Dell Inc., Virtustream, Inc. and VMware Inc. v. Simon Greer / Sideways Group Limited / Actual Virtual Ltd
Claim Number: FA1711001757361
Complainant is Dell Inc., Virtustream, Inc. and VMware Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Simon Greer / Sideways Group Limited / Actual Virtual Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-virtustream.com>, <dell-vmware.com>, <dellvirtustream.com>, <dellvmware.com> and <emcvirtustream.com>, registered with LCN.COM Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2017; the Forum received payment on November 6, 2017.
On November 10, 2017, LCN.COM Ltd. confirmed by e-mail to the Forum that the <dell-virtustream.com>, <dell-vmware.com>, <dellvirtustream.com>, <dellvmware.com> and <emcvirtustream.com>, domain names are registered with LCN.COM Ltd. and that Respondent is the current registrant of the names. LCN.COM Ltd. has verified that Respondent is bound by the LCN.COM Ltd. 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 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@dell-virtustream.com, postmaster@dell-vmware.com, postmaster@dellvirtustream.com, postmaster@dellvmware.com, postmaster@emcvirtustream.com. Also on November 14, 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 December 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant recently acquired EMC Corporation, incorporating it as a wholly-owned subsidiary, and in turn acquired VMware Inc.—an industry leading virtualization software company—and Virtustream, Inc.—an enterprise-class cloud service and software provider—as subsidiaries. Complainant and its predecessors in interest have used the DELL, EMC, VIRTUSTREAM, and VMWARE marks (collectively, the “DELL marks”), as well as various other related marks. Complainant established rights in these marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., DELL—Reg. No. 1,616,571, registered Oct. 9, 1990; EMC—Reg. No. 2,142,157, registered Mar. 10, 1998; VIRTUSTREAM—Reg. No.4,029,260, registered Sep. 20, 2011; VMWARE—Reg. No. 2,764,540, registered Sep. 16, 2003).Respondent’s <dell-virtustream.com>, <dell-vmware.com>, <dellvirtustream.com>, <dellvmware.com> and <emcvirtustream.com> domain names are confusingly similar to Complainant’s marks because each is wholly comprised of two of the DELL marks and the “.com” generic top-level domain (“gTLD”). The <dell-virtustream.com> and <dell-vmware.com> domain names simply add a hyphen between the marks.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the names, nor has Complainant authorized or licensed Respondent to use the DELL marks in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, some of the domain names do not resolve to any content, while others resolve to a parking page outlining tools provided by the registrar. Respondent may presumably attempt to sell the domain names for profit or use them for websites which are highly likely to confuse consumers.
Respondent registered and is using the disputed domain names in bad faith. The fact that Respondent registered more than five domain names that contain the DELL marks as well as multiple other domain names incorporating well-known marks of Complainants and other third parties is evidence of a pattern of bad faith registration. Further, Respondent’s passive holding of the domain names is evidence of bad faith. Finally, it is clear Respondent knew of Complainant’s DELL marks and Complainant’s rights therein at the time it registered and subsequently used the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Dell Inc. of Round Rock, TX, USA, Virtustream, Inc. of Bethesda, MD, USA and VMware Inc. (“Complainant”), of Palo Alto, CA, USA. Complainant owns domestic and international registrations for the marks DELL, EMC, VIRTUSTREAM, and VMWARE, which it has continuously used since at least as early as 1998 in connection with its sale of computers, software, data storage, and a variety of related technology oriented goods and services.
Respondent is Simon Greer / Sideways Group Limited / Actual Virtual Ltd, of Hertfordshire, United Kingdom. Respondent’s registrar’s address is listed as the same. The Panel notes that the <dell-virtustream.com> and <dell-vmware.com> domain names were created on or about September 16, 2016; <dellvirtustream.com> and <emcvirtustream.com> on or about October 21, 2015; and <dellvmware.com> was created on or about October 14, 2015.
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: Multiple Complainants
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The three Complainants in this matter are; Dell Inc.; Virtustream, Inc.; and VMware Inc. Complainant Dell Inc. asserts that it recently acquired Complainants Virtustream, Inc. and VMware Inc. as subsidiaries.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel here accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus treats them as a single entity in this proceeding.
Complainant claims rights in the DELL, EMC, VIRTUSTREAM, and VMWARE marks based upon registration of the marks with the USPTO (e.g., DELL—Reg. No. 1,616,571, registered Oct. 9, 1990; EMC—Reg. No. 2,142,157, registered Mar. 10, 1998; VIRTUSTREAM—Reg. No.4,029,260, registered Sep. 20, 2011; VMWARE—Reg. No. 2,764,540, registered Sep. 16, 2003). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the DELL marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <dell-virtustream.com>, <dell-vmware.com>, <dellvirtustream.com>, <dellvmware.com> and <emcvirtustream.com> domain names are confusingly similar to the DELL marks, as the names are each wholly comprised of two of the DELL marks and the “.com” gTLD, adding a hyphen in two cases. A domain name which combines two marks and adds a gTLD is not distinguishable from the marks in a Policy ¶ 4(a)(i) analysis. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Addition of hyphens is irrelevant in a Policy ¶ 4(a)(i) analysis. See nnomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel here finds that the disputed domain names are confusingly similar to the DELL marks per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the names, nor has Complainant authorized Respondent to use the DELL marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Simon Greer / Actual Virtual Ltd.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said 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 here finds that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent is inactively holding the domain names. A failure to make an active use of a domain name is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends that some of the domain names do not currently resolve to any content, while others resolve to a parking page outlining tools provided by the registrar. The Panel here finds, to the extent that Complainant’s uncontested assertions are verifiable, they support the conclusion that Respondent lacks rights and legitimate interests in the domain names per Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that in light of the fame and notoriety of Complainant's DELL marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant further asserts that Respondent’s registration of multiple domain names consisting of precise combinations of the DELL Marks indicates it had actual knowledge of Complainant’s rights. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP policy and cases decline 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 here finds, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith registration and use 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 further asserts that Respondent’s failure to use the disputed domain names is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that any inactive holding of the disputed domain names by Respondent evinces bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-virtustream.com>, <dell-vmware.com>, <dellvirtustream.com>, <dellvmware.com>, <emcvirtustream.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 21, 2017
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