Dell Inc. v. Jenifer Toppin
Claim Number: FA1808001804333
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Jenifer Toppin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptoplatitude.com>, registered with NameSilo, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2018; the Forum received payment on August 31, 2018.
On August 31, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <delllaptoplatitude.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 September 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 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@delllaptoplatitude.com. Also on September 4, 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 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the (1) DELL and (2) LATITUDE trademarks for computer goods based upon its registration of these marks with the United States Patent and Trademark Office (“USPTO”) dating back to 1994 and 2008 respectively. Respondent’s <delllaptoplatitude.com> domain name, registered on July 24, 2018, is confusingly similar to Complainant’s marks because Respondent combines both marks in the disputed domain name and adds the generic term “laptop” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <delllaptoplatitude.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use its marks. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent attempts to pass itself off as Complainant in an offer of what it claims to be Complainant’s refurbished goods. Furthermore, Respondent attempts to phish for internet users’ personal information through a “Contact Us” page.
Respondent registered and uses the <delllaptoplatitude.com> domain name in bad faith. Respondent knew about Complainant’s rights in the marks prior to registration of the disputed domain name. Further, Respondent attempts to commercially gain by passing itself off as Complainant and displaying links to third party webpages that claim to offer Complainant’s refurbished products. Finally, Respondent tries to phish for internet users’ personal information after creating a false association with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.”).
Complainant asserts rights in the (1) DELL and (2) LATITUDE trademarks based upon its registration of these marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Freek Emming, FA 1802567 (Forum September 20, 2018) (finding that the complainant has rights in its MORGAN STANLEY trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO). Complainant provides copies of its registration of the marks with the USPTO. Therefore, upon conducting a Policy ¶ 4(a)(i) threshold analysis, the Panel finds that Complainant has rights in the DELL and LATITUDE marks.
Next, Complainant argues that Respondent’s <delllaptoplatitude.com> domain name is confusingly similar to Complainant’s marks as Respondent combines two of Complainant’s marks in the disputed domain name and adds a generic term and a gTLD. The combination of a complainant’s marks in a domain name along with the addition of a generic term and a gTLD is not sufficient to distinguish the domain name from a mark under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of two of complainant’s marks in the domain <hpindigo.com> does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 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)). Here, Respondent combines Complainant’s DELL and LATITUDE marks in the disputed domain name, plus the generic term “laptop” and the “.com” gTLD. Of course, panels most often disregard the “.com” gTLD as it typically does not add any substantive meaning to a disputed domain name as a whole. Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Accordingly, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum November 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 April 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 first argues that Respondent lacks rights and legitimate interests in the <delllaptoplatitude.com> because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the DELL and LATITUDE marks. Where a response is lacking, WHOIS information is used to identify the respondent. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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). Additionally, lack of authorization from a complainant to use its marks is evidence that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA 1620789 (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). Although the Complainant has failed to submit into evidence an image of the WHOIS record for the <delllaptoplatitude.com> domain name, the Panel has reviewed this publicly available record and found that it identifies the registrant as “Jenifer Toppin”. No information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s marks. Therefore, under Policy ¶ 4(c)(ii), the Panel concludes that Respondent is not commonly known by the disputed domain name.
Next, Complainant alleges that Respondent fails to use the <delllaptoplatitude.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Complainant avers that Respondent attempts to pass itself off as Complainant to create a faulty association between Respondent and Complainant. Use of a domain name to pass oneself off as a complainant is not considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant here does provide screenshots of the webpages associated with the <delllaptoplatitude.com> domain name where Respondent displays Complainant’s marks as well photos of Complainant’s products. When a user clicks on one of these images it is brought to another page at the Respondent’s website with additional product images and links to third-party websites at which it is claimed that refurbished versions of Complainant’s products are offered for sale. From the evidence presented, it appears that Respondent is not actually selling any goods but is using the <delllaptoplatitude.com> domain name to attract users to its site and then send them on to third-party websites, such as eBay.com, with the aim of collecting click-through fees. Use of a trademark for this purpose is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. Aktiebolaget Electrolux v. DomainsByProxy.com / My Co Doan, D2010-0134 (WIPO March 17, 2010) (finding the <electroluxdishwashers.com> domain is not used in connection with a bona fide offering of goods or services and is not fairly used where respondent’s website contained links to eBay.com auctions for dishwashers, which complainant offered under its ELECTROLUX mark); Bang & Olufsen a/s v. BlueHost.com- INC, D2010-0406 (WIPO May 5, 2010) (where respondent generated click-through revenue by providing ads on its website that linked to products for sale on eBay, including those offered by complainant, the respondent did not have rights or legitimate interests in the disputed domain name). Consequently, the Panel finds that Respondent is not using the <delllaptoplatitude.com> domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant contends that Respondent uses the <delllaptoplatitude.com> domain name without its authorization[i]. In the absence of evidence indicating a fair use, using a domain name to purportedly sell complainant’s products without authorization from complainant is not considered a bona fide offering of goods and services or a legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) or (iii). See Caterpillar Inc. v. Huth, FA 169056 (Forum September 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Complainant provides screenshots of the webpages associated with the disputed domain name, which show Respondent displaying third party links to sites claiming to offer Complainant’s refurbished computers. It should also be noted that nowhere on the <delllaptoplatitude.com> website does there appear any notification or other indication that the site has no relationship with the Complainant. This fails the third prong of the seminal test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001).
