Dell Inc. v. Pragnyananda Panda / Purple Panda Web
Claim Number: FA2001001879072
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, United States. Respondent is Pragnyananda Panda / Purple Panda Web (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellexclusivestore-digitaldreams.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2020; the Forum received payment on January 15, 2020.
On January 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellexclusivestore-digitaldreams.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 January 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2020 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@dellexclusivestore-digitaldreams.com. Also on January 16, 2020, 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 February 9, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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 relies on its rights in the DELL trademark acquired though its ownership of the trademark registrations described below and its extensive use of the DELL mark in its international computer business.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s DELL trademark. Specifically arguing that the disputed domain name <dellexclusivestore-digitaldreams.com> incorporates the DELL trademark in its entirety, tacking on the generic phrases “exclusive store” and “digital dreams,” which are phrases highly likely to be associated with Complainant, its goods and services.
Complainant submits that the presence of the generic top-level domain name extension <.com> is irrelevant in the analysis for the purposes of Policy ¶ 4(a)(i).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name; that Respondent is not an authorized provider of Complainant’s technical support or repair services; that Respondent is also not an authorized reseller of Complainant’s goods; that Complainant has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant.
Complainant submits that Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Rather, Complainant argues that the disputed domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant.
Complainant has furnished a screenshot of the website to which the disputed domain name resolves and complains that Respondent’s website prominently displays the DELL mark on the website’s homepage; that Respondent’s website exhibits pictures of Complainant’s DELL products incorporating the DELL logo and encourages visitors to call phone numbers that are not associated with Complainant. Moreover, Complainant argues that Respondent refers to itself by the misleading name “Dell Exclusive Store Digital Dreams.” Respondent’s website gives the history of Complainant’s company, similar to the information conveyed on Complainant’s official website. Respondent’s website displays images of one of Respondent’s stores which appears to display Complainant’s logo and marketing materials with Complainant’s logo, which Complainant submits would lead consumers to believe Respondent is affiliated with Complainant. Complainant asserts that Respondent uses this website to sell Complainant’s products but also to promote technical support services that are in direct competition with services offered by Complainant.
Complainant submits that after falsely creating an association with Complainant, Respondent is attempting to gather Internet users’ personal information through its “Contact Us” form on Respondent’s website. Respondent requests information from consumers, such as their name, phone number, and email address. Respondent may commercially benefit by abusing that information and/or by selling that information to third parties.
Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that Respondent’s inclusion of DELL in the domain name is not a nominative fair use.
Complainant submits that Respondent registered and is using the domain name in bad faith. Complainant submits that the registrant’s knowledge of Complainant’s rights in the DELL trademark can be seen from Respondent’s use of the disputed domain name <dellexclusivestore-digitaldreams.com> to host a website which uses the DELL mark, including Complainant’s logo, displays images of Complainant’s products, promotes Complainant’s products, offers technical support services for Complainant’s products, and targets Complainant’s customers.
Complainant argues that not only is Respondent’s use of the disputed domain name highly likely to cause confusion, but Respondent’s bad faith is clearly demonstrated by the Respondent’s use of the disputed domain name as the address for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is associated with Complainant.
Complainant adds that Respondent is attempting to gather Internet users’ personal information after falsely creating an association with Complainant, which it argues supports a finding of bad faith registration and use of the domain name at issue.
Complainant alleges that by using the disputed domain name for a website displaying the DELL disputed domain name promoting Complainant’s products, and offering competing technical support services for DELL products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of services offered at Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has one of the world’s largest businesses in the field of computers, computer accessories, and other computer-related products and services, with $91.3 billion in revenue in fiscal year 2019, Complainant ranks as number 34 on the Fortune 500 rankings. Complainant has the second largest segment of the Indian computer market where Respondent is based and owns the following Indian trademarks:
• India Registered trademark number 1190375, registered on April 7, 2003 for goods in class 2;
• India Registered trademark number 1190376, registered on April 7, 2003 for goods in class 9;
• India Registered trademark number 1239349 registered on September 24, 2003 for services in class 42;
• India Registered trademark number 1239350 registered on September 24, 2003 for services in class 37;
• India Registered trademark number 1335057, registered on January 28, 2005 for services in class 36.
