Dell Inc. v. Nagendran Kathivel / GBS Systems & Services Pvt Ltd / Nagendran Kathirvel / sarathy / gbs
Claim Number: FA1512001650842
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Nagendran Kathivel / GBS Systems & Services Pvt Ltd / Nagendran Kathirvel / sarathy / gbs (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellaptopserviceindia.com>, <delldealersinchennai.com>, <dellexclusive.com>, <delllaptop-service.com>, <delllaptopadapterprice.com>, <delllaptopbatteryprice.com>, <delllaptopservicechennai.com>, <delllaptopshowroominchennai.com>, <delllaptopsparesindia.com>, <dellshowroomin-chennai.com>, <dellstoreinchennai.com>, and <delllaptopserviceindia.com>, registered with Good Domain Registry Pvt Ltd. and with Godaddy.Com, Llc, Gooddomainregistry.Com.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2015; the Forum received payment on December 3, 2015.
On December 4, 2015, Godaddy.Com, Llc, Gooddomainregistry.Com confirmed by e-mail to the Forum that the <dellaptopserviceindia.com>, <delldealersinchennai.com>, <dellexclusive.com>, <delllaptopservicechennai.com>, <delllaptopshowroominchennai.com>, and <dellshowroomin-chennai.com>, domain names are registered with Godaddy.Com, Llc, Gooddomainregistry.Com and that Respondent is the current registrant of the names. Godaddy.Com, Llc, Gooddomainregistry.Com has verified that Respondent is bound by the Godaddy.Com, Llc, Gooddomainregistry.Com 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 December 4, 2015 and December 14, 2015, Good Domain Registry Pvt Ltd. confirmed by e-mail to the Forum that the <delllaptop-service.com>, <delllaptopadapterprice.com>, <delllaptopbatteryprice.com>, <delllaptopsparesindia.com>, <dellstoreinchennai.com>, and <delllaptopserviceindia.com> domain names are registered with Good Domain Registry Pvt Ltd. and that Respondent is the current registrant of the names. Good Domain Registry Pvt Ltd. has verified that Respondent is bound by the Good Domain Registry Pvt Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On December 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2016 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@dellaptopserviceindia.com, postmaster@delldealersinchennai.com, postmaster@dellexclusive.com, postmaster@delllaptop-service.com, postmaster@delllaptopadapterprice.com, postmaster@delllaptopbatteryprice.com, postmaster@delllaptopservicechennai.com, postmaster@delllaptopshowroominchennai.com, postmaster@delllaptopsparesindia.com, postmaster@dellshowroomin-chennai.com, postmaster@dellstoreinchennai.com, postmaster@delllaptopserviceindia.com. Also on December 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered on October 25, 1994). Respondent’s domain names are confusingly similar to the DELL mark because they each contain the mark, along with inconsequential changes, such as hyphens, generic or geographic words, and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the disputed domain names because Respondent is not authorized to use the DELL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used to engage in activity such as competitive sale, unauthorized sale, attempting to pass off as Complainant, and phishing.
iii) Respondent has demonstrated a pattern of bad faith registration of domains through registration of the twelve domains at issue here. Respondent uses the domains in bad faith because the resolving websites are used to engage in activity such as competitive sale, unauthorized sale, attempting to pass off as Complainant, and phishing. Respondent registered the domains in bad faith because it did so with actual knowledge of Complainant’s rights in the DELL, which is demonstrated by Respondent’s use.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the domain names were created on the following dates:
<dellaptopserviceindia.com> February 6, 2011
<delllaptopservicechennai.com> February 6, 2011
<dellshowroomin-chennai.com> February 15, 2011
<delllaptopshowroominchennai.com> February 15, 2011
<delllaptopserviceindia.com> December 1, 2011
<delllaptop-service.com> December 1, 2011
<delllaptopbatteryprice.com> May 8, 2012
<delllaptopsparesindia.com> April 15, 2013
<delllaptopadapterprice.com> April 24, 2014
<dellexclusive.com> November 2, 2014
<delldealersinchennai.com> November 19, 2014
<dellstoreinchennai.com> February 4, 2015
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the registrants of each domain at issue are the same person on the basis that the registrant’s e-mail address for each domain name is the same: nagendran.gbs@gmail.com. Complainant contends that along with this, the differences in the provided WHOIS information for the domains differs in only minor respects, such as through abbreviations, spacing and commas but contain largely similar information in describing the location of the registrant. The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
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 (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.”).
