DECISION

 

Dell Inc. v. Vladimir Ten

Claim Number: FA2009001912090

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA.  Respondent is Vladimir Ten (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dell-warranty.com> and <dell-helps.com>, registered with Registrar of Domain Names REG.RU LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 14, 2020; the Forum received payment on September 14, 2020. An Amended Complaint was received in both Russian and English.

 

On September 15, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <dell-warranty.com> and <dell-helps.com> domain names are registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 21, 2020, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of October 13, 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@dell-warranty.com, postmaster@dell-helps.com.  Also on September 21, 2020, the Russian language 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 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PANEL NOTE:  LANGUAGE OF THE PROCEEDINGS

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Amended Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A.   Complainant

1.     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 registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. D. Respondent’s <dell-warranty.com> and <dell-helps.com> domain names are confusingly similar to Complainant’s DELL mark. Respondent incorporates the mark in its entirety and adds a hyphen, the generic terms “warranty” or “helps,” and the “.com” generic top-level domain (“gTLD”).

 

2.    Respondent lacks rights or legitimate interests in the <dell-warranty.com> and <dell-helps.com> domain names as Respondent is not commonly known by the disputed domain names, nor did Complainant authorize Respondent to use the DELL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to webpages that display Complainant’s DELL mark and offer similar services to Complainant.

 

3.    Respondent registered and used the <dell-warranty.com> and <dell-helps.com> domain names in bad faith as Respondent’s domain names resolve to webpages that display Complainant’s mark and services in an attempt to create consumer confusion for Respondent’s commercial gain. Respondent had actual knowledge of Complainant’s rights in the DELL mark due to the long-standing use and fame of the mark.

 

            B. Respondent

                1.  Respondent failed to submit a response to this proceeding.

 

FINDINGS

1.    Respondent’s <dell-warranty.com> and <dell-helps.com> domain names are confusingly similar to Complainant’s DELL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <dell-warranty.com> and <dell-helps.com> domain names.

 

3.    Respondent registered and used the <dell-warranty.com> and <dell-helps.com> domain names in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the DELL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the DELL mark (e.g. Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. D. Therefore, the Panel finds that Complainant has adequately shown rights in the DELL mark per Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <dell-warranty.com> and <dell-helps.com> domain names are confusingly similar to Complainant’s DELL mark. Registration of a domain name that contains a mark in its entirety with a hyphen, generic term, and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Here, Complainant argues that Respondent incorporates the DELL mark in its entirety and adds a hyphen, the generic terms “warranty” or “helps,” and the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 Respondent lacks rights or legitimate interest in the <dell-warranty.com> and <dell-helps.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. Where a response is lacking, 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 name. 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 name lists the registrant as “Vladimir Ten” 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 names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy

¶ 4(c)(ii).

 

Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to webpages that display Complainant’s DELL mark and offer similar services to Complainant. Use of a disputed domain name to display a complainant’s mark in attempt to cause consumer confusion by offering similar services is not a bona fide offering of goods or services or legitimate noncommercial of fair use per Policy ¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant has provided screenshots of Respondent’s <dell-warranty.com> and <dell-helps.com> domain names resolving webpages that show Complainant’s DELL mark on display and the offering of services that relate to the mark. See Compl. Ex. E and G. Complainant further notes that the <dell-helps.com> domain name has expired and its failure to resolve to an active webpage is not a bona fide offering of goods or services or legitimate or noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and used the <dell-warranty.com> and <dell-helps.com> domain names in bad faith as Respondent’s domain names resolve to webpages that display Complainant’s mark and services in an attempt to create consumer confusion. Use of a disputed domain name to create consumer confusion by prominently displaying a complainant’s mark may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant has provided screenshots of Respondent’s <dell-warranty.com> and <dell-helps.com> domain names resolving webpages that show Complainant’s DELL mark on display and offering of services that relate to the mark. See Compl. Ex. E and G. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and (iv).

 

Complainant further argues that the <dell-helps.com> domain name fails to resolve to an active webpage which is further evidence of bad faith. Failure to resolve to an active webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant has provided the Panel with a screenshot of the resolving domain name that show that the domain name has expired. See Compl. Ex. G. 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 had knowledge of Complainant’s rights in the DELL mark at the time of registering the <dell-warranty.com> and <dell-helps.com> domain names. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam at the disputed domain name. As such, the Panel determines Respondent did have actual knowledge of Complainant’s right in its mark, which supports the Panel’s finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dell-warranty.com> and <dell-helps.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  October 28, 2020