Dell Inc. v. NicProxy Customer / Whois Privacy Protection Service.
Claim Number: FA1704001725543
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, United States. Respondent is NicProxy Customer / Whois Privacy Protection Service. (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellnotebookservisi.com>, registered with Nics Telekomünikasyon Tic Ltd. Sti.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 6, 2017. The Complaint was submitted in both Turkish and English.
On April 13, 2017, Nics Telekomünikasyon Tic Ltd. Sti. confirmed by e-mail to the Forum that the <dellnotebookservisi.com> domain name is registered with Nics Telekomünikasyon Tic Ltd. Sti. and that Respondent is the current registrant of the name. Nics Telekomünikasyon Tic Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Tic Ltd. Sti. 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 April 19, 2017, the Forum served the Turkish and English Complaint and all Annexes, including a Written Notice of the Complaint in Turkish and English, setting a deadline of May 9, 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@dellnotebookservisi.com. Also on April 19, 2017, the Turkish and English 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 May 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Complainant registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). See Compl., at Attached Ex. C. Respondent’s <dellnotebookservisi.com> domain name is confusingly similar because it incorporates the famous mark DELL in its entirety, merely tacking on the generic terms “notebook” and “servisi,” along with the irrelevant generic top-level domain (“gTLD”) “.com.” The term “servisi” is the Turkish translation of the English word “services.”
2. Respondent has no rights or legitimate interests in <dellnotebookservisi.com>. Respondent is not commonly known by the DELL mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark for any purpose. Respondent also does not use the disputed domain to make a bona fide offering of goods or services because it attempts to pass off as Complainant, as the disputed domain name has numerous photos of Complainant’s products on the resolving page, and prominently displays a version of the DELL mark at the top of each page above the Turkish phrase “Notebook Teknik Servis,” which translates to “Notebook Technical Service.” See Compl., at Attached Ex. D. Further, Respondent uses the disputed domain name to phish for personal information from users by requesting their “Adiniz Soyadiniz” and “Telefon Numaraniz,” or “Full Name” and “Telephone Number,” on many of the pages on the website. See id.
3. Respondent registered and uses the <dellnotebookservisi.com> in bad faith. Respondent, by using a confusingly similar domain name and displaying Complainant’s mark and products, creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. See Compl., at Attached Ex. D. Additionally, Respondent uses the disputed domain name to promote services that compete with those of Complainant. See id. Moreover, Respondent, in Turkish, places the disclaimer “The brand and logo mentioned on the site are the registered logos of the related company and they are published for information purposes. Our company provides
‘special’ service to this brand” in fine print on the webpage, however this should be disregarded for a bad faith analysis. Finally, Respondent must have had actual or constructive knowledge of Complainant’s DELL mark because Respondent uses the disputed domain name to host a website which copies several versions of Complainant’s logo and offers competing spare parts and technical services for Complainant’s products.
B. Respondent
1. Respondent did not submit a Response in this Proceeding.
1. Respondent’s <delllnotebookservisi.com> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <delllnotebookservisi.com> domain name.
3. Respondent registered or used the <delllnotebookservisi.com> domain name in bad faith.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
Complainant, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant sells its products and services in over 180 countries. Complainant claims rights in the DELL mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). See Compl., at Attached Ex. C. Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel may see that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <dellnotebookservisi.com> domain name is confusingly similar because it fully incorporates the DELL mark and adds generic terms and the gTLD “.com.” Charging marks in these ways to form a domain name has not been held to make the domain name sufficiently distinguishable from the mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, the addition of a gTLD is irrelevant to a confusingly similar analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant contends that the <dellnotebookservisi.com> domain name is confusingly similar because it fully incorporates the DELL mark and adds the generic terms “notebook” and “servisi”—the Turkish translation of the English word “services”—and the gTLD “.com.” The Panel may agree that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
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 (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 (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 <dellnotebookservisi.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the UBS mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, and the registrar did not release Respondent’s actual information. Thus, the WHOIS information of record identifies Respondent as “NicProxy Customer / Whois Privacy Protection Service.” Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant next argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services because it attempts to pass off as Complainant. Passing off can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use as described in Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant alleges that the domain name directs the user to a website showing numerous photos of Complainant’s products on the resolving page, and prominently displays a version of the DELL mark at the top of each page. See Compl., at Attached Ex. D. Thus, the Panel concludes that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant lastly argues that Respondent lacks rights and legitimate interests in <dellnotebookservisi.com> as it uses the domain name to engage in a phishing scheme to obtain personal information from users. Phishing schemes can demonstrate a respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant claims that Respondent uses the disputed domain name to phish for personal information from users by requesting their “Adiniz Soyadiniz” and “Telefon Numaraniz,” or “Full Name” and “Telephone Number,” numerous times on the website. See Compl., at Attached Ex. D. The Panel agrees with Complainant’s assertions and holds that Respondent has not demonstrated rights or legitimate interests in the disputed domain name for the purposes of Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and is using the <dellnotebookservisi.com> domain name in bad faith by using a confusingly similar domain name and offering competing services. Such use of a domain name can help a complainant evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant alleges that Respondent, by using a confusingly similar domain, offers products and services that directly compete with and disrupt Complainant’s business. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith.
Complainant also argues that Respondent, by using confusingly similar domain names and offering competing services, creates a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Leading potential users to mistakenly believe that an association between a complainant and a respondent can evince bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant argues that Respondent’s confusingly similar domain name resolves to a webpage that prominently displays Complainant’s marks, designs, and products, which would lead users to believe that an association existed between Complainant and Respondent when none such relationship did or does exist. See Compl., at Attached Ex. D. The Panel agrees that the confusing similarity between Complainant’s mark and the <dellnotebookservisi.com> domain name created confusion in prospective users, demonstrating bad faith registration.
Complainant notes that Respondent uses a disclaimer on its webpage, and argues that the disclaimer does not prevent a finding of bad faith. Disclaimers on disputed domain names do not preclude a finding of bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). Complainant provides that Respondent, in Turkish, places the disclaimer “The brand and logo mentioned on the site are the registered logos of the related company and they are published for information purposes. Our company provides ‘special’ service to this brand” in fine print on the webpage.” See Compl., at Attached Ex. D. The Panel disregards the disclaimer for the purposes of its analysis under Policy ¶ 4(a)(iii).
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the DELL mark because Respondent uses the disputed domain name to host a website which copies several versions of Complainant’s logo and offers competing spare parts and technical services for Complainant’s products. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark and its rights therein, demonstrating bad faith under 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 <dellnotebookservisi.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 26, 2017
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