Complainant claims it has rights in the DELL mark through its registration with the USPTO (e.g., Reg. No. 1,860,272, registered on October 25, 1994). Accordingly, the Panel finds that Complainant has rights in the DELL mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant alleges that Respondent’s disputed domain names are confusingly similar to the DELL mark because they each contain the mark, along with changes, such as hyphens, additional words, and the gTLD “.com.” Complainant argues that the terms “adapter,” “battery,” “dealers,” “exclusive,” “in,” “laptop,” “price,” “service,” “showroom,” and “spares” are all generic, and therefore, inconsequential. Complainant also urges that the terms “India” and “Chennai” are geographic terms, and, therefore, also inconsequential. The Panel agrees with Complainant’s characterization of the added terms, and thus the Panel finds that Respondent’s domain names are confusingly similar to the DELL mark under Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also nnomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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.”).
Complainant urges that Respondent is not authorized to use the DELL mark and, therefore, is not commonly known by the disputed domain names. The Panel notes that the WHOIS for the various domains includes “Nagendran Kathivel,” “Nagendran Kathirvel,” and “sarathy,” as Registrants. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used to engage in activity such as competitive sale, unauthorized sale, and attempting to pass off as Complainant. Complainant has provided screenshots of the resolving websites purporting to show that domains display the DELL mark; copy the look and feel of Complainant’s own website; display images of DELL branded products for sale; promote the products of competitors of Complainant, such as HP, Acer, and Lenovo; or otherwise attempt to pass off as Complainant by displaying information about how to “Contact a Dell expert.” As the Panel finds that Complainant’s evidence shows all of the uses claimed by Complainant, the Panel finds that Respondent fails to use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 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.”); see also 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).
Complainant further contends that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used to engage in phishing. Complainant claims to offer by submitting printouts of “Enquiry Forms” from the various websites, in which Internet users are invited to provide Respondent with their names, e-mail addresses, and phone numbers. The Panel notes, however, that there is no provided Exhibit labeled as Exhibit I, and no Exhibit provided which appears to correspond with Complainant’s description of Exhibit I. As such, the Panel declines to agree with Complainant.
Complainant alleges that Respondent has demonstrated a pattern of bad faith registration of domains through registration of the twelve domains at issue here. Accordingly, the Panel finds that Respondent has a pattern of bad faith registration under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark).
Complainant contends that Respondent uses the disputed domain names for the purpose of disrupting Complainant’s business operations by using them to engage in activity such as competitive sale, unauthorized sale, and attempting to pass off as Complainant. Complainant has provided screenshots of the resolving websites purporting to show that domains display the DELL mark; copy the look and feel of Complainant’s own website; display images of DELL branded products for sale; promote the products of competitors of Complainant, such as HP, Acer, and Lenovo; or otherwise attempt to pass off as Complainant by displaying information about how to “Contact a Dell expert.” The Panel finds this evidence sufficient to show the uses claimed by Complainant, and thus the Panel finds that Respondent uses the domain names in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant claims that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the DELL mark. Complainant urges that this actual knowledge is demonstrated by the manner in which Respondent uses the domains, described above. The Panel infers from the use manner of the disputed domain name by Respondent and the fame of Complainant's mark that Respondent had actual knowledge of Complainant’s rights in the DELL mark at the times at which the disputed domain names were registered, the Panel finds that Respondent registered the domains in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Complainant further contends that Respondent engages in bad faith use because the resolving websites are used to engage in phishing. Complainant claims to offer, in Exhibit I, printouts of “Enquiry Forms” from the various websites, in which Internet users are invited to provide Respondent with their names, e-mail addresses, and phone numbers. The Panel notes, however, that there is no provided Exhibit labeled as Exhibit I, and no Exhibit provided which appears to correspond with Complainant’s description of Exhibit I. As such, this Panel declines to agree with Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellaptopserviceindia.com>, <delldealersinchennai.com>, <dellexclusive.com>, <delllaptop-service.com>, <delllaptopadapterprice.com>, <delllaptopbatteryprice.com>, <delllaptopservicechennai.com>, <delllaptopshowroominchennai.com>, <delllaptopsparesindia.com>, <dellshowroomin-chennai.com>, <dellstoreinchennai.com>, and <delllaptopserviceindia.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 19, 2016
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