Dell Inc. v. dgtfdg fhfhf / batterieprofessionnel
Claim Number: FA2104001943548
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is dgtfdg fhfhf / batterieprofessionnel (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellbatterie.com>, registered with GoDaddy.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2021; the Forum received payment on April 30, 2021.
On May 3, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellbatterie.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@dellbatterie.com. Also on May 5, 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 27, 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 and computer-related products and services, including accessories. Complainant maintains registration of its DELL mark through its registration with the United States Patent and Trademark Office (USPTO). The disputed domain name, <dellbatterie.com>, is identical or confusingly similar because it wholly incorporates Complainant’s DELL mark and adding the term “batterie” to the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent has no rights or legitimate interests in the <dellbatterie.com> domain name because Respondent is not commonly known by the <dellbatterie.com> domain name. Respondent has not been authorized to use Complainant’s DELL mark. Respondent is not using the <dellbatterie.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <dellbatterie.com> domain name to sell Complainant’s products.
Respondent registered or uses the <dellbatterie.com> domain name in bad faith because the resolving website creates confusion among consumers as to the affiliation between Respondent’s website and Complainant. Respondent incorporated well-known marks of third-parties in other domain names. Respondent further acted in bad faith because Respondent provided false or misleading information at the time of the domain name’s registration and by phishing for user information. Respondent acted with actual knowledge of Complainant’s rights in the DELL mark.
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 <dellbatterie.com> 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 through its registraton with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its DELL mark with the USPTO (e.g. Reg. No. 1,860,272. Registered on Oct. 25, 1994). The Panel finds that Complaint established rights in its DELL mark under Policy ¶ 4(a)(i).
Complainant argues that the <dellbatterie.com> domain name is identical or confusingly similar to Complainant’s DELL mark because it wholly incorporates Complainant’s DELL mark and adds a descriptive term to the “.com” gTLD to form a domain name. A domain name may be found to be confusingly similar, under Policy ¶ 4(a)(i), if it wholly incorporates a complainant’s mark despite the addition of other words to the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). The added term here is ”batterie”. The Panel finds that the <dellbatterie.com> domain name is confusingly similar 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 that Complainant has made a prima facie case.
Complainant argues that Respondent does not have any rights or legitimate interests in the <dellbatterie.com> domain name because Respondent is not commonly known by the <dellbatterie.com> domain name. A respondent may be found to not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where the identifying WHOIS information provided by a complainant is unrelated to the domain name and where a respondent lacks authorization to incorporate a complainant’s mark in the domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). In the WHOIS information provided by Complainant, the registrant is listed as “dgtfdg fhfhf” from “batterieprofessionnel”. Complainant argues that this identifying information is unrelated and false information. Complainant further states that it has not authorized Respondent to incorporate Complainant’s DELL mark in the domain name. The Panel finds that Respondent is not commonly known by the <dellbatterie.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <dellbatterie.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <dellbatterie.com> domain name to sell Complainant’s products. Use of a domain name for the unauthorized sale of a complainant’s products is not a domain name being used in connection with a bona fide offering of goods or services nor for a noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Complainant provides screenshots of the resolving website using the <dellbatterie.com> domain name. The website purports to sell “Genuine Dell Laptop Batteries” displaying batteries that complainant would sell for its own products. The Panel finds that Respondent is not using the <dellbatterie.com> domain name in connection with a bona fide offering of goods or services nor for a noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <dellbatterie.com> domain name in bad faith because Respondent registered other domain names containing famous marks of third parties. Bad faith may be found, under Policy ¶ 4(b)(ii), where a respondent registers multiple domain names containing trademarks of widely-known businesses. See Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). Complainant provides a list of other domain names Respondent has registered. This list provided shows other domain names using the ASUS, ACER, and HP marks which are famous marks of their respective owners. This is evidence that Respondent registered and uses the <dellbatterie.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <dellbatterie.com> domain name in bad faith because Respondent is using the <dellbatterie.com> domain name as an attraction for commercial gain. Use of a domain name that sells a complainant’s products without authorization and creates a likelihood of confusion with a complainant’s mark is evidence of bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). Complainant’s website purports to sell batteries that Complainant sells on its own website. Complainant asserts that Respondent is not an authorized seller of Complainant’s products. Additionally, Complainant states that users would be confused as to the resolving website’s association with Complainant. The Panel finds that Respondent is using the <dellbatterie.com> domain name as an attraction for commercial gain under Policy ¶ 4(b)(iv).
Complainant additionally argues Respondent uses the <dellbatterie.com> domain name as an attraction for commercial gain by using the <dellbatterie.com> domain name to gather personal information of users after falsely creating an association with Complainant. Use of a confusingly similar domain name to gather personal information from users is evidence of bad faith under Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). In screenshots provided by Complainant, users are required to provide name, phone number, and email address to service@dellbatterie.com when trying to contact Respondent. Complainant states that this information can be used by Respondent to commercially benefit by selling that information to third parties. This is evidence that Respondent acted in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <dellbatterie.com> domain name in bad faith because Respondent provided false information at the time of the <dellbatterie.com> domain name’s registration. Evidence of bad faith registration and use of a domain name may be found where a respondent provided false contact information when registering a domain name. See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). The individual registrant listed in the verification from the registrar lists the registrant as “dgtfdg fhfhf”. Additionally, the city listed is “Paris” in the country of “Hong Kong”, which is a city/country pair that does not exist. This is evidence that Respondent registered the <dellbatterie.com> domain name in bad faith.
Complainant argues that Respondent acted with actual knowledge of Complainant’s rights in the DELL mark. Actual knowledge may be found where a respondent uses a well-known mark of another and uses that mark to sell similar products in competition with the mark’s owner. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant is one of the largest marketers of computers and related products in the market. Respondent used Complainant’s DELL mark to sell products Complainant sells itself. The Panel finds that Respondent acted with actual knowledge of Complainant’s rights in its Dell mark and registered and uses the domain name in bad faith.
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 <dellbatterie.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
June 3, 2021
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