Dell Inc. v. ömer demir / EMEK BİLGİSAYAR
Claim Number: FA1911001870054
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is ömer demir / EMEK BİLGİSAYAR (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <dellankara.com> and <dellistanbul.com> registered with FBS Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 6, 2019; the Forum received payment on November 6, 2019.
On November 7, 2019, FBS Inc. confirmed by e-mail to the Forum that the <dellankara.com> and <dellistanbul.com> domain names are registered with FBS Inc. and that Respondent is the current registrant of the names. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 November 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@dellankara.com, postmaster@dellistanbul.com. Also on November 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 December 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
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 <dellankara.com> and <dellistanbul.com> domain names are confusingly similar to Complainant’s DELL mark. Respondent incorporates the DELL mark in its entirety and adds the geographic modifiers “ankara” and “istanbul” along with the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the <dellankara.com> and <dellistanbul.com> domain names. Respondent is not licensed or permitted to use Complainant’s DELL mark nor commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the <dellankara.com> and <dellistanbul.com> domain names to pass off as Complainant in order to gain access to users’ information.
Respondent registered and used the <dellankara.com> and <dellistanbul.com> domain names in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Respondent uses the disputed domain names to gain access to Internet users’ personal information. Finally, Respondent had actual knowledge or constructive notice of Complainant’s DELL mark prior to registering the <dellankara.com> and <dellistanbul.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a world leader in computers, computer accessories, and other computer-related products and services.
2. Complainant has established its trademark 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. Respondent registered the <dellankara.com> domain name on March 11, 2011and the <dellistanbul.com> domain name on March 30, 2011.
4. Respondent uses the <dellankara.com> and <dellistanbul.com> domain names to pass itself off as Complainant in order to gain access to users’ information.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights to the DELL mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the DELL mark (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Therefore, the Panel finds that Complainant has rights in the DELL mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DELL mark. Complainant submits that Respondent’s <dellankara.com> and <dellistanbul.com> domain names are confusingly similar to Complainant’s DELL mark as Respondent merely adds a geographic modifier and a gTLD to the mark. Additions of a geographic term and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Skype Ltd. v. Sacramento, FA 747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the geographic modifiers “ankara” and “istanbul” along with a the “.com” generic top-level domain (gTLD). The Panel agrees with Complainant and finds that the <dellankara.com> and <dellistanbul.com> domain names do not contain changes that would sufficiently distinguish it from the DELL mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s DELL trademark and to use it in its domain names, adding the geographic modifiers “ankara” and “istanbul” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <dellankara.com> domain name on March 11, 2011 and the <dellistanbul.com> domain name on March 30, 2011;
(c) Respondent is offering and promoting an online hacking tool that purports to give access to and to manipulate data on Complainant’s servers. Respondent’s domain names further include links to advertising offers for Respondent’s commercial gain. Respondent also uses the disputed domain names in furtherance of a phishing scheme by tricking users into revealing personal or confidential information by promotional offers and surveys;
(d)Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant argues that Respondent lacks rights or legitimate interest in the <dellankara.com> and <dellistanbul.com> domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the DELL mark or register domain names using Complainant’s 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “ömer demir / EMEK BİLGİSAYAR” and there is no other evidence to suggest that Respondent was authorized to use the DELL mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent uses the <dellankara.com> and <dellistanbul.com> domain names to pass itself off as Complainant in order to gain access to users’ information. Attempting to pass off as a complainant in furtherance of a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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.”). Here, Complainant provides a screen shot of the disputed domain names’ resolving webpage which appears to display Complainant’s mark and products similar to those offered by Complainant along with a “contact” page which appears to attempt to solicit personal information from Internet users. See Compl. Ex. D. Therefore, the Panel finds that Respondent’s use is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <dellankara.com> and <dellistanbul.com> domain names in bad faith. because Respondent is disrupting Complainant’s business and diverting users to the disputed domain names to offer competing goods and services. Using a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel recalls Complainant’s contention that Respondent uses the <dellankara.com> and <dellistanbul.com> domain names to divert potential customers of Complainant’s business to a webpage that offers products similar to those offered by Complainant. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent uses the <dellankara.com> and <dellistanbul.com> domain names to pass itself off as Complainant in order to gain access to users’ information. Attempting to pass off as a complainant in furtherance of a phishing scheme may evidence bad faith. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provides a screen shot of the disputed domain names’ resolving webpage which appears to display Complainant’s mark and products similar to those offered by Complainant along with a “contact” page which appears to attempt to solicit personal information from Internet users. See Compl. Ex. D. Therefore, the Panel finds that Respondent’s use is bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s DELL mark. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances 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 Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant submits that due to Respondent’s use of Complainant’s famous DELL mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s DELL mark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the DELL mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DELL mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<dellankara.com> and <dellistanbul.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 5, 2019
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