Finally, Complainant argues that Respondent uses the disputed domain name to phish for internet users’ personal information. Use of a domain name to phish for internet users’ personal information does not confer rights and legitimate interests under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the webpages associated with the disputed domain name and emphasizes Respondent’s “Contact Us” form with fields for an inquiring user’s name, email address, and message. However, this assertion of phishing is unsupported by any further evidence and the Panel is unable to discern that phishing activity is taking place here. The Panel thus finds this assertion to be speculative and unsupported.
In light of the evidence presented, and in the absence of any response or other statement from the Respondent, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the DELL and LATITUDE marks prior to registration of the <delllaptoplatitude.com> domain name. Where a mark is famous, a respondent is presumed to have actual knowledge of a complainant’s rights in the mark. See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Complainant submits screenshots of its own website as well as a copy of an article showing that the DELL mark is recognized as one of the Global 500 Most Valuable Brands of 2018. Almost no evidence of Complainant’s use of, or the fame of the LATITUDE mark is submitted but a search of the mark in conjunction with the word “computer”, by the Panel, reveals extensive us of the mark by Complainant. In any event, Respondent’s familiarity with Complainant’s marks is apparent from the content of the <delllaptoplatitude.com> website which features images of, and information about Complainant’s products bearing such marks. Accordingly, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in both the DELL and LATITUDE marks prior to registration of the disputed domain name.
Next, Complainant alleges that Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to commercially gain by monetizing click-through links to third-party websites (e.g., eBay.com) purporting to sell Complainant’s refurbished products. Use of a confusingly similar domain name to pass oneself off as a complainant and link Internet users to sites purporting to resell complainant’s products is evidence of bad faith under Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Bang & Olufsen a/s v. Chris Albano / BlueHost.com- INC, supra (bad faith found where the disputed domain was used “as part of a scheme to generate click through revenue by Internet users who visit the site, believing it to be associated with the Complainant, then clicking through to eBay listings of the Complainant's products for sale”). Here, Complainant provides screenshots of the webpages associated with the <delllaptoplatitude.com> domain name, which show that Respondent uses the DELL logo and product images, and displays third party links to eBay pages claiming to offer Complainant’s refurbished computers. Therefore, in conducting the Policy ¶ 4(b)(iv) analysis, the Panel concludes that Respondent attempts to pass itself off as Complainant to resell Complainant’s products in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent uses a “Contact Us” form on the <delllaptoplatitude.com> website to phish for internet users’ personal information. As noted above, this is a conclusory and unsupported assertion and thus bears no consideration in the bad faith analysis of the present case.
For the reasons stated above, and in the absence of any response or other statement by the Respondent, the Panel finds that the <delllaptoplatitude.com> domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delllaptoplatitude.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 28, 2018
[i] In this regard, the Complaint cites the decision in Alticor Inc. v. Linecom, FA 1464456 (Forum November 6, 2012) for the parenthetical proposition that “authorized reseller did not have rights or legitimate interests in the domain name” (emphasis supplied). A reading of the Alticor decision reveals the statement by the complainant that “Respondent is in no way affiliated with or authorized by Complainant” and another by the Panel that “Complainant argues Respondent is not … authorized to use the AMWAY mark in any way.” As such, the Complainant’s Representative in the present case is advised to more carefully review decisions that it cites in its pleadings.
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