Dell Inc. v. NERMIN YILDIRIM / Iceblue Bilisim Teknolojileri Group
Claim Number: FA1511001646401
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is NERMIN YILDIRIM / Iceblue Bilisim Teknolojileri Group (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellservis.com>, registered with FBS Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2015; the Forum received payment on November 10, 2015. The Complaint was received in both Turkish and English.
On November 17, 2015, FBS Inc. confirmed by e-mail to the Forum that the <dellservis.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS 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 November 20, 2015, the Forum served the Turkish language Complaint and all Annexes, including a Turkish Language Written Notice of the Complaint, setting a deadline of December 10, 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@dellservis.com. Also on November 20, 2015, the Turkish language 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 December 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant uses the DELL mark in connection with its business as a world leader in computers and computer related products and services. Complainant has rights in the DELL mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
2. Respondent’s disputed <dellservis.com> includes the entire DELL mark and merely adds the generic top-level domain (“gTLD”) “.com” and the generic term “servis” that is likely to be associated with Complainant’s goods and services. These differences are not sufficient to distinguish the disputed domain from the DELL mark.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized, licensed, or otherwise permitted to use Complainant’s marks, nor has Respondent been commonly known by the disputed domain name. Additionally, Respondent’s use of the disputed domain name, to deceive internet users into believing that it is affiliated with Complainant, to gather personal information, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Respondent has registered and is using the disputed domain name in bad faith. Respondent has demonstrated bad faith through using Complainant’s marks and copying color schemes and layout from Complainant’s websites to attempt to phish for user information. Respondent’s use of Complainant’s marks and offering of services and products similar to those of Complainant indicates that Respondent had knowledge of Complainant’s rights in the DELL mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous United States company engaged in its business as a world leader in computers and computer related products and services.
2. Complainant has rights in the DELL mark through registration of the mark with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
3. Respondent registered the disputed domain name on November 13, 2008.
4. Respondent has used the disputed domain name to deceive internet users into believing that it is affiliated with Complainant.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(e), 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 (Nat. Arb. 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant argues that it has rights in the DELL mark through registration of the mark with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Panels have found that evidence of registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Accordingly, the Panel finds that Complainant has rights in the DELL mark under Policy ¶4 (a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DELL trademark.
Complainant contends that Respondent’s disputed <dellservis.com> is confusingly similar to the DELL mark. Respondent’s domain name includes the entire DELL mark and adds the gTLD “.com” and the generic Turkish term “servis,” meaning service that is associated with Complainant’s goods and services. See Compl., at Attached Ex. E. Prior panels have routinely held that the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Similarly, adding generic terms to a mark has been found to not alleviate the similarity between a domain and the mark to which the generic term is attached. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel finds that the <dellservis.com> domain name is confusingly similar to the DELL mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous DELL trademark and to use it in its domain name, making only the addition of the generic word “servis”, thus implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant dealing with the service provided by Complainant in the provision of its goods and services;
(b) Respondent has then used the disputed domain name to deceive internet users into believing that it is affiliated with Complainant to gather personal information;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. To support this claim Complainant submits that Respondent has not been authorized, licensed, or otherwise permitted to use Complainant’s marks, nor has Respondent been commonly known by the disputed domain name. WHOIS information indicates that Respondent registered the disputed domain using the name “NERMIN YILDIRIM,” of the organization “Iceblue Bilisim TeknoloJileri Group,” neither or which resemble the disputed domain name. There does not appear to be any other information to indicate that Respondent has been commonly known by the disputed domain name. Panels have found a respondent to be not commonly known by a disputed domain based on WHOIS information and a lack of authorization or licensing arrangement from a complainant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel concludes that Respondent has not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(e) Complainant further contends that Respondent’s use of the disputed domain name, to deceive internet users into believing that it is affiliated with Complainant, to gather personal information, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website that uses Complainant’s color scheme and layout from Complainant’s <dell.com> domain. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. F. It has been previously held that attempting to pass off as a complainant to phish for personal information is not bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). This Panel finds that Respondent’s use of the disputed domain name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Secondly, Complainant argues that Respondent has demonstrated bad faith through using Complainant’s marks and copying color schemes and layout from Complainant’s websites to attempt to phish for user information. Respondent’s disputed domain name resolves to a website that is similar in appearance to the website at Complainants <dell.com> domain name. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. F. Complainant maintains that Respondent is using the “contact” pane on the disputed domain to acquire internet user information which Respondent will then sell. Panels have found bad faith where a respondent used a disputed domain to duplicate a complainant’s marks and logo to pass itself off as a complainant. See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As the Panel finds that Respondent is attempting to pass itself off as Complainant it finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that in light of Respondent’s use of the disputed domain to resolve to a website that closely imitates Complainant’s legitimate website, it is inconceivable that Respondent could have registered the <dellservis.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice are generally not seen as persuasive. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s DELL trademark and its use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellservis.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 22, 2015
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