Dell Inc v. Milen Radumilo
Claim Number: FA2103001936544
Complainant is Dell Inc (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellpowervault.info>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2021; the Forum received payment on March 15, 2021.
On March 16, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <dellpowervault.info> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2021 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@dellpowervault.info. Also on March 18, 2021, 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 April 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DELL and POWERVAULT trademarks and service marks established by its ownership of its portfolio of United States registrations described below and the goodwill that it has acquired through extensive use of the marks in business.
Complainant asserts that it has a global reputation as a world leader in computers, computer accessories, and other computer-related products and services which are marketed in over 180 countries. In the Fiscal Year 2020, Complainant generated $92.2 billion in revenue, and is listed as #34 on the Fortune 500.
The Complaint alleges that the disputed domain name is identical or confusingly similar to Complainant’s DELL and POWERVAULT marks, arguing specifically, that it is composed of both of these marks in their entirety.
Complainant adds that the presence of a generic top-level domain extension <.info> is irrelevant for the purposes of comparison under the Policy. Citing Trip Network Inc. v. Alviera, Case No. FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the domain name at issue; and Complainant has not licensed or otherwise permitted Respondent to use its DELL or POWERVAULT marks, or any other mark owned by Complainant.
Referring to screen-captures of the website to which the disputed domain name resolves, Complainant alleges 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.
Rather, it argues that the disputed domain name is being used to redirect users through a series of websites from which Respondent presumably receives a commission. In certain instances, users are ultimately forwarded to a website that features a large “Continue to Store” button that Respondent claims will put the user through a “standard security check,” and then take the user to the “Chrome store” to purchase a “Secured Search” extension. However, no such extension appears to be offered at the official Chrome Web Store. Complainant suspects Respondent is using this extension to distribute malware.
Complainant alleges that given the incorporation of Complainant’s DELL and POWERVAULT marks into the domain name, consumers visiting the website to which the disputed domain name resolves may presume that clicking the “Continue to Store” button to perform the “standard security check” is safe and required to reach their intended destination – a website owned by Complainant. Complainant has not clicked the “Continue to Store” button, as Complainant suspects that it will cause unwanted, and perhaps malicious, software to be installed.
In other instances, the disputed domain name ultimately leads users to a pay-per-click parking page displaying links for goods or services that compete with, or are related to, those of Complainant. Complainant submits that previous panels have found that respondents had no rights or legitimate interests in a domain name when it was used in connection with a pay-per-click parking page as Respondent is doing in this present case. Moreover, passive holding of a domain name is evidence that the Respondent has no rights or legitimate interests in the domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this particular dynamic parking page to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant then alleges that the disputed domain name has been registered and is being used in bad faith arguing that it is clear that the registrant was aware of Complainant, its business, trademarks and rights because the disputed domain name is composed of Complainant’s two trademarks. See, e.g., Dell Inc. v. ASTDomains, Case No. D2007-1819 (WIPO 2007) (“Given the notoriety of the Complainant’s trademark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark,” finding bad faith and transferring dellvista.com).
Complainant also argues that Respondent’s bad faith is further demonstrated by the evidence adduced and described above, which shows that the disputed domain name <dellpowervault.info> is being used in an attempt to distribute malware.
Additionally, Complainant contends that Respondent’s use of the disputed domain name to redirect to third-party websites is evidence of bad faith and adds that Respondent’s passive holding of the domain names evidences bad faith.
Complainant further alleges that Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the disputed domain name; the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and the disputed domain name incorporates exactly the marks DELL and POWERVAULT. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has an international business manufacturing and marketing computers, computer accessories, and other computer-related products and services.
Dell owns a number of trademark registrations for the DELL Marks, many of which are incontestable.
