Dell Inc. v. Ong Nguyen Van Cho
Claim Number: FA1807001799171
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA Respondent is Ong Nguyen Van Cho (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delldriverdownload.net>, registered with MAT BAO CORPORATION.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.
On August 2, 2018, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <delldriverdownload.net> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@delldriverdownload.net. Also on August 9, 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 September 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant [Footnotes and Graphics Omitted]
i. Dell and its Business
Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, and other computer-related services and products, including printers. Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Dell has used television, radio, magazines, newspapers, and the Internet as marketing media. Dell has been, and continues to be, extremely successful. Dell sells its products and services in over 180 countries. For several years, Dell has been the world’s largest direct seller of computer systems. As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and many other countries. More information about Dell can be found on Dell’s official website at www.dell.com, as well as www.dell.com/vn, Dell’s official website for Vietnam. Moreover, Dell was recently ranked as a top 100 brand by Brand Finance in its “Global 500 – The Most Valuable Brands of 2018” list. See http://brandirectory.com/league_tables/table/global-500-2018.
ii. Dell’s Marks and Registrations
Complainant has used the famous mark DELL, as well as various other marks that include the word DELL (the “DELL Marks”), for many years for computers, computer parts and accessories, computer service and support, and other computer-related products and services. For example, Dell offers drivers and support for its hardware on its website at www.support.dell.com. Dell owns many trademark registrations for the DELL Marks in numerous jurisdictions, including Vietnam. See, e.g., U.S. Reg. Nos. 1,616,571, 1,860,272, 2,806,769, 2,806,770, and 3,215,023 and Vietnam Reg. Nos. 4-0021423-000, 4-0021424-000, and 4-0225881-000.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. The disputed domain name is identical or confusingly similar to Complainant’s DELL Marks. Specifically, the domain name incorporates the famous mark DELL in its entirety, merely tacking on the generic terms “driver” and “download” which are highly likely to be associated with Dell and its goods and services. The presence of a generic top-level domain (“.net”) is irrelevant in a UDRP 4(a)(i) analysis.
b. Respondent has no rights or legitimate interests in the domain name.
i. Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Rather, the domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is Complainant or is at least affiliated or connected with, or authorized by, Complainant.
Specifically, Respondent’s delldriverdownload.net website prominently displays the DELL mark at the top of each page along with the title “Dell Driver Download,” as shown below:
[Graphic Omitted]
Additionally, the web browser tab displays an exact copy of Complaint’s logo, shown below, when the website is accessed.
[Graphic Omitted]
Respondent’s website also copies the look and feel of Complainant’s official www.dell.com website. Like www.dell.com, it utilizes a blue and white color scheme, including a blue that is similar to that used on Complainant’s official website. Respondent’s website also features pictures of Complainant’s products.
Respondent’s website purports to allow visitors to download drivers for Complainant’s products. Respondent encourages consumers to download executable files, which are not provided, nor approved, by Complainant.
Respondent’s website displays the names and model numbers of many of Complainant’s products along with links which Respondent implies provide visitors with drivers for Complainant’s products. In reality, executable files downloaded via these links are not provided, nor screened, by Complainant and could contain counterfeit, pirated, or malicious software.
ii. After falsely creating an association with Complainant as described in paragraph 7(b)(i) above, Respondent is attempting to gather Internet users’ personal information through contact forms on the website of the disputed domain name, located on the “Contact” and “Request Drivers” pages. Both forms ask visitors to provide information such as their name and email address. Respondent may commercially benefit by abusing this information and/or by selling this information to third parties.
iii. Once Respondent has misled internet users into mistakenly believing there is a connection between Respondent and Complainant, Respondent may be attempting to distribute counterfeit, pirated, or malicious software to devices belonging to unsuspecting consumers who inadvertently visited, or were directed to, its website believing that it was associated with Complainant.