The disputed domain name was registered on November 15, 2019 and resolves to a website purporting to offer DELL branded products, gives the history of Complainant’s company, similar to the information conveyed on Complainant’s official website, displays photos of one of Respondent’s stores which appears to display Complainant’s logo and marketing materials. The website invites enquiries and feedback from visitors to the website via a form that requests contact information and details of the visitor.
There is no information available about Respondent except for that provided in the Complaint, including the screenshots of Respondent’s website, the information on the Registrar’s WhoIs, and the information provided by the Registrar in response to the Forum’s request for verification of the details of the registration of the disputed domain name.
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 has made out a strong uncontested case that it has rights in the DELL trademark in many jurisdictions including India where Respondent is based. Respondent has acquired its trademark rights through its abovementioned trademark registrations and its international use of the DELL trademark in relation to its computer products and services.
The disputed domain name <dellexclusivestore-digitaldreams.com> incorporates the DELL trademark in its entirety in combination with the phrases “exclusive store” and “digital dreams.” On the evidence adduced it appears that Respondent uses the words “Digital Dreams” as a business name. This Panel finds that the initial, dominant and only distinctive element of the disputed domain name is Complainant’s DELL trademark which is incorporated into the disputed domain name in its entirety. In the circumstances of the present Complaint, the generic top-level domain name extension <.com> may be ignored for the purposes of comparison.
This Panel finds therefore that the disputed domain name is confusingly similar to the DELL trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name; that Respondent is not an authorized provider of Complainant’s technical support or repair services; that Respondent is also not an authorized reseller of Complainant’s goods; that Complainant has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant; that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; that the disputed domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant which is not a bona fide use of the domain name. Additionally, Complainant has furnished a screenshot of the website to which the disputed domain name resolves and complains that Respondent’s website prominently displays the DELL mark on the website’s homepage; that Respondent’s website exhibits pictures of Complainant’s DELL products incorporating the DELL logo and encourages visitors to call phone numbers that are not associated with Complainant. Moreover, Complainant argues that Respondent refers to itself by the misleading name “Dell Exclusive Store Digital Dreams.”
Given the benefit of the doubt, and while the point has not been raised by Complainant, and Respondent has failed to respond to the Complaint, it could be argued that the record shows that Respondent’s website purports to present Respondent as a bona fide reseller of Complainant’s goods. Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided guidance as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that the respondent must actually be offering the goods or services at issue.; must use the site to sell only the trademarked goods ;the site must accurately disclose the registrant's relationship with the trademark owner and the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent’s website certainly states that “Digital Dreams, a prominent supplier of computers and electronic accessories have Dell exclusive stores in Jaipur and Jodhpur cities of the royal state of Rajasthan….” and the website gives the addresses and maps of the locations of two “Dell Exclusive Stores” Dell Store in Jaipur and Jodhpur. However, it is also stated on the website that “Digital Dreams established itself as the supplier of computers and electronic accessories and today has more than ten stores across the state of Rajasthan having India’s top branded laptops with the latest technologies available.”
Taken on its face therefore while it might be argued that the website to which the disputed domain name resolves is presenting two stores that exclusively sell Complainant’s products, the record shows that Respondent is using the disputed domain name not only to promote these two stores but to promote all of its ten stores, including eight of which appear to offer competing products. Such use would fall outside the scope of the test in OKI Data and would not confer a legitimate interest on Respondent.
In such circumstances, the burden of production shifts to Respondent to prove that it has rights or legitimate interests. As Respondent has failed to respond to the Complaint to discharge that burden, this Panel finds that on the balance of probabilities respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced and taking into account the use of Complainant’s distinctive mark as the dominant and distinctive element of the disputed domain name to resolve to a website which expressly refers to Complainant’s products and services this Panel finds that the registrant of the disputed domain name was actually aware of Complainant and it marks when the disputed domain name was registered. On the balance of probabilities, the disputed domain name was chosen and registered to refer to Complainant and create an association with Complainant’s reputation and goodwill.
The website to which the disputed domain name resolves purports not only to offer Respondent’s products for sale but also promotes outlets established by Respondent that sell competing goods and services.
This Panel finds therefore that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and a product or service on your web site.
This Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs requested in this Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellexclusivestore-digitaldreams.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: February 10, 2020
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