· United States registered trademark DELL (figurative), registration number 1,860,272, registered on the Principal Register on October 25, 1994 for goods in international class 9;
· United States registered service mark DELL, registration number 2,236,785, registered on the Principal Register on April 6, 1999 for services in international class 40;
· United States registered trademark DELL, registration number 2,794,705, registered on the Principal Register on December 16, 2003 for goods in international class 9;
· United States registered service mark DELL, registration number 2,806,769, , registered on the Principal Register on January 20, 2004 for services in international class 37;
· United States registered service mark DELL, registration number 22,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States registered trademark DELL 2,808,852, registered on the Principal Register on January 27, 2004 for goods in international class 2; and
· United States registered trademark and service mark DELL (figurative), registration number 3,215,023, registered on the Principal Register on March 6, 2007 for goods and services in international classes 2, 9, 36, 37, 40 and 42.
Complainant also owns United States registered trademark POWERVAULT, registration number 2,543,224 registered on the Principal Register on February 26, 2002 for goods in intentional class 9 which is used in conjunction with data storage services.
The disputed domain name <dellpowervault.info> was registered on February 13, 2021 and resolves to a website that on March 2, 2021 contained links relating to data storage, database support services and cloud-based storage and requesting data input by certain Internet users.
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The Registrar confirmed that Respondent is the registrant of the disputed domain name as his name had been redacted on the published WhoIs.
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 provided clear, convincing, and uncontested evidence of its rights in the DELL and POWERVAULT trademarks and service marks though registration and at common law through extensive use of the marks in business.
In this regard Complainant relies on its ownership of its portfolio of United States registrations described above and the goodwill that it has acquired through extensive use of the marks in over 180 countries in its business which in the Fiscal Year 2020 generated $92.2 billion in revenue and a listing at #34 on the Fortune 500.
The disputed domain name is composed of Complainant’s DELL and POWERVAULT marks each in its entirety in combination.
Each of the elements are distinctive and clearly recognizable in the disputed domain name.
In the circumstances of this case, the generic top-level domain extension <.info> adds no distinctive element to the disputed domain name for the purposes of an analysis under the Policy as it would be considered to be a necessary technical element for a domain name.
Complainant has therefore succeeded in the first element in 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;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL or POWERVAULT marks, or any other mark owned by Complainant;
· Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
· the screen-captures of the website to which the disputed domain name resolves prove that the disputed domain name is being used to redirect users through a series of third-party websites from which Respondent presumably receives a commission;
· in certain instances, users are ultimately forwarded to a website that features a “standard security check,” which appears to be false and there is suspicion that it is being used to distribute malware;
· consumers visiting the website to which the disputed domain name resolves may presume that clicking the “Continue to Store” button to perform the “standard security check” is safe and required to reach their intended destination – a website owned by Complainant;
· in other instances, the disputed domain name ultimately leads users to a pay-per-click parking page displaying links for goods or services that compete with, or are related to, those of Complainant;
· moreover, Respondent’s passive holding of a domain name is evidence that the Respondent has no rights or legitimate interests in the domain name.
It is well established that once a complainant has made out a prima facie case the burden of production shifts to the respondent to prove such rights or interests. Respondent has failed to discharge this burden and therefore this Panel must find that 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).
The disputed domain name is a combination of Complainants distinctive DELL and POWERVAULT service marks and trademarks. Given the distinctive character of each of these marks is inconceivable that the disputed domain name, that combines both, was chosen and registered by coincidence. There can be no motive for the registration of the disputed domain name other than to take predatory advantage of Complainant’s business, reputation and goodwill in the two trademarks.
It is not proven that the disputed domain name is being used to distribute malware as alleged, but it is clear that the disputed domain name is being used as the address of a website to intercept Internet traffic, confuse Internet users and misdirect them to Respondent’s website.
On the balance of probabilities Respondent is making commercial gain from misdirecting Internet traffic, including by forwarding certain traffic to certain links to competitors of Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name is being used in bad faith, by Respondent in an intentional attempted to attract, for commercial gain, Internet users to Respondent’s 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 is therefore using the disputed domain name in bad faith.
Additionally, Complainant contends that Respondent’s use of the disputed domain name to redirect to third-party websites is evidence of bad faith and adds that Respondent’s passive holding of the domain names evidences bad faith.
Complainant further alleges that Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates exactly the marks DELL and POWERVAULT. See 15 U.S.C. §1125(d)(1)(B)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellpowervault.info> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 13, 2021
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