Dell Inc. v. dazhuankeji(wuhan)youxiangongsi
Claim Number: FA2008001907485
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is dazhuankeji(wuhan)youxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellwh.com> ("the Domain Name"), registered with Xiamen 35.Com Technology Co., Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2020; the Forum received payment on August 6, 2020.
On August 11, 2020, Xiamen 35.Com Technology Co., Ltd. confirmed by e-mail to the Forum that the <dellwh.com> domain name is registered with Xiamen 35.Com Technology Co., Ltd. and that Respondent is the current registrant of the name. Xiamen 35.Com Technology Co., Ltd. has verified that Respondent is bound by the Xiamen 35.Com Technology Co., Ltd. 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 August 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 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@dellwh.com. Also on August 13, 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 September 8, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA and China for computers and related goods and services with first use recorded in the USA as 1987. It operates a web site at <dell.com>.
The Domain Name, registered in 2013, incorporates the Complainant’s DELL mark in its entirety merely tacking on letters "wh" and the generic top level domain ".com," neither of which diminish the similarity between the Domain Name and the Complainant’s registered trade mark.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and, although they used to be a partner of the Complainant, is not currently authorized by the Complainant. The Complainant never authorized the Respondent to use the DELL mark in the Domain Name.
The Domain Name is being used for a web site using the Complainant’s DELL mark and official logo as a masthead and images of the Complainant’s employees suggesting an affiliation with the Complainant where there is none. This is not a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial fair use of the Domain Name. Respondent has registered and is using the Domain Name in bad faith, diverting Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA and China for computers and related goods and services with first use recorded as 1987 in the USA. It operates a web site at <dell.com>.
The Domain Name, registered in 2013, has been used for a site using the DELL mark and logo as a masthead and pictures of the Complainant’s employees when there is no longer any affiliation with the 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.
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 Domain Name in this Complaint combines the Complainant’s DELL mark (registered in the USA for goods and services relating to computers with first use recorded as 1987) with the letters "wh" and the gTLD ".com," which do not prevent confusing similarity between the Domain Name and the Complainant’s mark per Policy ¶ 4(a)(i). See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”); see also Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The Respondent is not currently authorized to use the DELL mark. The Respondent has not answered this Complaint and is recorded as ‘Xiamen 35.Com Technology Co., Ltd’ on the WhoIs database and accordingly does not appear to be commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of the Domain Name is commercial and so cannot be legitimate noncommercial use.
It is clear from the evidence that the Respondent has used the site attached to the Domain Name to promote competing computer services which are not connected with the Complainant. The usage of the Complainant’s DELL mark which has a significant reputation in relation to computer services is not fair as the web site does not make it clear that there is no commercial connection with the Complainant and the Respondent appears to refer to itself, its business and/or its services using DELL in a misleading way passing itself off as or as still authorised by the Complainant. As such this cannot amount to the bona fide offering of goods and services. 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).”).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trade marks in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
As determined above, the Respondent's use of the Domain Name is commercial and it is using it to make profit from competing services not associated with the Complainant in a confusing manner. The use of the Complainant’s logo and pictures of the Complainant’s employees and the fact that the Respondent used to be an affiliate of the Complainant makes it clear that the Respondent was aware of the significance of the DELL name and the Complainant’s rights, business and service.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or the Respondents web site or services offered on it. This also appears designed to disrupt the business of a competitor. See LoanDepot.com, LLC v Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii).) See also CAN Financial Corporation v William Thomson/CAN Insurance, FA1401001541484 (Forum Feb 28, 2014) (finding that Respondent had engaged in bad faith under Policy ¶ 4(b)(iv) by using a confusingly similar domain name to attract internet users where it offered competing services).
The Complainant admits that the Respondent used to be a partner of the Complainant but has not provided evidence that the Respondent was not authorized to register the Domain Name at the time it was registered. However, where a respondent registers a domain name under an affiliation agreement with a complainant, but subsequently fails to cease use of the mark following the end of the agreement, the Panel may infer respondent never intended to respect complainant’s trademark rights under the affiliation agreement and the Panel may find bad faith registration under Policy paragraph 4(a)(iii). See CrossFit, Inc. v. Yen Nguyen / CrossFit AVA, FA1806001789786 (Forum July 9, 2018) (“Bad faith registration may be inferred given that the affiliate agreement was effectively terminated yet Respondent nevertheless continued to use the confusingly similar at-issue domain name. Given Respondent’s behavior after its license to use the domain name lapsed, it is reasonable to find that Respondent had no intention of respecting Complainant’s trademark rights at the time Respondent registered the at-issue domain name but rather intended to use the domain name whether or not it had a license to do so.”)
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4(b)(iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellwh.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 14, 2020
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