Dell Inc. v. Asri Fahmi / drivers.inc
Claim Number: FA1807001799045
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas. Respondent is Asri Fahmi / drivers.inc (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delldrivers.net>, registered with CV. Jogjacamp.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.
On July 31, 2018, CV. Jogjacamp confirmed by e-mail to the Forum that the <delldrivers.net> domain name is registered with CV. Jogjacamp and that Respondent is the current registrant of the name. CV. Jogjacamp has verified that Respondent is bound by the CV. Jogjacamp 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 August 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@delldrivers.net. Also on August 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.
On August 7, 2018, Respondent filed a Response stating that he is aware that he has “used a trademark from Dell, and [he] will follow all the processes including the transfer of the domain to the complaint if necessary” but that he will need “time to move and correct the data on the website”. The Respondent also said that he “will respect any decision in the administrative proceeding transferring the domain name”.
On August 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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, computer accessories, and other computer-related services and products, including printers. Complainant has sold its products and services in over 180 countries and has been one of the world’s largest direct sellers of computer systems. The DELL trade mark, in which Complainant has rights, has become famous in the United States and in many countries, including Indonesia where Respondent is located. Complainant has registered the DELL trade mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,616,571 registered October 9, 1990) and in Indonesia (Reg. Nos. IDM000000818 and IDM000046917).
Respondent’s <delldrivers.net> domain name is identical or confusingly similar to Complainant’s DELL mark as it incorporates the entire DELL mark, combining it with the generic term, “drivers”, and the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <delldrivers.net> domain name as Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the DELL mark in any way. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name for his website to pass off as Complainant and to deceive Internet users into downloading software that is unrelated to Complainant’s business. Respondent’s website prominently displays the DELL mark at the top of each page and incorporates Complainant’s proprietary DELL logo with the title “Dell Drivers”. Respondent’s website also copies Complainant’s registered slogan “THE POWER TO DO MORE” (Reg. No. 4,084,743). Respondent has not been authorized by Complainant to use its DELL marks and is not an authorized provider of Complainant’s software or services. Respondent is not commonly known by the domain name at issue.
Respondent registered and uses the <delldrivers.net> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant. The inclusion of a disclaimer on Respondent’s webpage (stating that the website “does not host any illegal content, files or software”) does not mitigate a finding of bad faith. Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registration of the disputed domain name. Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
B. Respondent
Respondent did not dispute Complainant’s contentions but filed a Response acknowledging Complainant’s trademark rights in the word DELL and stating that he would accept any decision for the transfer of the disputed domain name to Complainant.
(a) The disputed domain name is confusingly similar to the trade mark DELL in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used 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.
Complainant has established it has rights in the trade mark DELL. The only difference between the disputed domain name and Complainant’s mark lies in the addition of the generic/descriptive word “drivers” and the gTLD “.net. The “.net” element is a technical requirement of domain names and does not remove the confusing similarity with Complainant’s DELL mark. In the context of what Complainant sells and the industry it operates in, the addition of the word “drivers” in the disputed domain name adds to the confusion with Complainant’s trade mark. It is a well-established principle that the addition of a generic or descriptive term is insufficient to differentiate a domain name from a complainant’s trade mark for the purposes of Policy ¶ 4(a)(i). (See, e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016); See also ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.)
Policy ¶ 4(a)(i) has therefore been established.
The Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not disputed Complainant’s contentions on this issue under ¶ 4(a)(ii) of the Policy but, instead, admits to the fact that he does not have any rights or legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
The Panel also finds that Complainant has established that the disputed domain name was registered and is being used in bad faith.
Respondent has acknowledged that he was aware of Complainant’s trade mark when he registered the disputed domain name and that he has no legitimate interests nor rights therein. The disputed domain name incorporates a famous trade mark of Complainant. The content and look of Respondent’s website reflect a deliberate attempt to “attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Policy ¶ 4(a)(iii) has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delldrivers.net> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: August 11, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page