iv. Respondent is not an authorized provider of Complainant’s software or services. In addition, Complainant has not licensed or otherwise permitted Respondent to use its DELL Marks, or any other mark owned by Complainant.
v. As Complainant has not licensed or authorized Respondent to distribute its drivers, even if Respondent made true copies of Complainant’s software available under the domain name, as it purports to do, such use would not establish legitimate interests in the domain name.
vi. Respondent is not commonly known by the domain name at issue.
vii. Respondent is not making a legitimate noncommercial or fair use of the domain name. Respondent’s inclusion of DELL in the domain name is not a nominative fair use.
c. Respondent registered and is using the domain name in bad faith.
i. The use of a domain name confusingly similar to Complainant’s famous DELL Marks is evidence of bad faith. Further, it is clear that Respondent knew of Complainant’s famous DELL Marks and rights based on Respondent’s use of the disputed domain name to host a website that features Complainant’s marks, displays pictures of Complainant’s products, and purports to offer driver downloads for Complainant’s products.
ii. As noted above in Paragraphs 7(b)(i) and 7(b)(iii), Respondent may use the site as part of a scheme to distribute malicious software.
iii. Not only is the disputed domain name highly likely to cause confusion, Respondent’s bad faith is clearly demonstrated by the evidence set out in paragraph 7(b)(i), above, which shows that the domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Dell.
iv. By using the disputed domain name for a website that displays the DELL Marks and images of Complainant’s products, and target Dell customers by offering drivers for Dell products and displaying advertisements, which Respondent is presumably paid for, Respondent has intentionally attempted to attract 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 Respondent’s website.
v. Use of the disputed domain name delldriverdownload.net for a website targeting Dell customers by purporting to distribute copies of Complainant’s software supports a finding of bad faith use under paragraph 4(b) of the Policy.
vi. As noted above in Paragraph 7(b)(ii), Respondent is attempting to gather Internet users’ personal information after falsely creating an association with Complainant. Such facts support a finding of bad faith registration and use of the domain name at issue.
vii. Respondent has engaged in a pattern of bad faith registration and use of third party trademarks in domain names. This pattern is evidenced by the fact that Respondent previously owned at least two domain names that incorporated the well-known marks of Complainant’s competitors, including acerdriversdownload.com and asusdriversdownload.net.
viii. Respondent’s inclusion of an inconspicuous explanation at the bottom of its website displayed at delldriverdownload.net does not mitigate against a finding of bad faith. Respondent’s website states that:
We are not a company under the Dell Inc and not driven by anything from Dell Inc. All drivers are provide and hosted on Dell Corporation. The Dell Driver Download only provide to you the fastest way to collection and download all drivers. So if you have any problems with drivers, softwares or hardware please contact the Dell Support. Thank you!
The vague language included in the disclaimer is unlikely to alleviate the confusion likely to be caused by Respondent’s use of the DELL mark in its domain name and the website made available by Respondent at the disputed domain name.
ix. Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the DELL Marks in the site accessible under the domain name; and Respondent’s domain name incorporates exactly the famous mark DELL. See 15 U.S.C. § 1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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: Language of Proceeding
Although the Registration Agreement for the subject domain name is in Vietnamese, Complainant requests the proceedings continue in English pursuant to UDRP Rule 11(a). Previous panels have decided proceedings may advance in a language other than that of the Registration Agreement where there is evidence the respondent is familiar with the requested language.
There is compelling evidence Respondent is proficient in English. This website is entirely in English and features screenshots providing visitors with download instructions in English. The domain name incorporates two generic English words – “driver” and “download.” This evidence demonstrates Respondent understands, and has command of, the English language. It would be appropriate for this proceeding to continue in English.
After considering the circumstance of the present case, the Panel decides the proceeding should be in English.
