Dell Inc. v. mandip / dell service
Claim Number: FA1903001835864
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is mandip / dell service (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellservicekolkatasaltlake.com>, registered with Google 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2019; the Forum received payment on March 26, 2019.
On March 26, 2019, Google LLC confirmed by e-mail to the Forum that the <dellservicekolkatasaltlake.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 March 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@dellservicekolkatasaltlake.com. Also on March 27, 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 April 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Dell Inc., uses their mark DELL in connection with computers, computer accessories, and other related services.
Complainant has rights in the DELL mark based on its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <dellservicekolkatasaltlake.com> domain name is confusingly similar to Complainant’s DELL mark, as it incorporates the famous mark DELL in its entirety, the generic term “service,” and the geographic descriptor “Kolkata Salt Lake,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <dellservicekolkatasaltlake.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DELL mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is inactively holding the disputed domain name. Respondent previously used the disputed domain name to offer similar services or pass off as Complainant.
Respondent registered and is using the <dellservicekolkatasaltlake.com> domain name in bad faith. Respondent previously used the disputed domain name to directly compete with Complainant. Respondent currently fails to actively use the disputed domain name. Respondent also registered the domain name with a privacy service. Finally, Respondent had actual knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DELL mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the DELL mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent used the <dellservicekolkatasaltlake.com> domain name to offer similar services or pass off as Complainant and now holds the domain name inactively.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the DELL trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name contains Complainant’s entire DELL trademark with the suggestive term “service” and the descriptive/geographic term “Kolkata Salt Lake” appended thereto, all followed by the top-level domain name “.com”. The differences between the at-issue domain name and Complainant’s DELL trademark are insufficient to distinguish one from the other for the purpose of the Policy. Further, the descriptive and geographic terms in the trademark laden at-issue domain name suggests Complainant’s service related business as well as a local where Complainant may do business –the Salt Lake neighborhood in Kolkata, India. The terms thus add to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) that Respondent’s <dellservicekolkatasaltlake.com> domain name is confusingly similar to Complainant’s DELL trademark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “mandip / dell service” and the record contains no evidence that otherwise tends to prove that Respondent is commonly known by <dellservicekolkatasaltlake.com>. The Panel therefore concludes that Respondent is not commonly known by the <dellservicekolkatasaltlake.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent now holds the <dellservicekolkatasaltlake.com> domain name inactively. Holding the domain name inactively is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). Likewise, Respondent’s past use of the at-issue domain name to pass itself off as Complainant and offer services similar to those services offered by Complainant, is not indicative of a use of the domain name which demonstrates Respondent’s rights or legitimate interests per Policy ¶¶ 4(c)(i), or 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent registered and used the <dellservicekolkatasaltlake.com> domain name to pass itself off as Complainant and offer services similar to those offered by Complainant. Respondent’s use of the confusingly similar domain name so that Respondent may pass itself off as Complainant and trade upon Complainant’s goodwill for commercial gain demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (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, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Second, Respondent’s inactively holding the <dellservicekolkatasaltlake.com> domain name, as alleged by Complainant, may also demonstrate Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Finally, Respondent registered the <dellservicekolkatasaltlake.com> domain name knowing that Complainant had trademark rights in the DELL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s DELL trademark and from Respondent’s use of the domain name and to pass itself off as Complainant. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <dellservicekolkatasaltlake.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellservicekolkatasaltlake.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 18, 2019
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