DECISION

 

Dell Inc. v. Anka Hynes

Claim Number: FA1905001843988

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA.  Respondent is Anka Hynes (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellemc.us>, registered with Key-Systems GmbH.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 20, 2019; the Forum received payment on May 20, 2019.

 

On May 21, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <dellemc.us> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name.  Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On June 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 2019 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@dellemc.us.  Also on June 11, 2019, 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 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 to the usTLD Dispute Resolution Policy (“Rules”).  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    In 2016 Complainant acquired EMC Corporation and now operates under the name Dell EMC. Complainant is a world leader in computers, computer accessories, data storage, information security, virtualization, analytics, cloud computing, and related products and services. Complainant has rights in the DELL EMC, DELL, and EMC marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. DELL EMC - Reg. No. 5,551,479 registered Aug. 28, 2018; DELL - Reg. No. 1,860,272, registered Oct 25, 1994; EMC - Reg. No. 2,142,157, registered Mar. 10, 1998). See Compl. Ex. C. Respondent’s <dellemc.us> domain name is identical or confusingly similar to Complainant’s DELL EMC mark and adds the “.us” country code top-level domain (“ccTLD”).

 

2.    Respondent has no rights or legitimate interests in the <dellemc.us> domain name as Complainant is not commonly known by the disputed domain name nor has Complainant licensed Respondent to use the DELL EMC mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name. Instead, the disputed domain name resolves to a parked page featuring links that lead to third-party advertisers unaffiliated with Complainant. Respondent may also intend to use the disputed domain name for a website which is highly likely to cause consumers to mistakenly believe that Respondent is affiliated with Complainant.

 

3.    Respondent registered and is using the <dellemc.us> domain name in bad faith as Respondent has offered to sell the disputed domain name. Respondent also uses the disputed domain name in connection with a pay-per-click parking page. Respondent had knowledge of Complainant’s rights in the DELL EMC mark as evidenced by the fame of the mark and Respondent’s registration of a domain name consisting of precisely the combination of Complainant’s DELL and EMC marks to form Complainant’s DELL EMC mark. 

 

B.   Respondent

1.    Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <dellemc.us> domain name is confusingly similar to Complainant’s DELL EMC, DELL and EMC marks.

 

2.    Respondent does not have any rights or legitimate interests in the <dellemc.us> domain name.

 

3.    Respondent registered or used the <dellemc.us> domain name in bad faith.

 

DISCUSSION

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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the DELL EMC, DELL, and EMC marks through registrations with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with copy of its registrations for the DELL EMC, DELL, and EMC marks (e.g. DELL EMC - Reg. No. 5,551,479 registered Aug. 28, 2018; DELL - Reg. No. 1,860,272, registered Oct 25, 1994; EMC - Reg. No. 2,142,157, registered Mar. 10, 1998). See Compl. Ex. C. Therefore, the Panel agrees and finds that Complainant has rights in the DELL EMC, DELL, and EMC marks per Policy ¶ 4(a)(i).

 

Complainant further argues that Respondent’s <dellemc.us> domain name is identical or confusingly similar to Complainant’s DELL EMC mark as Respondent merely adds the ccTLD “.us.” The addition of a top-level domain name or ccTLD is insufficient to distinguish a disputed domain name from a mark. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Therefore, the Panel finds that Respondent’s <dellemc.us> domain name is identical or confusingly similar to Complainant’s DELL EMC mark per 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 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”).

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Complainant argues that Respondent has no rights or legitimate interests in the <dellemc.us> domain name as Complainant is not commonly known by the disputed domain name nor has Complainant licensed Respondent to use the DELL EMC mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Furthermore, a respondent may lack rights or legitimate interests in a disputed domain name if complainant does not license or authorize the respondent to use the mark or the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). There is nothing in the record to suggest that Complainant has authorized or licensed Respondent to use Complainant’s DELL EMC mark. Furthermore, the WHOIS information identifies “Anka Hynes” as Respondent. Therefore, the Panel agrees and finds that Respondent lacks rights or legitimate interests in the <dellemc.us> domain name per Policy ¶ 4(c)(iii).

 

 

Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use of the <dellemc.us> domain name. Instead, the <dellemc.us> domain name resolves to a parked page featuring links that lead to third-party advertisers unaffiliated with Complainant. Use of a domain name to link to third-party advertisers is not a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(ii) or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel with a screenshot of the resolving webpage of the disputed domain name that displays links to advertisers related and unrelated to Complainant’s services. See Compl. Ex. D. Therefore, the Panel agrees and finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name per Policy ¶¶ 4(c)(ii) or (iv).

 

Complainant additionally contends that Respondent may intend to use the dellemc.us> domain name for a website which is highly likely to cause consumers to mistakenly believe that Respondent is affiliated with Complainant. Use of a domain name to divert internet traffic and confuse internet users into thinking some sort of affiliation exists is not a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(ii) or (iv). 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).”). Complainant argues Respondent’s use of the DELL EMC mark would cause this confusion among consumers. The Panel notes, however, that Complainant provides no further evidence in support of this assertion. The Panel agrees and finds that Respondent fails to make a bona fide offering of goods or service or legitimate noncommercial fair use of the disputed domain name per Policy ¶¶ 4(c)(ii) or (iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered and is using the <dellemc.us> domain name in bad faith as Respondent has offered to sell the domain name. Offers to sell a domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, Case No. FA1812001821386 (Forum Jan. 10, 2019) (“Offering to sell a confusingly similar domain name, or registering a domain name for the primary purpose of selling it, shows bad faith under Policy ¶ 4(b)(i)”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a link with the message “Buy this domain; The domain dellemc.us may be for sale by its owner.” See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i). 

 

Complainant asserts that Respondent registered and uses the <dellemc.us> domain name in bad faith as Respondent displays pay-per-click links on the resolving webpage. Using a disputed domain name to host advertisements to third parties can demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel recalls Complainant has provided the Panel with a screenshot of the resolving webpage of the disputed domain name which displays a parked webpage featuring links to advertisers related and unrelated to Complainant’s services. See Compl. Ex. D. Therefore the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent’s passive holding of the <dellemc.us> domain name is also evidence of bad faith. Making no use of a domain name beyond having a parked page maybe evidence of bad faith per Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel recalls Complainant has provided the Panel with a screenshot of the resolving webpage of the disputed domain name which displays a parked webpage featuring links to advertisers related and unrelated to Complainant’s services. See Compl. Ex. D. Therefore, the Panel agrees and finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Lastly, Complainant contends Respondent knew of Complainant’s rights in the DELL EMC, DELL, and EMC marks based on the fame of the mark and Respondent’s combination of the marks to create the <dellemc.us> domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find 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.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Complainant given the fame of the marks and Respondent’s registration of a domain name consisting of precisely the combination of Complainant’s DELL and EMC marks, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration, thus constituting bad faith. The Panel agrees and finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dellemc.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  July 18, 2019