Dell Inc. v. meysam amini
Claim Number: FA2104001940812
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is meysam amini (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-service.co>, registered with Tucows Domains Inc..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2021; the Forum received payment on April 8, 2021.
On April 9, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <dell-service.co> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@dell-service.co. Also on April 12, 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 6, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Dell Inc., is a leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,161,571, registered Oct. 9, 1990). Respondent’s <dell-service.co> domain name is identical or confusingly similar to Complainant’s DELL mark because incorporates the entirety of the mark, simply adding the generic term “service” and the “.co” country code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <dell-service.co> domain name. Respondent is not authorized to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent suggests affiliation with Complainant at the disputed domain and purports to offer competing repair services.
Respondent registered and uses the <dell-service.co> domain name in bad faith. Respondent creates confusion with Complainant and offers competing services. Additionally, Respondent had actual knowledge of Complainant’s rights in the DELL mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <dell-service.co> 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 claims rights in the DELL mark based upon the registration with the USPTO (e.g., Reg. No. 1,161,571, registered Oct. 9, 1990). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the DELL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <dell-service.co> domain name is identical or confusingly similar to Complainant’s DELL mark because incorporates the entirety of the mark, simply adding the generic term “service” and the “.co” ccTLD. Addition of a generic or descriptive term and a gTLD does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Further, addition or removal of hyphens is irrelevant to determining confusing similarity. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel finds that the disputed domain name is confusingly similar to the DELL mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <dell-service.co> domain name since Respondent is not authorized to use Complainant’s DELL mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Meysam Amini” as the registrant of the domain name and no information suggests that Complainant has authorized Respondent to use the DELL mark in any way. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <dell-service.co> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead suggests affiliation with Complainant and purports to offer competing repair services. Use of a disputed domain name to offer competing goods and/or services under a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant notes that Respondent prominently displays Complainant’s marks and logo at the disputed domain and purports to be an authorized dealer of Complainant’s products. Complainant also notes that Respondent provides contact information at the disputed domain and encourages visitors to contact Respondent. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <dell-service.co> domain name in bad faith because Respondent creates confusion with Complainant and offers competing services. Use of a disputed domain name to pass off as a complainant and offer competing goods/services may be evidence of bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant notes that Respondent prominently displays Complainant’s marks and logo at the disputed domain and purports to be an authorized dealer of Complainant’s products. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the DELL mark at the time the <dell-service.co> domain name was registered. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the entirety of circumstances surrounding registration and use of the domain name. 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”); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant claims Respondent knew of Complainant’s DELL mark based upon the fame of the mark and Respondent’s incorporation of the mark in a website that features Complainant’s logos and offers repair services for Complainant’s products. The Panel agrees and finds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii)
Complainant has proved this element.
Complainant 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-service.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
May 11, 2021
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