Complainant claims rights in the DELL mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has rights in its DELL mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <delldriverdownload.net> domain name is confusingly similar to Complainant’s DELL mark because it merely adds the “driver download” generic terms and a gTLD. Adding a generic and/or descriptive term to a complainant’s mark does not prevent the finding of confusing similarity between a disputed domain name and a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i)). Respondent’s <delldriverdownload.net> wholly incorporates Complainant’s DELL mark and adds the generic terms “driver” and “download,” and the gTLD “.net.” Respondent’s <delldriverdownload.net> domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent lacks rights and legitimate interests in the <delldriverdownload.net> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the DELL mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the 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 “Binh Dinh.” There is no obvious relationship between that name and the disputed domain name. There is no evidence in the record to indicate Respondent was authorized to use Complainant’s DELL mark. Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <delldriverdownload.net> domain name to pass off as Complainant by resolving to a website that mimics the look and feel of Complainant’s own website. Using a domain name to pass off as a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Respondent’s prominently displays Complainant’s DELL mark and logo, a blue and white color scheme, information about Complainant’s products, and links to download Complainant’s software programs. Complainant’s <dell.com> website contains similar content and a similar blue and white color scheme. Respondent failed to use the domain name for a legitimate use under Policy ¶¶4(c)(i) and (iii).
Complainant claims Respondent engages in a phishing scheme to obtain personal information from users. Phishing schemes do not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Respondent uses the “contact me” portion of the webpage to fraudulently obtain users’ information, presumably for commercial gain. Respondent attempts to phish for information, which leads the Panel to conclude Respondent lacks rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).
Complainant suggests Respondent “might” be using the domain name to distribute malware. Complainant must do more than suggest Respondent “might” be distributing malware to meet its burden of proof.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent engages in a pattern of bad faith registration. The registration of multiple domain names infringing on famous third-party marks does not support a finding of bad faith under Policy ¶4(b)(ii), which requires “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” Clearly, Complainant reflects its trademark in the <DELL.com> domain name. Therefore, Policy ¶4(b)(ii) is simply not applicable. However, the list under Policy ¶4(b) is not an exhaustive list of ways to demonstrate bad faith, but merely illustrative. See Cerner Corporation v. yangzhichao, Claim Number: FA1607001685754 (Forum September 6, 2016). Simply adding “driverdownload” to various famous computer manufacturer marks indicates a business plan (primitive though it may be). It clearly indicates bad faith registration and use to this Panelist. Respondent registered and uses the <delldriverdownload.net> in bad faith under the penumbra of Policy ¶4(b).
Complainant claims Respondent disrupts Complainant’s business and creates confusion with Complainant’s DELL mark for commercial gain by resolving to a website that mimics Complainant’s own website. Using a domain name to pass off as a complainant constitutes bad faith registration and use under Policy ¶4(b)(iii) and (iv). Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶4(b)(iii)); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The website at <delldriverdownload.net> is very similar to Complainant’s own website at <DELL.COM>. Both websites feature a blue and white color scheme as well as Complainant’s DELL mark and logo. The <delldriverdownload.net> website offers unauthorized versions of Complainant’s software products. Respondent registered and used the domain name in bad faith under Policy ¶¶4(b)(iii) and (iv).
Complainant claims Respondent uses the domain name to phish for personal information. Using a domain name to phish for information constitutes bad faith registration and use pursuant to Policy ¶4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Complainant demonstrates that Respondent engages in a phishing scheme to obtain users’ information and downloads malware onto the users’ computers. Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶4(a)(iii)). Respondent’s webpage contains a contact section, which allows the gullible to send their name and email addresses to Respondent. Respondent registered and used the domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s DELL mark at the time of registering the <delldriverdownload.net> domain name. Respondent clearly knew about Complainant’s mark because Respondent copies the look and feel of Complainant’s web site. This means Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge adequately proves 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’s DELL mark has significant good will and consumer recognition around the world. It has been ranked as a top 100 brand by Brand Finance. Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <delldriverdownload.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, September 5, 2018
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