Dell Inc. v. Robert E. Lee & Stonewall Jackson
Claim Number: FA1803001779446
Complainant is Dell Inc. (“Complainant”), represented by Danae Robinson, Texas, USA. Respondent is Robert E. Lee & Stonewall Jackson (“Respondent”), represented by Guruvinder Singh, Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delloem.us>, registered with GoDaddy.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2018; the Forum received payment on March 28, 2018.
On March 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delloem.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2018 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@delloem.us. Also on March 30, 2018, 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 April 19, 2018.
On April 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
On April 24, 2018, Complainant’s timely additional submission was received.
On April 26, 2018, Respondent’s timely additional submission was received.
All submissions were considered by the Panel.
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 to the usTLD Dispute Resolution Policy (“Rules”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Complainant has rights in the DELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,616,571, registered Oct. 9, 1990). Respondent’s <delloem.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the DELL mark in its entirety, tacking on the generic acronym “OEM” along with the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <delloem.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to the URL <delloem.jimdo.com>, which prominently displays the DELL mark at the top of its homepage along with the “oem” abbreviation, where it purports to offer competing products or services. The website appears to be under construction, as only one product is listed under the “Shop” tab, Respondent appears to prepare the domain to compete with Complainant under the DELL mark. Further, Respondent appears to phish for user information, as users can enter in their personal information under the “Contact” portion of the webpage.
Respondent registered and uses the <delloem.us> domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Further, it is clear that Respondent knew of Complainant’s famous DELL mark based on Respondent’s registration of the disputed domain name which couples the DELL mark with the term “OEM,” a business model and type of service offering for which Complainant is well-known, and due to the competing products and services on the resolving webpage. Finally, Respondent clearly registered the domain name using false and fictitious contact information.
B. Respondent
Respondent does have rights and legitimate interests in the <delloem.us> domain name. Respondent uses the domain name to offer generic computer services to manage and help businesses with services like repair, upgrades and maintenance, under its registered business name, DELLOEM, INC. Respondent is in the process of gathering additional funds to begin its business and has not started offering services.
Respondent did not register or use the <delloem.us> domain name in bad faith. Respondent registered the domain name because it liked the domain name for its start-up computer repair, upgrade, and maintenance business, and does not intend to disrupt or trade off of Complainant’s mark. Further, the DELL name is used all across the United States and Canada as last names for many individuals, and Complainant cannot claim exclusive legal rights to the name.
C. Complaint’s Additional Submission
Respondent’s business entity registration does not confer any rights in Complainant’s famous mark DELL, nor any rights or legitimate interests in the domain name. Instead, it serves only to demonstrate that Respondent’s tradename may also infringe Complainant’s trademark rights.
Respondent admits that the domain name is passively held.
Complainant’s DELL marks were registered and had become famous long before Respondent registered its business entity with the state of Delaware.
Respondent’s passive holding of the domain name for over 6 months is evidence that the Respondent has no rights or legitimate interests in the domain name.
Respondent’s planned use of a domain name that incorporates Complainant’s DELL mark in its entirety in connection with a business that provides services that compete with Complainant’s computer repair and support services and offers such services for products manufactured by Complainant’s competitors is evidence that Respondent registered the domain name in bad faith and plans to use the domain name in bad faith.
D. Respondent’s Additional Submission
Generic computer services are not trademarked or owned by Complainant and can be offered in the free economy of our country. We registered the name: DELL OEM INC and we received a Business License to operate allowing us to do business as DELL OEM INC.
We have no intent or interest to disrupt Complainant’s business. We intend to compete in the legal and fair business environment. DELL is not invented by Complainant and its use is not limited by law. We registered after through checks with related government agencies and websites. We are DELL OEM INC. OEM in our name stands for OPERATIONS, ENGINEERING and MAINTENANCE.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <delloem.us> domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims rights in the DELL mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,616,571, registered Oct. 9, 1990). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the DELL mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <delloem.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the DELL mark in its entirety, tacking on the generic acronym “OEM” along with the ccTLD “.us.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel finds that the <delloem.us> domain name is confusingly similar to the DELL mark under Policy ¶4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent has no rights or legitimate interests in the <delloem.us> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS information identifies “Robert E. Lee & Stonewall Jackson / Robert E. Lee & Stonewall Jackson” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the DELL mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel finds that Respondent is not commonly known by the <delloem.us> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant while prominently displaying the DELL mark at the top of the resolving webpage. Using a confusingly similar domain name to pass itself off as a complainant and offer products or services which directly compete with a complainant generally fails to confer rights and legitimate interests in a domain name per Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which displays the title “Dell Oem, Inc.” and purports to offer “Software and Application Services for Home and Businesses.” The Panel finds that that Respondent uses the DELL mark on the webpage which offers competing services, failing to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that Respondent engages in a phishing scheme to obtain personal information from users. Phishing schemes can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides a screenshot of the “Contact” portion of the webpage, which contains boxes for users to enter their name, email, and a message. Complainant argues that Respondent gathers this information to sell to third-parties. The Panel agrees that Respondent attempts to phish for information and finds that this phishing scheme does not amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or to any legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). The Panel finds Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant argues that Respondent attempts to pass itself off as Complainant and has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain through the offering of competing products or services can evince bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted in the previous section, Complainant provides a screenshot of the resolving webpage, which displays the title “Dell Oem, Inc.” and purports to offer “Software and Application Services for Home and Businesses.” The Panel finds Respondent attempts to commercially benefit off Complainant’s mark through the offering of competing products or services in bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the DELL mark at the time of registering the <delloem.us> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). Complainant contends that it is clear that Respondent knew of Complainant’s famous DELL mark based on Respondent’s registration of the disputed domain name which couples the DELL mark with the term “OEM,” a business model and type of service offering for which Complainant is well-known, and due to the competing products and services on the resolving webpage. The Panel agrees with Complainant that Respondent did have actual knowledge of Complainant’s mark and finds that actual knowledge demonstrates bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
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 <delloem.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 3, 2018
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