Dell Inc. v. Karl Noakes
Claim Number: FA1909001862074
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Karl Noakes (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msmichaelsdell.org>, registered with Network Solutions, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2019; the Forum received payment on September 13, 2019.
On September 16, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <msmichaelsdell.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@msmichaelsdell.org. Also on September 17, 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.
A timely Response was received and determined to be complete on September 27, 2019.
On September 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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
Complainant contends as follows:
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant’s founder, Michael S. Dell, and his wife, Susan Dell, are co-founders of the Michael & Susan Dell Foundation, a charitable foundation dedicated to transforming the lives of children living in urban poverty.
Complainant has rights in the DELL mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <msmichaelsdell.org> domain name is confusingly similar to Complainant’s DELL mark as it incorporates the mark in its entirety, along with the generic term “ms,” the name of Complainant’s founder, Michael S. Dell, and a “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <msmichaelsdell.org> domain name. Respondent is not licensed or permitted to use Complainant’s DELL mark nor commonly known by the at-issue domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to a parked webpage that features links to parenting advice website. Respondent uses the disputed domain name to create a false association with Complainant and its CEO, Michael S. Dell, and its foundation.
Respondent registered and uses the <msmichaelsdell.org> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the <msmichaelsdell.org> domain name where it features pay-per-click links to third party websites regarding parenting advice. Furthermore, Respondent had actual knowledge of Complainant’s rights in the DELL mark as evidenced by its use of the domain name to display links related to the Michael & Susan Dell Foundation.
B. Respondent
Respondent made no formal response however claims via email as follows:
Respondent has no knowledge of the registration of the <msmichaelsdell.org> domain name. Respondent believes the domain name registration may be related to a recent credit card compromise. Respondent further states that it has “zero knowledge” of the at-issue domain name, that there were unauthorized charges from internet service providers on his credit card which may be related to the registration of the at-issue domain name.
The nominal Respondent ultimately directs Complainant to “please transfer [the domain name] to Dell.”
Complainant has trademark rights in the DELL mark.
Respondent registered the at-issue domain name after Complainant acquired rights in DELL.
Respondent unequivocally consents to having the at-issue domain name transferred to Complainant.
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.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii, when a respondent consents to the requested relief. 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.”)
In the instant case, there is an express indication that Respondent agrees to transfer its <msmichaelsdell.org> domain name to Complainant and does not oppose the Complaint. Respondent claims via email that it is the victim of identity theft, did not actually register the <msmichaelsdell.org> domain name, and in a short email response to Complainant’s counsel states in no uncertain terms that it desires that the at-issue domain name be transferred to Complainant. The Panel, noting the parties’ agreement as to the disposition of the <msmichaelsdell.org> domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining its requested relief, this panel holds that even where Respondent agrees to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for the DELL trademark shows Complainant’s rights in such trademark for the purposes of 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).
Additionally, the at-issue domain name contains Complainant’s entire DELL trademark, prefixed with a salutation and common name that may be reasonably read as “ms michael s” all followed by the top-level domain name “.org.” The <msmichaelsdell.org> domain is a plausible reference to the Michael and Susan Dell Foundation, a not-for-profit entity. The differences between the at-issue <msmichaelsdell.org> domain name and Complainant’s DELL trademark are insufficient to distinguish the trademark from Respondent’s domain name for the purposes of the Policy. Therefore, the Panel finds Respondent’s <msmichaelsdell.org> domain name is confusingly similar to Complainant’s DELL mark pursuant to Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent consents to Complainant’s request that the at-issue domain name be transferred to Complainant, the Panel GRANTS Complainant’s request.
Accordingly, it is Ordered that the <msmichaelsdell.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 30, 2019
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