Dell Inc. v. GOLDENWEB SOLUTION
Claim Number: FA1809001806370
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is GOLDENWEB SOLUTION (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptoprepairandservicecentrekolkata.com>, registered with Crazy Domains FZ-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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2018; the Forum received payment on September 17, 2018.
On September 19, 2018, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <delllaptoprepairandservicecentrekolkata.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 September 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@delllaptoprepairandservicecentrekolkata.com. Also on September 20, 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 October 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 is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark through its trademark registrations 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 <delllaptoprepairandservicecentrekolkata.com> domain name is identical or confusingly similar to Complainant’s DELL mark as it adds the generic phrase “laptop repair and service center,” the geographic term “Kolkata,” and a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <delllaptoprepairandservicecentrekolkata.com> domain name. Respondent is not authorized or licensed to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant and offer competing, computer support services. Respondent also attempts to obtain users’ personal information through a phishing scheme.
iii) Respondent registered and uses the <delllaptoprepairandservicecentrekolkata.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it passes off as Complainant in order to offer competing repair and maintenance services for Complainant’s products. Respondent also attempts to obtain users’ personal information through a phishing scheme. Furthermore, Respondent registered the disputed domain name with a privacy service to hide its identity. Finally, Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a response.
1. The <delllaptoprepairandservicecentrekolkata.com> domain name was registered on August 19, 2018.
2. Complainant has established its rights through its USPTO registration for the DELL mark (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
3. The disputed domain name’s websites prominently displays the DELL mark in connection to computer maintenance and repair services for Complainant’s products.
4. The disputed domain name’s website features “Contact Us” webpage which encourages consumers to provide information that Respondent sells to third parties.
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 claims to have rights in the DELL mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). 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. Therefore, the Panel finds Complainant has sufficiently established rights in the DELL mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <delllaptoprepairandservicecentrekolkata.com> domain name is identical or confusingly similar to Complainant’s DELL mark. Specifically, Complainant argues Respondent merely adds a generic phrase, a geographic term, and a gTLD to the DELL mark. Adding a generic term, geographic term, or a gTLD to a complainant’s mark may fail to negate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Complainant argues Respondent merely adds the he generic phrase “laptop repair and service center,” the geographic term “Kolkata,” and a “.com” gTLD to the fully incorporated DELL mark. Consequently, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <delllaptoprepairandservicecentrekolkata.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the DELL mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 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 of the 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).”). The WHOIS information identifies the registrant of the disputed domain name as “GOLDENWEB SOLUTION,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <delllaptoprepairandservicecentrekolkata.com> domain name.
Next, Complainant alleges Respondent fails to use the <delllaptoprepairandservicecentrekolkata.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant argues Respondent uses the disputed domain name to pass off as Complainant and offer competing, computer support services. Use of a disputed domain name to pass off and sell competing goods or services may not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant provides screenshots of the disputed domain name’s websites which prominently displays the DELL mark in connection to computer maintenance and repair services for Complainant’s products. See Compl. Ex. G. Furthermore, Complainant provides a printout of the “Contact Us” webpage from the disputed domain name. See Compl. Ex. H. Therefore, the Panel finds Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant contends Respondent is using the <delllaptoprepairandservicecentrekolkata.com> domain name to obtain users’ personal information through a phishing scheme. Using a disputed domain name to obtain personal or financial information is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Complainant provides a copy of the “Contact Us” webpage, which Complainant argues encourages consumers to provide information that Respondent sells to third parties. See Compl. Ex. G. As such, the Panel finds Respondent engages in phishing, thus demonstrating a lack of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges Respondent registered and uses the <delllaptoprepairandservicecentrekolkata.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to pass off as Complainant to offer competing services for Complainant’s products. Use of a disputed domain name to pass off and selling competing goods or services may demonstrate bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also 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.”). The Panel recalls that Complainant provides screenshots of the disputed domain name’s websites which prominently displays the DELL mark in connection to computer maintenance and repair services for Complainant’s products. See Compl. Ex. G. Furthermore, Complainant provides a printout of the “Contact Us” webpage, which encourages users to submit personal information to Respondent. See Compl. Ex. H. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Additionally, Complainant contends Respondent is using the <delllaptoprepairandservicecentrekolkata.com> domain name to conduct a phishing scheme. Use of a disputed domain name to phish for users’ personal information may demonstrate bad faith under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel again recalls that Complainant provides a copy of the “Contact Us” webpage, which Complainant argues encourages consumers to provide information that Respondent sells to third parties. See Compl. Ex. G. Consequently, the Panel finds Respondent engages in phishing, thus establishing bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends that in light of the fame and notoriety of Complainant's DELL mark, it is inconceivable that Respondent could have registered the <delllaptoprepairandservicecentrekolkata.com> domain name without actual knowledge of Complainant's rights in the mark. Complainant further asserts that Respondent’s use of the domain name to pass off as Complainant to sell competing services and/or conduct a phishing scheme indicates it had actual knowledge of Complainant’s rights.
The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel infers, due to the fame of the Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delllaptoprepairandservicecentrekolkata.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 15, 2018
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