Dell Inc. v. Deven
Claim Number: FA1807001799201
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Deven (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell5thgeninspironlaptop.ooo>, <dellvostro3558notebook.ooo>, <dellvostro153559laptop.ooo>, <dellvenue7calling3gtablet.ooo>, <dellvenue7callingtablet.ooo>, <delllatitude348014inchhdlaptop.ooo>, <delllatitude3480laptop.ooo>, <dellinspiron3558notebook.ooo>, <dellinspiron153558laptop.ooo>, <dellgenuinelithiumion4400mahlaptopbattery.ooo>, and <dellgenuinelaptopadapterchargerpowercord.ooo>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.
On August 1, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <dell5thgeninspironlaptop.ooo>, <dellvostro3558notebook.ooo>, <dellvostro153559laptop.ooo>, <dellvenue7calling3gtablet.ooo>, <dellvenue7callingtablet.ooo>, <delllatitude348014inchhdlaptop.ooo>, <delllatitude3480laptop.ooo>, <dellinspiron3558notebook.ooo>, <dellinspiron153558laptop.ooo>, <dellgenuinelithiumion4400mahlaptopbattery.ooo>, and <dellgenuinelaptopadapterchargerpowercord.ooo> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@dell5thgeninspironlaptop.ooo, postmaster@dellvostro3558notebook.ooo, postmaster@dellvostro153559laptop.ooo, postmaster@dellvenue7calling3gtablet.ooo, postmaster@dellvenue7callingtablet.ooo, postmaster@delllatitude348014inchhdlaptop.ooo, postmaster@delllatitude3480laptop.ooo, postmaster@dellinspiron3558notebook.ooo, postmaster@dellinspiron153558laptop.ooo, postmaster@dellgenuinelithiumion4400mahlaptopbattery.ooo, and postmaster@dellgenuinelaptopadapterchargerpowercord.ooo. Also on August 13, 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 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
After appointment of the Panelist, Respondent wrote to the Forum indicating its willingness to transfer the domain name.
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 asserts trademark rights in DELL, INSPIRON, LATITUDE, VENUE, and VOSTRO and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
No Response was filed. However, as indicated, after appointment of the Panel, Respondent write to the Forum stating: “We are ok to give up the domain name.
The domain was registered for a good faith (sic).”
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademarks DELL, INSPIRON, LATITUDE, VENUE, and VOSTRO in connection with its business selling computers and related products and services;
2. the trademarks are the subject of, inter alia, the following United States Patent and Trademark Office (“USPTO”) registrations:
DELL (Reg. No. 1,616,571, registered Oct. 9, 1990)
INSPIRON (Reg. No. 2,254,835, registered June 22, 1999)
LATITUDE (Reg. No. 3,465,293, registered July 15, 2008)
VENUE (Reg. No. 4,611,081, registered Sept. 23, 2014)
VOSTRO (Reg. No. 3,399,117, registered Mar. 18, 2008).
3. the disputed domain names were all created on July 4, 2018;
4. the evidence is that the domain names are either not in use, or divert Internet users to webpages featuring listings unrelated to Complainant’s business under the trademarks, or have been used to offer competing web-hosting and other products and services; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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."
A preliminary procedural matter arises since Respondent has agreed to transfer the disputed domain names. The Panel has discretion to order transfer without applying the Policy but declines to do so in this case. The Panel does not accept, for reasons given later, Respondent’s assertion that it did not register the names in bad faith and the Panel is aware that consent to transfer is one way in which those who make abusive registrations avoid censure. The Panel has made the following analysis in accordance with the terms of the Policy.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its USPTO registrations for DELL, INSPIRON, LATITUDE, VENUE, and VOSTRO and has so proven trademark rights in those terms.
Panel is satisfied that the disputed domain names are confusingly similar to one or another of Complainant’s trademarks. For the purpose of comparison the gTLD, “.ooo”, can be disregarded.[i] The disputed domain names take one or more of Complainant’s marks and add terms of no distinctive value such as “5th gen,” “laptop,” “notebook,” “tablet,” “calling,” “inch,” “hd,” “battery,” “lithium,” “ion,” “adapter,” “charger,” or “power cord”. The additions do not distinguish the domain names from the trademarks in any significant way so as to avoid confusion.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[ii]
The publicly available WHOIS information identifies the registrant of the disputed domain names as “Deven” and so there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any registered trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademarks and Complainant denies any such authorization.
Further, Complainant argues Respondent’s lack of rights or legitimate interests in the domain names by reason of either (i) no use at all of some of the names, or (ii) no use of some of the names in connection with a bona fide offering of goods or services, or no legitimate noncommercial or fair use (generally, in those cases there being competitive use), or (iii) an attempt to pass off the resolving website as a site owned or controlled by Complainant. The Panel is in agreement with Complainant’s submission – there is either no use of the domain names, or in those cases where there has been use the resolving websites carry links to third-party products and services, or to online marketplaces listing various books for sale. The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.[iii] In the absence of a Response the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and were used in bad faith.
Further guidance on the requirement of registration and use in bad faith is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The use of the disputed domain names has been described. Where there has been actual use the Panel finds paragraph 4(b)(iv) has been satisfied. The Panel has already found the disputed domain names to be confusingly similar to the trademarks. The Panel accepts Complainant’s assertion that Respondent uses the names to confuse and divert Internet users to its websites for commercial gain in some form or another. In those cases where there has been no use at all or the disputed domain names resolve to a construction page, the Panel finds registration in bad faith by reason of the repute of Complainant’s registered marks and use in bad faith by reason of “passive holding” and the logic first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.[iv]
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell5thgeninspironlaptop.ooo>, <dellvostro3558notebook.ooo>, <dellvostro153559laptop.ooo>, <dellvenue7calling3gtablet.ooo>, <dellvenue7callingtablet.ooo>, <delllatitude348014inchhdlaptop.ooo>, <delllatitude3480laptop.ooo>, <dellinspiron3558notebook.ooo>, <dellinspiron153558laptop.ooo>, <dellgenuinelithiumion4400mahlaptopbattery.ooo>, and <dellgenuinelaptopadapterchargerpowercord.ooo> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 10, 2018
[i] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
[ii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000 0624 (WIPO Aug. 21, 2000).
[iii] See, for example, Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name; Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant; Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”).
[iv] The evidence is that Complainant sells its products to over 180 countries and that, for several years, it has been the world’s largest direct seller of computer systems. Its notoriety and that of its trademarks is established.
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