Dell Inc. v. Catherine Barger
Claim Number: FA1502001605282
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Catherine Barger (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-secure.com>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2015; the Forum received payment on February 17, 2015.
On February 18, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <dell-secure.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 February 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2015 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-secure.com. Also on February 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <dell-secure.com> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dell-secure.com> domain name.
3. Respondent registered and uses the <dell-secure.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the DELL mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,860,272, registered Oct. 25, 1994). Complainant uses the DELL mark in connection with its computers products and services.
Respondent registered the <dell-secure.com> domain name on August 23, 2014, and uses it to resolve to a website that offers services in competition with Complainant, and also to deliver malware to Internet users.
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.”).
The Panel finds that Complainant owns the DELL mark through registration with the USPTO (Reg. No. 1,860,272, registered Oct. 25, 1994). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <dell-secure.com> domain name incorporates Complainant’s DELL mark in full and simply adds a hyphen, the generic word “secure,” and the generic top-level (“gTLD”) “.com.” Prior panels have found the addition of a punctuation mark does not distinguish a disputed domain name from a registered mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Inserting a generic word, such as “secure,” also does not sufficiently differentiate the domain name from a mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Past panels have routinely held that the addition of a gTLD does nothing to negate confusing similarity. 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”). Therefore, the Panel finds that the <dell-secure.com> domain name is confusingly similar to the Complainant’s registered DELL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant argues Respondent is not commonly known by the <dell-secure.com> domain name or by the DELL mark, as evidenced by the WHOIS information associated with the disputed domain name. The WHOIS information lists “Catherine Barger” as the registrant of record. Complainant states that Respondent is not licensed or permitted by Complainant to use Complainant’s mark. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name as required under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where 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).
Complainant also argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant provides evidence that Respondent’s disputed domain name resolves to a website that offers competing services, including support and troubleshooting. Prior panels have agreed that this type of competitive use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent’s use of the registered domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii).
Additionally, Complainant claims that the disputed domain name incorporates a fraudulent scheme, which redirects visitors to a third-party website that deceives consumers into thinking that Respondent is Complainant and instructs the consumer to download malicious software, and then offers a “solution” to the consumer for a price. Previous panels have found that such malicious behavior indicates a lack of rights and legitimate interests. See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are not the only indications of bad faith, and that Respondent’s bad faith may be demonstrated by the totality of the circumstances. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Respondent’s <dell-secure.com> domain diverts Internet users to a third-party website which attempts to pass itself off as Complainant, attempts to distribute malware to consumers, and then attempts to obtain the consumer’s financial information to pay for a “solution.” Prior panels have found similar use found of a disputed domain name to be bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to frequently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <dell-secure.com> domain name with knowledge of Complainant and its rights in the DELL mark. The Panel notes that the disputed domain name diverts Internet users to a website that mimics Complainant’s logo, mentions Complainant’s support services, and displays picture of Complainant’s actual products. The Panel thus finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which constitutes evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also 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).
Respondent also uses the disputed domain name to infect customers’ computers with malware. The Panel finds that the use of malware is evidence of bad faith use under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”).
Finally, Complainant argues that Respondent’s misleading WHOIS information is further evidence of bad faith registration under Policy ¶ 4(a)(iii). Complainant demonstrates that Respondent likely took the name “Catherine Barger” from a New Jersey obituary. The Panel finds that this is further evidence of bad faith under Policy ¶ 4(a)(iii). See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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-secure.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 23, 2015
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