Dell Inc. v. Online Resource / Online Resource Management Ltd.
Claim Number: FA1910001864981
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Online Resource / Online Resource Management Ltd. (“Respondent”), Grand Cayman, Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deoll.com>, registered with GoDaddy.com, 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 October 1, 2019; the Forum received payment on October 1, 2019.
On October 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <deoll.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@deoll.com. Also on October 3, 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 October 28, 2019, 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 <deoll.com> domain name is confusingly similar to Complainant’s DELL mark as it incorporates the mark in its entirety, along with an extra letter “o” and a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not licensed or permitted to use Complainant’s DELL mark nor 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 redirect users to a series of domain names before ultimately landing on the Complainant’s official website. Furthermore, Respondent uses the disputed domain name to install malware.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Additionally, Respondent attempts to attract, for commercial gain, users to the disputed domain name where it features pay-per-click links. Respondent has also engaged in typosquatting. Furthermore, Respondent registered the disputed domain name with a privacy service. Respondent has used the disputed domain name to distribute malware. Finally, Respondent knew of Complainant’s rights in the DELL mark prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent did not submit a Response.
1. The disputed domain name was registered on January 11, 2016.
2. Complainant has established 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).
3. The disputed domain name’s resolving webpage appears to feature pay-per-click links.
4. The disputed domain name’s resolving webpage appears to feature a link to download a software extensions. Respondent uses the disputed domain name to promote malware.
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 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”).
Complainant claims rights in the DELL mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. 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.”). Accordingly, the Panel finds that Complainant has established rights in the DELL mark for the purposes of Policy ¶ 4(a)(i).
Complainant further argues that the disputed domain name is confusingly similar to Complainant’s DELL mark as it incorporates the mark in its entirety, along with an extra letter “o” and a “.com” gTLD. The addition of a letter and a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under 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 lacks rights and legitimate interests in the disputed domain name because Respondent is not authorized or permitted to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). 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)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes that the WHOIS of record identifies “Online Resource / Online Resource Management Ltd.” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to redirect users to a series of domain names before ultimately landing on the Complainant’s official website. Using a disputed domain name to redirect to third party websites generally fails to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to feature pay-per-click links. See Compl. Ex. E. Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent uses the disputed domain name to promote malware. Using a disputed domain name to install malware on users’ computers generally fails to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to feature a link to download a software extensions. See Compl. Ex. D. Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under 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 argues that Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to sell the disputed domain name for excess out-of-pocket costs. Attempting to sell a disputed domain name for excess out-of-pocket costs may evince bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel, however, notes that Complainant provides no evidence to support this argument. Therefore, the Panel does not find Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith as Respondent is using the disputed domain name to attract Internet users, for commercial gain, by creating a likelihood of confusion as to the source, sponsorship, endorsement, or affiliation of Respondent’s website by hosting pay-per-click links. Use of a disputed domain name to attempt to profit from pay-per-click links deceive may be evidence of bad faith registration and use per 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). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to feature pay-per-click links. See Compl. Ex. E. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered and uses the disputed domain name in bad faith by engaging in typosquatting. Capitalizing on Internet users’ common typing errors may evince bad faith under Policy ¶ 4(a)(iii). See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith). Here, Complainant argues that Respondent’s inclusion of the letter “o” to Complainant’s DELL mark is evidence of typosquatting. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and used the disputed domain name to distribute malware. Using a disputed domain name to install malware on Internet users’ computers may be evidence of bad faith under Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to feature a link to download a software extensions. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues the Respondent had actual knowledge of Complainant’s DELL mark prior to registering the disputed domain name. The Panel observes that any arguments regarding constructive knowledge are insufficient under the Policy. 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.”). However, actual knowledge of a complainant’s rights in a mark may support a finding under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark or the respondent’s use of it. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant contends that Respondent intends to trade off the fame of Complainant’s mark by incorporating the mark as well as the term “notebook” to imply a connection to Complainant’s products. Complainant displays its fame through a reference to its place on the “Global 500 – The Most Valuable Brands of 2018.” See Compl. Ex. B. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the disputed domain name 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 <deoll.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 4, 2019
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