Dell Inc. v. Peter van Caspel / Zeroclient IT Services
Claim Number: FA1805001784597
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Peter van Caspel / Zeroclient IT Services (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellwyse.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 1, 2018; the Forum received payment May 1, 2018.
On May 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellwyse.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@dellwyse.org. Also on May 3, 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.
The Forum received a timely Response and determined it to be complete on May 3, 2018.
On May 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Preliminary Issue: Consent to Transfer
Respondent consents to transfer the <dellwyse.org> domain name to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC., placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <dellwyse.org> 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 agreed to comply with Complainant’s request, and the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Alternatively, however, the Panel here decides that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
This Panel agrees with that holding and finds that the Policy is served here by evaluation of the case under the elements of the UDRP and finds as follows:
PARTIES’ CONTENTIONS
Complainant’s Allegations in this Proceeding:
Complainant, Dell Inc., is a world leader in computers, and other computer related products and services. Complainant acquired Wyse Technology Inc., a global leader in cloud client computing, in 2012. Complainant uses the DELL and WYSE marks to provide and market its products and services. Complainant claims rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”). (DELL- e.g., Reg. No. 1,616,571, registered Oct. 9, 1990); (WYSE- e.g., Reg. No. 1,461,695. registered Oct. 20, 1987). See Amend. Compl. Ex. C.
Respondent’s <dellwyse.org> domain name is confusingly similar to Complainant’s DELL and WYSE marks as it incorporates the marks in their entirety and adds the generic top-level domain (“gTLD”) “.org.”
Respondent does not have rights or legitimate interests in the <dellwyse.org> domain name. Respondent is not commonly known by the disputed domain name as the WHOIS information of record lists “Peter van Caspel / Zeroclient IT Services” as the registrant. Further, Complainant did not grant Respondent permission or license to use the DELL or WYSE marks for any purpose. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent uses the <dellwyse.org> domain name to pass off as Complainant and the site resolves to a website that features Complainant’s marks and offers services that compete directly with Complainant’s business.
Respondent registered and is using the <dellwyse.org> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. In addition, Respondent registered the disputed domain name using a privacy service. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DELL and WYSE marks.
Respondent’s Allegations in this Proceeding:
The Panel notes that Respondent registered the domain name on February 25, 2018. Respondent provided a brief response, which stated in relevant part: “I hereby agree to transferring the domain <dellwyse.org>.” See Resp.
Complainant established rights and legitimate interests in both the DELL and WYSE marks.
Respondent has no such rights to or legitimate interests in the DELL or WYSE marks or the disputed domain name containing both of them.
Respondent registered a domain name containing in its entirety the protected marks of Complainant in a domain name that is confusingly similar to the marks.
Respondent would have had to know of Complainant’s interests in the two marks and as a result of such knowledge, the Panel finds that Respondent registered the disputed domain name in bad faith.
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 Complainant to 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.
Identical or Confusingly Similar:
Complainant has shown rights in the DELL and WYSE marks based upon its registration with the USPTO (DELL- e.g., Reg. No. 1,616,571, registered Oct. 9, 1990); (WYSE- e.g., Reg. No. 1,461,695, registered Oct. 20, 1987). See Amend. Compl. Ex. C. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the DELL and WYSE marks pursuant to Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <dellwyse.org> domain name is confusingly similar to the DELL and WYSE marks as it contains both marks in their entirety and merely adds the gTLD “.org.” The addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar to a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <dellwyse.org> domain name is confusingly similar to the DELL and WYSE marks.
Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing two of Complainant’s protected marks and the domain name is confusingly similar to the marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 … 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 alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its DELL and WYSE marks in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <dellwyse.org> domain name shows “Peter van Caspel / Zeroclient IT Services” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <dellwyse.org> domain name.
Further, Complainant argues, Respondent is not using the <dellwyse.org> domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Complainant contends that Respondent is attempting to create the impression of association with Complainant to offer products and services that compete directly with Complainant’s business. Attempts to pass off as a complainant to divert Internet users to a website that offers products and services that compete with the complainant is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Here, Complainant asserts that screenshots of the <dellwyse.org> website indicate that Respondent is using the <dellwyse.org> domain name to offer services related to Complainant’s software products. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent used the domain name to resolve to a competing website and holds that Respondent failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the <dellwyse.org> domain name in bad faith because Respondent attempts to create confusion between the domain name and Complainant’s mark for commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein for commercial gain may evidence bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). As mentioned previously, Complainant contends that screenshots of the <dellwyse.org> website indicate that the site features Complainant’s DELL and WYSE logos and purports to offer services that directly compete with Complainant’s computer software business. See Amend. Compl. Ex. C. The Panel finds that Respondent used the domain name to create confusion with Complainant’s marks and holds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may evidence bad faith. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii)); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Complainant contends that Respondent had actual knowledge of Complainant’s rights in the DELL and WYSE marks when it registered the disputed domain name because Respondent used the resolving website to feature Complainant’s logos and to offer services related to Complainant’s software. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the DELL and WYSE marks when it registered the <dellwyse.org> domain name. The Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellwyse.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 21, 2018.
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