Dell Inc. v. gazanfer ocak
Claim Number: FA2104001940174
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is gazanfer ocak (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delltechnologiesapex.com>, 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 April 5, 2021; the Forum received payment on April 5, 2021.
On April 7, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <delltechnologiesapex.com> 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 April 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@delltechnologiesapex.com. Also on April 9, 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 May 4, 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 <delltechnologiesapex.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DELL trademark established though its ownership of its portfolio of trademark and service mark registrations described below and its extensive use of the mark in its business as a manufacturer and provider of computers, computer related product and services. Complainant submits that it has an extensive reputation in the DELL marks and its business has expanded to over 180 countries generating revenue of $92.2 billion in revenue in Fiscal Year 2020 and is #34 on the Fortune 500 listing.
Complainant also claims rights in the DELL TECHNOLOGIES APEX mark for which it holds a number of pending applications to register in Jamaica and the United States.
It is argued by Complainant that the disputed domain name is identical or confusingly similar to Complainant’s DELL and DELL TECHNOLOGIES APEX marks specifically as it fully incorporates both marks. Complainant adds that the presence of the generic top-level domain extension <.com> is irrelevant in an analysis for the purposes of the Policy. 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).
It is further contended 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, nor is Respondent an authorized provider of Complainant’s products or services.
In addition, Complainant asserts that it has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant
Complainant contends that Respondent has not 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. Rather, the disputed domain name <delltechnologiesapex.com> resolves to an error page stating, “This site can’t be reached delltechnologiesapex.com refused to connect.”
Furthermore, Complainant submits that Respondent has been passively holding a domain name for over three months at the time of filing of this Complaint. Citing American International Group, Inc. v. Debra Speyer, FA 422815 (Forum Apr. 7, 2005) (panel found no rights where respondent had passively held the domain name for over three months); LFP, Inc. v. B & J Props., FA 109697 (Forum May 30, 2002) (“A respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when the respondent might be capable of doing otherwise”).
Complainant then alleges that the disputed domain name was registered and is being used in bad faith arguing that the very use of the disputed domain name that is confusingly similar to Complainant’s famous DELL mark is evidence of bad faith. It is clear that the registrant of the disputed domain name was aware of Complainant, its business, mark and reputation when the disputed domain name was registered. Citing 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 adds that the disputed domain name was registered on the very day that Complainant’s application to register the trademark DELL TECHNOLOGIES APEX became public knowledge. Citing Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA 1613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website.
Complainant adds that Respondent’s passive holding of the disputed domain name is evidence of bad faith registration. See Kellogg Company and Kellogg North America Company v. Froot Loops of The Carolinas, FA 0758812 (Forum Sept. 6, 2006) (finding “Respondent’s failure to develop a website in connection with the <frootloopsnc.com> domain name other th[a]n the prominent display of Complainant’s FROOT LOOPS mark [on a “coming soon” page] and the failure of Respondent to bring forth evidence of future use results in a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant further submits that bad faith registration is also evidenced by Respondent’s use of a privacy service to register the domain name which Complainant argues gives rise to a rebuttable presumption of Respondent’s bad faith. Baylor University v. Domain Administrator c/o Fundacion Private Whois, FA 1541455 (Forum Mar. 4, 2014) (“the disputed domain name is registered with a privacy service. In the commercial context, this raises the rebuttable presumption Respondent registered and uses the disputed domain name in bad faith,” finding Respondent’s failure to rebut this presumption “sufficient to find bad faith registration and use”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of computers and computer-related products and provides related services which it provides across the world, identified by the DELL trademark and service mark for which it owns a portfolio of registrations including the following:
· United States trademark registration DELL (stylized) registration number 1,860,272, registered on the Principal Register on October 25, 1994 for goods in international class 9;
· United States service mark registration DELL registration number 2,236,785, registered on the Principal Register on April 6, 1999 for services in international class 40;
· United States trademark registration DELL registration number 2,794,705, registered on the Principal Register on December 16, 2003 for goods in international class 9;
· United States service mark registration DELL registration number 2,806,769, registered on the Principal Register on January 20, 2004 for services in international class 37;
· United States service mark registration DELL registration number 2,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States trademark registration DELL registration number 2,808,852, registered on the Principal Register on January 27 2004 for goods in international class 2;
· United States trademark and service mark registration DELL (stylized) registration number 3,215,023 registered on the Principal Register on March 6, 2007 for goods and services in integrational classes 2, 9, 36, 37, 40 and 42.
Additionally, Complainant argues that it has rights in the DELL TECHNOLOGIES APEX mark for which held a trademark application for services in international class 42 first filed in Jamaica on September 22, 2020 and a corresponding United States trademark application filed on October 2020 which was the date on which the disputed domain name was registered,
Complainant has an established Internet presence with its principal website at <www.dell.com>.
The disputed domain name <delltechnologiesapex.com> was registered on October 20, 2020 and is inactive generating the message “This site can’t be reached. delltechnologiesapex.com refused to connect.”
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint. Respondent has availed of a privacy service to conceal its name on the published WhoIs. In response to said request from the Forum for verification of the registration details of the disputed domain name the Registrar confirmed that Respondent is the registrant.
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 adduced clear, convincing and uncontested evidence that it has rights in the DELL trademark established though its ownership of the above-described portfolio of trademark and service mark registrations and its extensive use of the mark in its business as a manufacturer and provider of computers, computer related product and services in over 180 countries generating revenue of$ 92.2 billion in revenue in Fiscal Year 2020 and is #34 on the Fortune 500 listing. At the time of the registration of the disputed domain name Complainant had applied to register the DELL TECHNOLOGIES APEX mark.
The disputed domain name consists of Complainant’s DELL mark in combination with the words “technologies” and “apex” followed by the Top Level Domain extension <.com>.
Complainant’s DELL mark is the initial and dominant element in the disputed domain name. An Internet user would immediately associate the mark with Complainant. There is no evidence that at the time of registration that the other elements were associated with Complainant and in that respect they are generic and descriptive adding no distinguishing character to the disputed domain name or reducing its confusing similarity to the DELL mark.
In the circumstances of the present case this Panel finds that the disputed domain name is confusingly similar to the DELL mark in which Complainant has rights. Claimant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
It is not necessary to consider whether Complainant has any trademark rights in DELL TECHNOLOGIES APEX based on pending trademark applications.
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;
· Respondent is not an authorized provider of Complainant’s products or services;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL marks or any other mark owned by Complainant;
· Respondent has not 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 disputed domain name <delltechnologiesapex.com> generates an error message, “This site can’t be reached delltechnologiesapex.com refused to connect”;
· Respondent has been passively holding a domain name for over three months at the time of filing of this Complaint.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name At issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied the second element in the test in Policy ¶ 4(a)(ii) also.
The disputed domain name was selected and chosen on the very day that Complainant’s application to register the identical DELL TECHNOLOGIES APEX mark became public knowledge. Complainant’s DELL mark has a long and established global reputation in computer business. It is implausible that the disputed domain name was registered for any reason other than take advantage of Complainant’s reputation and new its project to establish delivery of its services under the DELL TECHNOLOGIES APEX mark. This Panel finds therefore that the disputed domain name was registered in bad faith.
Since registration, the disputed domain name has been passively held with no indication that Respondent has any intention of putting it to any bona fide use. This Panel finds that in the circumstances described in the Complaint, on the balance of probabilities the passive holding of the disputed domain name by Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs, is proof that on the balance of probabilities the disputed domain name is being held and used in bad faith.
As this Panel is found that the disputed domain name was registered and used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delltechnologiesapex.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 5, 2021
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