Dell Inc. v. Gregory New
Claim Number: FA1701001711413
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Gregory New (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wysemd.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 9, 2017; the Forum received payment on January 9, 2017.
On January 10, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wysemd.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 January 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2017 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@wysemd.com. Also on January 11, 2017, 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 February 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 is a world leader in computers and computer related products and services. Complainant acquired Wyse Technology Inc., a global leader in cloud computing in 2012. Dell sells its products in over 180 countries. It has web sites at, inter alia, wyse.com.
Complainant owns trade mark registrations for or including WYSE in, inter alia, the USA where Respondent is based, for computer related products and services, with first use in commerce recorded as 1981.
The Domain Name is confusingly similar to Complainant’s WYSE marks, incorporating the DELL mark in its entirety, adding the letters ‘md’ and the gTLD .com. Many customers may associate ‘md’ with Complainant’s technical support services offered under its WYSE mark. The presence of the gTLD .com is irrelevant in a UDRP analysis.
Respondent has no rights or legitimate interest in the Domain Name. Respondent has not made any bona fide offering of goods or services, rather the Domain Name is used for a web site promoting Respondent’s software product marketed for the purpose of assisting people to obtain marijuana which is unaffiliated with Complainant.
Respondent is not commonly known by the Domain Name. Nor does it own any intellectual property rights in the Domain Name.
Complainant has not licensed Respondent to use its WYSE mark.
Respondent is not making a legitimate non commercial or fair use of the Domain Name.
Respondent registered and is using the Domain Name in bad faith. By using the Domain Name to sell unaffiliated software Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s marks as to the source or affiliation of Respondent’s web site. Further panels have held that the use of a Domain Name to promote an illegal activity including the promotion or sale of marijuana constitutes bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trade mark registrations for or including WYSE in, inter alia, the USA where Respondent is based for computer related products and services including software with first use in commerce recorded as 1981.
The Domain Name has been used to offer software unconnected to Complainant which assists the public to obtain marijuana.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's WYSE mark (which is registered in the USA for computing products and services and has been used since 1981), the letters ‘md’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a single letter to a Complainant's mark. See Am. Online Inc. v Tencent Commc’ns Corp, FA 93668 (FORUM Mar 21, 2000)(finding that the addition of a single letter ‘o’ did not avoid confusing similarity with Complainant’s mark) The Panel agrees that the addition of the letter ‘md’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy, particularly as Complainant hints and the Panel accepts that members of the public may see it as a symbol meaning “doctor” or “help” and interpret that as an online clinic for troubleshooting run by Complainant in relation to its products.
The gTLD .com does not serve to distinguish the Domain Name from the WYSE mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (FORUM July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (FORUM September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name comprises a sign confusingly similar to Complainant's trade marks and Respondent is using the site in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant., The Panel finds this use is confusing. As such, it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (FORUM May 11, 2007) finding that Respondent's use of a confusingly similar domain name to advertise real estate services which competed with Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers competing products/services under a Domain Name containing Complainant’s WYSE mark. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of services offered on the web site likely to disrupt the business of Complainant. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (FORUM May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
The Domain Name also appears to have been used for illegal activity. See Minn. State Lottery v Mendez, FA 96701 (FORUM Apr 2, 2001) (Finding bad faith under Policy 4 (a) (iii) where the disputed domain name has been used for illegal activity).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <wysemd.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 10, 2017
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