Dell Inc. v. Namespro.ca PrivateWHOIS
Claim Number: FA1508001632071
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs of Pirkey Barber PLLC, Texas, USA. Respondent is Namespro.ca PrivateWHOIS (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-business.com>, registered with Namespro Solutions Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 7, 2015, Namespro Solutions Inc. confirmed by e-mail to the Forum that the <dell-business.com> domain name is registered with Namespro Solutions Inc. and that Respondent is the current registrant of the name. Namespro Solutions Inc. has verified that Respondent is bound by the Namespro Solutions Inc. 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 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2015 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@dell-business.com. Also on August 7, 2015, 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.
A timely Response was received and determined to be complete on August 10, 2015.
On August 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant owns the DELL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994) and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 357,503, registered May 11, 2004). Complainant uses the DELL mark in connection with its computers, computer parts and accessories, computer service and support, and other computer-related products and services. The <dell-business.com> domain name is confusingly similar to the DELL mark. The domain name incorporates the mark in full, inserts a hyphen, adds the generic word “business,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as Respondent is not permitted to use Complainant’s DELL mark. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that copies the look and feel of Complainant’s website and appears to be associated with malicious software. See Compl., at Attached Ex. D. Additionally, Respondent uses the disputed domain name to attempt to gather Internet users’ personal information. Id.
3. Respondent has engaged in bad faith registration and use of the <dell-business.com> domain name pursuant to Policy ¶ 4(a)(iii). Respondent is engaged in a phishing scheme that seeks to gather Internet users’ personal information. Additionally, Respondent uses the disputed domain name to attempt to infect customers’ computers with malicious software. Further, Respondent registered the disputed domain name with knowledge of the DELL business and its rights in the mark.
B. Respondent’s Contentions
1. Respondent contends that it registered the domain name as part of a phishing exercise for a client, and claims in has no reason or purpose to maintain use or registration of the domain name. Respondent states that it will disable all DNS entries and records of the domain name and stop using it immediately. Respondent asserts that it can also transfer it back to the registrar.
Respondent consents to transfer the <dell-business.com> domain name to the Registrar. However, after the initiation of this proceeding, Namespro Solutions Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to the Registrar, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <dell-business.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). Therefore, the Panel shall forego the traditional UDRP analysis and order an immediate transfer.
Having determined that the Respondent has consented to the relief requested, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-business.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 25, 2015
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