Dell Inc. v. Sagar Basak
Claim Number: FA1806001790258
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Sagar Basak (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellchallenge.org>, registered with EnCirca, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2018; the Forum received payment on June 5, 2018.
On June 13, 2018, EnCirca, Inc. confirmed by e-mail to the Forum that the <dellchallenge.org> domain name is registered with EnCirca, Inc. and that Respondent is the current registrant of the name. EnCirca, Inc. has verified that Respondent is bound by the EnCirca, 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 June 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@dellchallenge.org. Also on June 19, 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 July 11, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant uses its DELL mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Respondent’s <dellchallenge.org> domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “challenge” and the “.org” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the <dellchallenge.org> domain name. Complainant has not licensed or otherwise authorized Respondent to use its DELL mark in any fashion. Further, Respondent is not using the <dellchallenge.org> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to pass off as Complainant and resolve to a website that promotes certain technology products and services. Respondent also uses the site to phish for Internet users’ personal information through a “Contact” form.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Further, Respondent used the disputed domain name to phish for Internet users’ personal information. Finally, Respondent registered the <dellchallenge.org> domain name with full knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent did not submit a Response.
1. Respondent registered the <dellchallenge.org> domain name on December 30, 2017.
2. Complainant has established rights in the DELL mark through registration with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
3. The <dellchallenge.org> website features a modified version of Complainant’s logo along with information regarding Complainant’s competitors.
4. The <dellchallenge.org> website features a “Contact” page that prompts Internet users to provide a name and email address.
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 (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 contends it has rights in the DELL mark through registration with the USPTO. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the DELL mark (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. As such, the Panel holds that Complainant established rights in the DELL mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <dellchallenge.org> domain name is confusingly similar to Complainant’s mark because it merely appends the generic term “challenge” and the “gTLD “.org.” The addition of a generic term and gTLD do not sufficiently differentiate a disputed domain name for purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Respondent’s <dellchallenge.org> domain name is confusingly similar to Complainant’s mark.
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 alleges that Respondent does not have rights or legitimate interests in the <dellchallenge.org> domain name. Specifically, Complainant argues Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its DELL mark 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 per Policy ¶ 4(c)(ii). 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). Additionally, 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 <dellchallenge.org> domain name lists “Sagar Basak” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <dellchallenge.org> domain name.
Further, Complainant alleges that Respondent is using the <dellchallenge.org> domain to pass off as Complainant and resolve to a website that promotes certain technology products and services, presumably for Respondent’s commercial gain. Use of a domain name to pass off as a complainant for commercial benefit may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use under 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).”). Complainant provided screenshots of the <dellchallenge.org> website, which indicate that the site features a modified version of Complainant’s logo along with information regarding Complainant’s competitors. See Compl. Ex. E. Therefore, the Panel finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Next, Complainant argues that Respondent uses the site gather Internet users’ personal information through a “Contact” form. Use of a domain name to phish for Internet users’ personal information may not be considered a bona fide offering or fair use under the Policy. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 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 provided a screenshot of the <dellchallenge.org> website, which indicates that the site features a “Contact” page that prompts Internet users to provide a name and email address. See Compl. Ex. F. Complainant alleges that Respondent likely profits by selling this information to third parties. See Amend. Compl. p. 5. Therefore, the Panel holds that Respondent failed to use the domain name for a permitted use under Policy ¶¶ 4(c)(i) or (iii).
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith by using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith per Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). As previously mentioned, Complainant asserts that Respondent uses the disputed domain name to pass off as Complainant and promote information related to Complainant’s competitors, presumably for commercial gain. See Compl. Ex. E. Therefore, the Panel holds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent used the domain name to phish for Internet users’ personal information. Use of a domain name to phish for users’ information may be evidence of bad faith per Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). Complainant alleges that the <dellchallenge.org> website features a “Contact” page that lures Internet users into providing personal information that Respondent likely sells to third parties. See Compl. Ex. F. As such, the Panel finds that Respondent attempted to phish for users’ information and holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant contends that Respondent registered the <dellchallenge.org> domain name with full knowledge of Complainant’s rights in the DELL mark due to the fame of the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of 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). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s DELL mark has created significant good will and consumer recognition around the world is recognized as a top brand by Brand Finance. See Compl. Ex. B. Further, Complainant contends that Respondent’s use of a modified version of Complainant’s logo on the <dellchallenge.org> website is indicative of Respondent’s actual knowledge of Complainant’s rights. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights when the <dellchallenge.org> domain name was registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellchallenge.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 17, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page