Dell Inc. v. Deryck J
Claim Number: FA1802001770257
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Deryck J (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellnotebookservis.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2018; the Forum received payment on February 2, 2018.
On February 2, 2018, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <dellnotebookservis.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2018 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@dellnotebookservis.com. Also on February 6, 2018, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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, Dell Inc. is a world leader in computers and other computer related products and services. Complainant uses the DELL mark to promote its products and services. Complainant claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,236,785 registered Apr. 6, 1999). Respondent’s <dellnotebookservis.com>[1] domain name is confusingly similar to the DELL mark, as the name contains the mark in its entirety, merely adding the descriptive terms “notebook” and “servis,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <dellnotebookservis.com> domain name. Respondent is not commonly known by the domain name and Complainant has not granted Respondent permission or license to use the DELL mark for any purpose.
3. Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the resolving website to pass off as Complainant and offer services which directly compete with Complainant’s business.
4. Respondent has registered and used the <dellnotebookservis.com> domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Respondent does this to compete with Complainant’s business. Respondent has used a privacy service to register the domain name.
5. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DELL mark. Respondent’s domain name is confusingly similar to Complainant’s DELL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dellnotebookservis.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has rights in the DELL mark based upon its registration with the USPTO (e.g. Reg. No. 2,236,785 registered Apr. 6, 1999). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the DELL mark per Policy ¶ 4(a)(i).
Complainant asserts that the <dellnotebookservis.com> domain name is confusingly similar to the DELL mark as the name contains the mark in its entirety and adds the descriptive terms “notebook” and “servis,” as well as the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. 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 points out that the added term “servis” likely refers to the Turkish word servis, which translates to “server” in English. The Panel agrees with Complainant and finds that <dellnotebookservis.com> does not contain changes that would sufficiently distinguish it from the DELL mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dellnotebookservis.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <dellnotebookservis.com> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the DELL mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the domain name, especially where a privacy service has been engaged. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.); 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). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding (listing “Private Registration” as registrant name). As a result, the WHOIS information of record identifies registrant as “Deryck J.” Additionally, the lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that a respondent does not have rights or legitimate interests in a 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 <dellnotebookservis.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the domain name is shown by Respondent’s failure to use the name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the website resolving from the domain name to pass off as Complainant and offer services which directly compete with Complainant’s business. Passing off as a complainant in order to offer products or services in competition with the complainant is not be a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain name. 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 provides screenshots of the resolving webpages for the <dellnotebookservis.com> domain name, upon which Respondent displays a version of the DELL logo and pictures of Complainant’s products; and also appears to have embedded a page from Complainant’s official website. Complainant also has shown that Respondent offers computer repair and support services in direct competition with services offered by Complainant. The Panel agrees with Complainant that this use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <dellnotebookservis.com> domain name in bad faith because Respondent uses the domain name to pass off as Complainant in order to compete with Complainant’s business. Use of a confusingly similar domain name to pass off as a mark-holder and offer competing goods or services can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum January 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii) and (iv)). The record shows that the <dellnotebookservis.com> domain name resolves to a website which displays Complainant’s mark and logo, and offers competing technical support services. The Panel agrees with Complainant and finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein. Actual knowledge may be proven through a totality of circumstances surrounding the registration of a domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Respondent’s use of the DELL mark in the subject domain name, and using copyright-protected images from Complainant’s own website indicates it had actual knowledge of Complainant and its rights. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the DELL mark when it registered the <dellnotebookservis.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellnotebookservis.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: March 15, 2018
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