Dell Inc. v. Syed Arshad Ahmed
Claim Number: FA1610001697952
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Syed Arshad Ahmed (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellservicecentreinchennai.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 Forum electronically on October 13, 2016; the Forum received payment on October 13, 2016.
On October 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellservicecentreinchennai.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 October 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2016 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@dellservicecentreinchennai.com. Also on October 13, 2016, 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 November 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the DELL mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
Respondent’s domain name combines the DELL mark with the generic terms “service” and “centre” and the geographic descriptor “Chennai” (the capital and largest city of the southern Indian state of Tamil Nadu, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <dellservicecentreinchennai.com>. Respondent is not commonly known by <dellservicecentreinchennai.com>. Further, Respondent seeks to falsely create an association with Complainant by incorporating the look and feel of Complainant’s websites (blue and white color scheme, rotating display of DELL products and promoting computer replacement parts and repair services), and attempts to gather Internet users’ personal information through a “Contact Form.” This use does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <dellservicecentreinchennai.com> in bad faith. Respondent’s attempt to falsely create an association to create confusion amongst Internet users in a “passing off” attempt presumably for commercial gain as per Policy ¶ 4(b)(iv). Respondent’s actions represent its actual/constructive knowledge when registering and using <dellservicecentreinchennai.com> per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in an email correspondence, Respondent apologized and offered to transfer the at-issue domain name to Complainant.
Complainant has trademark rights in the DELL mark.
Respondent registered the at-issue domain name after Complainant acquired rights in its DELL trademark.
Respondent unequivocally consents to having the at-issue domain name transferred to 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(f), 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 (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.”).
Preliminary Issue: Consent to Transfer
As mentioned above, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is a clear indication that Respondent consents to transferring the at-issue domain name to Complainant, therefore the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Nat. Arb. Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nonetheless demonstrate that it has rights in a trademark that is confusingly similar or identical to the relevant at-issue domain name. Here, Complainant establishes its right in the DELL mark through its registration of such mark with USPTO trademark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore the at-issue <dellservicecentreinchennai.com> domain name incorporates Complainant’s trademark in its entirety, adding the generic terms “service centre in Chennai” and the top level domain name, “.com”. The term “service centre” suggests Complainant’s business in repairing DELL trademarked equipment and “Chennai” is the capital and largest city of the southern Indian state of Tamil Nadu. The resulting differences between the at-issue domain name and Complainant’s trademark are thus insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <dellservicecentreinchennai.com> domain name is confusingly similar to Complainant’s DELL trademark pursuant to Policy ¶ 4(a)(i). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
In light of the foregoing, Respondent’s express consent-to-transfer the at-issue domain name to Complainant compels the Panel to order that the <dellservicecentreinchennai.com> domain name be transferred as requested. Furthermore, the Panel has no reason to provide any analysis under Policy ¶¶ 4(a)(ii) and/or 4(a)(iii) in support of its decision.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellservicecentreinchennai.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 8, 2016
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