Dell Inc. v. Rajneesh Gupta / Vouchagram India Private Limited
Claim Number: FA1806001792195
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Rajneesh Gupta / Vouchagram India Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellbacktocollege.com>, <dellbacktocollegeoffer.com>, <dellbacktoschooloffer.com>, <dellbacktoschooloffers.com>, <delldesktopinspironoffer.com>, <dellpce.com>, and <dellregionaloffer.com>, registered with Godaddy.Com, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2018; the Forum received payment on June 18, 2018.
On June 20, 2018, Godaddy.Com, Llc; confirmed by e-mail to the Forum that the <dellbacktocollege.com>, <dellbacktocollegeoffer.com>, <dellbacktoschooloffer.com>, <dellbacktoschooloffers.com>, <delldesktopinspironoffer.com>, <dellpce.com>, and <dellregionaloffer.com> domain names are registered with Godaddy.Com, Llc; and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@dellbacktocollege.com, postmaster@dellbacktocollegeoffer.com, postmaster@dellbacktoschooloffer.com, postmaster@dellbacktoschooloffers.com, postmaster@delldesktopinspironoffer.com, postmaster@dellpce.com, and postmaster@dellregionaloffer.com. Also on June 27, 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 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a world leader in computers, computer accessories, and other computer-related products and services. For several years, Complainant has been the world’s largest direct seller of computer systems. As a consequence its marketing and sales success, Complainant and its DELL marks have become famous in the United States and many other countries. Complainant has rights in the (1) DELL and (2) INSPIRON marks based upon its registration of the marks in the United States in, respectively, 1994 and 1999. The marks are registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain names are are confusingly similar to Complainant’s marks as they incorporates the entire DELL mark in six domain names, and the INSPIRON mark in one. Additionally, the disputed domain names adds a generic phrase (“backtocollege,” “backtocollegeoffer,” “backtoschooloffer,” ”backtoschoolsoffers,” “desktop,” “offer,” “pce,” and “regionaloffer”) and a “.com” generic top-level domain (“gTLD”) to each of the domain names. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not authorized or licensed to use Complainant’s DELL or INSPIRON marks in any manner. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent passively holds the <dellbacktocollege.com> domain name, and uses the other six to pass off as Complainant in order to collect internet users’ personal information. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith by using five of them to pass off as Complainant for commercial gain. Additionally, Respondent passively holds one of the disputed domain names, failing to make an active use. Respondent has registered multiple domain names that contain Complainant’s marks and Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registration of the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks DELL and INSPIRON and uses them to market computers and related services around the world. The marks are well known.
Complainant’s rights in its marks date back to at least 1994 and 1999, respectively.
The disputed domain names were registered between 2015 and 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Six of the disputed domain names resolve to web sites that display Complainant’s mark and logo and pass off as Complainant in order to collect internet users’ personal information. One of the disputed domain names is not being used.
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.”).
The disputed domain names <dellbacktocollege.com>, <dellbacktocollegeoffer.com>,<dellbacktoschooloffer.com>, <dellbacktoschooloffers.com> , <dellpce.com> and <dellregionaloffer.com> are confusingly similar to Complainant’s DELL mark because they incorporate the mark in its entirety plus a generic phrase and a gTLD in the domain names. The addition of a generic phrase and a gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that these six disputed domain names are confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i).
Further, the <delldesktopinspironoffer.com> domain name is confusingly similar to Complainant’s marks because it combines two of Complainant’s trademarks along with a generic term and a gTLD. Combining two of a complainant’s marks qualifies as confusingly similar under a Policy ¶ 4(a)(i) analysis. See Textron Innovations Inc. v. Sheng Liang / Sarawina, FA 1622906 (Forum July 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) where Respondent’s <greenleetextron.com> domain name merely combined Complainant’s TEXTRON and GREENLEE marks and added the “.com” generic top-level domain suffix.). Therefore, the Panel find that the <delldesktopinspironoffer.com> domain name is confusingly similar to Complainant’s DELL and INSPIRON marks under Policy ¶ 4(a)(i).
Respondent is not authorized or permitted to use Complainant’s marks in any fashion. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record names “Rajneesh Gupta / Vouchagram India Private Limited” as the registrant of all of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent lacks rights and legitimate interests in the <dellbacktocollege.com> domain name because Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Respondent fails to make an active use of the domain name by passively holding it. Failing to make an active use of a domain name may support a finding that a respondent lacks rights and legitimate interests in a domain name under Policy ¶ 4(c)(i) and (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that the Respondent fails to use the <dellbacktocollege.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Further, Respondent fails to use the <dellbacktocollegeoffer.com>, <dellbacktoschooloffer.com>, <dellbacktoschooloffers.com>, <delldesktopinspironoffer.com>, <dellpce.com> and <dellregionaloffer.com> domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, as Respondent uses the disputed domain names to pass off as Complainant in an attempt to gather internet users’ personal information. Specifically, Complainant provides screenshots of the resolving webpages associated with the disputed domain names which show Respondent attempting to pass off as Complainant by promoting offers that require internet users to register using their personal information. Respondent promotes “offers” that are not endorsed or approved by Complainant, and requires consumers to register to avail themselves of these offers. As part of the registration process, Respondent requests that applicants submit personal information such as their name, phone number, email address, physical address, and a copy of a photo ID. Further, Respondent requests purchase information from the consumer, such as the retail store through which their purchase of a DELL product was made, the product type and model name, operating system, and a copy of their purchase invoice. Use of a domain name to pass off as Complainant in furtherance of a phishing scheme may not be considered a bona fide offering nor a legitimate fair use under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Therefore, the Panel finds that the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
For all the reasons given above, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent has engaged in a bad faith pattern of registration: Respondent has registered multiple domain names incorporating Complainant’s marks. A respondent who registers multiple domain names which incorporate complainant’s marks may be found to be acting in bad faith and registration under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Consequently, the Panel finds that Respondent has acted in a pattern of bad faith registration according to Policy ¶ 4(b)(ii).
Further, Respondent registered and uses the <dellbacktocollegeoffer.com>, <dellbacktoschooloffer.com>, <dellbacktoschooloffers.com>, <delldesktopinspironoffer.com>, <dellpce.com> and <dellregionaloffer.com> domain names in bad faith. Specifically, as already noted, Respondent is attempting to pass off as Complainant in order to commercially gain by fraudulently acquiring personal information from users. Use of a domain name to pass off as a complainant for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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 Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant’s mark to fraudulently induce transfer of credit and personal identification information). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The disputed domain name <dellbacktocollege.com> is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Finally, Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to Respondent’s registration of the disputed domain names. Complainant provides screenshots of the webpages associated with the disputed domain names which show Respondent prominently displaying Complainant’s DELL mark and its logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <dellbacktocollege.com>, <dellbacktocollegeoffer.com>, <dellbacktoschooloffer.com>, <dellbacktoschooloffers.com>, <delldesktopinspironoffer.com>, <dellpce.com>, and <dellregionaloffer.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 23, 2018
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