Dell Inc. v. Stephen Dingwall / Creative IT / Creative IT (UK) Ltd / Printing
Claim Number: FA1804001781422
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Stephen Dingwall / Creative IT / Creative IT (UK) Ltd / Printing (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alienwarelaptoprepair.com> and <delllaptopdatarecovery.com>, registered with GoDaddy.com, LLC; <alienwarerepair.london>, registered with Mesh Digital Limited; and <reparateur-ordinateur-dell.com>, registered with 1&1 Internet SE.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 12, 2018; the Forum received payment on April 12, 2018.
On April 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alienwarelaptoprepair.com> and <delllaptopdatarecovery.com> domain names are registered with GoDaddy.com, LLC. On April 13, 2018, Mesh Digital Limited confirmed by e-mail to the Forum that the <alienwarerepair.london> domain name is registered with Mesh Digital Limited. On April 16, 2018, 1&1 Internet SE confirmed by e-mail to the Forum that the <reparateur-ordinateur-dell.com> domain name is registered with 1&1 Internet SE, and that Respondent is the current registrant of the names. GoDaddy.com, LLC, Mesh Digital Limited, and 1&1 Internet SE have verified that Respondent is bound by the GoDaddy.com, LLC, Mesh Digital Limited, and 1&1 Internet SE registration agreements 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 April 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 8, 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@alienwarelaptoprepair.com, postmaster@alienwarerepair.london, postmaster@reparateur-ordinateur-dell.com, and postmaster@delllaptopdatarecovery.com. Also on April 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272) on October 25, 1994, and has rights in its ALIENWARE mark based upon its registration with the USPTO (e.g. Reg. No. 2,616,204) on September 10, 2002. Respondent’s Domain Names are identical or confusingly similar to Complainant’s marks, as they merely add generic terms and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. Respondent does not use the Domain Names in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s websites associated with the <alienwarelaptoprepair.com>, <alienwarerepair.london>, and <delllaptopdatarecovery.com> Domain Names feature the ALIENWARE mark and depictions of Complainant’s products. They also copy many of the design elements of Complainant’s web sites for its ALIENWARE products, including similar headers, fonts, and a similar black, white and gray color scheme. These sites show pictures of Complainant’s products and offer goods and/or services which compete with those offered by Complainant. The web sites resolving from the <alienwarelaptoprepair.com>, <alienwarerepair.london>, and <delllaptopdatarecovery.com> Domain Names all contain a “Contact Us” section, which Respondent uses to collect personal information about site visitors, from which he may then benefit commercially by abusing or selling that information to third parties. The <reparateur-ordinateur-dell.com> domain name currently does not resolve to a website that displays any content.
Further, Respondent is not commonly known by any of the Domain Names, nor has Complainant granted him a license or permission to use any of its marks.
Respondent registered and uses the Domain Names in bad faith. His copying of Complainant’s own logos and images on the web sites resolving from the Domain Names shows that he knew of Complainant’s marks prior to registering them. Respondent is using the Domain Names to attempt to attract, for commercial gain, Internet users to his web sites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of his sites. Respondent has also engaged in a pattern of bad faith registration and use of domain names as he owns six domain names containing Complainant’s trademarks, and owns at least thirty other domain names which incorporate other well-known marks
B. Respondent
Respondent did not submit a Response, but following the Forum’s service of the Complaint upon him Respondent sent two emails, one to the “postmaster” email addresses for the Domain Names saying that “you can have the disputed domains,” and the other to Complainant’s counsel saying that he attempted to transfer the Domain Names to Complainant but because of the pendency of this administrative proceeding he was not able to do so. These emails were sent from steven@creativeit.tv, which is not exactly the email address appearing in the WHOIS information for the Domain Names, but it does contain the “creativeit” element. From this and from the detailed references to the Domain Names and this administrative proceeding contained in the emails, the Panel is satisfied that the emails were in fact sent by Respondent. Since these emails do not meet any of the criteria set forth in Rule 5 for a response, they are not taken as a response.
Preliminary Issue: Multiple Domains
Paragraph 3(c) of 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 argues that all four Domain Names at issue here are controlled by the same person or entity. According to the WHOIS information furnished by Complainant at Complaint Annex H, the registrant of all four Domain Names is Steven Dingwall. Two of the Domain Names are registered to him at separate addresses in California, and the other two are registered to him at separate street addresses in London, UK, but the email addresses shown for all four names share the same domain, “@creativeit.net,” and the content of the web sites resolving from all of them but <reparateur-ordinateur-dell.com> feature similar design elements, and these three sites all advertise and offer the services of a firm called Creative IT. The fourth Domain Name at issue here, <reparateur-ordinateur-dell.com>, resolves to an inactive web site. See, Complaint Annex F. On this evidence the Panel finds that all four Domain Names are controlled by the same person or entity and will proceed as to all of them.
Respondent Consent to Transfer
The Forum was copied on email correspondence between Respondent and Complainant, and received additional correspondence from Respondent, and submitted these messages to the Panel. In both of these emails Respondent expressed a willingness to transfer the Domain Name to Complainant. See, e.g., email dated April 18, 2018 (“Hi you can have the domains”), and email dated April 23, 2018 addressed to Complainant’s counsel (“. . . we have settled with the agreement that I will relinquish the authorization codes and transfer the following domain names: alienwarelaptoprepair.com, alienwarerepair.london, reparateur-ordinateur-dell.com, and delllaptopdatarecovery.com,” and then explaining that he could not transfer them because the registrars had blocked his accounts). These messages appear to be authentic. The Panel is under no obligation to consider any of them, but as required by Policy ¶ 8(a), upon notice of the commencement of this proceeding, the registrars of the Domain Names placed holds on Respondent’s accounts. Respondent therefore cannot transfer the Domain Names while this proceeding is still pending.
Based upon the clear and unambiguous messages set forth in the emails, the Panel finds that Respondent consents to the transfer of these Domain Names to Complainant. Under these circumstances, where Respondent does not contest the transfer of the Domain Names but instead agrees to transfer them to Complainant, the Panel may forego the traditional UDRP analysis and order an immediate transfer of the Domain Name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (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 (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 (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”). This Panel elects to adopt this approach and will order the transfer of the Domain Names without a UDRP analysis.
Upon the offer of Respondent to transfer the Domain Names to Complainant, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienwarelaptoprepair.com>, <delllaptopdatarecovery.com>, <alienwarerepair.london>, and <reparateur-ordinateur-dell.com> Domain Names be TRANSFERRED to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: May 16, 2018
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