Internet traffic that mistakenly believes that <dell-techsupport.com> website is sponsored by, or otherwise connected with, Complainant. Using the domain name in this manner demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Respondent has also registered numerous other trademarks in domain names for use as pay-per-click sites and otherwise thereby indicating a pattern of cybersquatting suggesting Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii).
Furthermore, Respondent registered the <dell-techsupport.com> domain name knowing that Complainant had trademark rights in the DELL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from the striking similarities between Complainant’s official website and Respondent’s sham website which flaunts the use of Complainant’s logos and color schemes. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <dell-techsupport.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-techsupport.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 8, 2014
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