Dell Inc. v. william Hill
Claim Number: FA1902001829511
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is william Hill (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delldc.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2019; the Forum received payment on February 12, 2019.
On February 12, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delldc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2019 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@delldc.com. Also on February 13, 2019, 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 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA for computers and related goods and services with first use recorded as 1987. It operates a web site at <www.dell.com>.
The Domain Name registered in 2018 incorporates the Complainant’s DELL mark in its entirety merely tacking on the letters ‘dc’ and the generic top level domain .com, neither of which diminish the similarity between the Domain Name and the Complainant’s registered trademark.
Respondent has no rights or legitimate interests in the Domain Name as the Domain Name has not been pointed to a web site, but is being used for e mails that attempt to deceive customers into thinking the Respondent is or is connected to the Complainant to promote computer support services in direct competition with services offered by the Complainant by telling customers that they have IT issues they did not report to invite customer contact. The site also might be gathering customer information. Respondent is not an authorized provider of Complainant’s computer repair services and is not licensed by the Respondent to use its DELL mark. The use is not a nominative fair use.
This is not a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial fair use of the Domain Name. Respondent has registered and is using the Domain Name in bad faith. The content of the deceptive e-mails show the Respondent was aware of the Complainant and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA for computers and related goods and services with first use recorded as 1987. It operates a web site at <www.dell.com>.
The Domain Name registered in 2018 has been used in e-mails representing that the Respondent is the Complainant in order to offer computer support services which are not associated with the Complainant.
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.”).
Identical or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s DELL mark (registered in the USA for goods and services relating to computers with first use recorded as 1987) with the letters ‘dc’ and the gTLD “.com” which do not prevent confusing similarity between the Domain Name and the Complainant’s mark per Policy ¶ 4(a)(i). See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”) See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the DELL mark. The Respondent has not answered this Complaint and is recorded as ‘William Hill’ on the WhoIs database and accordingly does not appear to be commonly known by the Domain Name. 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).
The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
It is clear from the evidence that the Respondent has used the Domain Name to promote competing computer services which are not connected with the Complainant. This use of the Domain Name makes it clear that the Respondent was aware of the significance of the DELL name and the Complainant’s rights. The usage of the Complainant’s DELL mark which has a significant reputation in relation to computer support services is not fair as the Respondent’s e mails inviting contact from customers do not make it clear that there is no commercial connection with the Complainant and the Respondent appears to refer to itself, its business and/or its services using DELL in a misleading way passing itself off as or authorized by the Complainant to get Customer business or information. As such, this cannot amount to the bona fide offering of goods and services. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trademarks in this way. As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above the Respondent's use of the Domain Name is commercial and he is using it to make profit from competing services not associated with the Complainant in a confusing manner. The use of the Complainant’s mark in the Respondent’s e-mails indicates the Respondent was aware of the Complainant and the Complainant’s business. It seems clear that the use of the Complainant’s mark in the Domain Name and the references in the e mails where the Respondent appears to refer to itself, its business and/or its services using DELL in a misleading way together with the use of a similar blue to the Complainant would cause people to associate the e mails with the Complainant and its business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of his services on the Internet. This also appears designed to disrupt the business of a competitor. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 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)); see also CAN Financial Corporation v. William Thomson/CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that Respondent had engaged in bad faith under Policy 4 (b)(iv) by using a confusingly similar domain name to attract internet users where it offered competing services).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb of the Policy. There is no need to consider additional alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delldc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 8, 2019
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