Dell Inc. v. Jon Stenger
Claim Number: FA2109001962155
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Jon Stenger (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thedellemc.com> (the “Disputed Domain Name”), 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 1, 2021; the Forum received payment on September 1, 2021.
On September 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thedellemc.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 September 7, 2021, the Forum sent a deficiency letter to Complainant regarding the identity of Respondent and its contact information. On September 9, 2021, Complainant submitted an amended complaint to the Forum electronically.
On September 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@thedellemc.com. Also on September 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.
A timely Response was received and determined to be complete on September 24, 2021.
On September 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg as Panelist.
On September 30, 2021, Complainant submitted a supplemental filing. On October 1, 2021, Respondent submitted a supplemental filing.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is “a world leader in computers, computer accessories, and other computer-related products and services” and that it “has also developed a family of businesses, collectively known as Dell Technologies, that offers products and services related to technology, software, security, and more.” Complainant further states that it “sells its products and services in over 180 countries”; that it “has generated $92.2 billion in revenue in Fiscal Year 2020”; and that it “is #34 on the Fortune 500.” Complainant further states, and provides evidence in support thereof, that it is the owner of numerous registrations for trademarks that consist of DELL and DELL EMC, including U.S. Reg. No. 1,860,272 for DELL (registered October 25, 1994) for use in connection with “computers and parts therefor”; and U.S. Reg. No. 5,551,479 for DELL EMC (registered August 28, 2018) for use in connection with, inter alia, “Installation, maintenance, and repair of computer hardware.” These registrations are referred to hereafter as the DELL Trademark.
Complainant asserts that the Disputed Domain Name is confusingly similar to the DELL Trademark because it “incorporates the mark DELL EMC in its entirety and adds the generic term ‘the,’ an addition that does not distinguish the domain name from Complainant’s identical DELL EMC mark, and arguably implies that Respondent’s website is “the” official Dell EMC website.”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent’s website at thedellemc.com prominently displays Complainant’s DELL and DELL EMC marks, including its logo;” “Respondent is impersonating Complainant by referring to itself by the misleading name ‘theDellEMC’ and offers information and competing blog services regarding Complainant’s products on the website at the disputed domain”; “Complainant has not licensed or otherwise permitted Respondent to use its DELL Marks, or any other mark owned by Complainant”; “Respondent is not commonly known by the domain name at issue”; and “Respondent’s inclusion of DELL EMC in the domain name is not a nominative fair use but instead the domain name falsely conveys that Respondent’s website is authorized by Complainant.”
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[t]he use of a domain name that is confusingly similar to Complainant’s famous DELL Marks is evidence of bad faith”; the Disputed Domain Name “is being used for a website that attempts to deceive consumers into thinking that Respondent is associated with Complainant”; and “[b]y using the disputed domain name for a website displaying the DELL Marks that purports to offer competing services, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
B. Respondent
In its Response, Respondent states that the Disputed Domain Name is not identical or confusingly similar to the DELL Trademark for the following reasons: “The site in questions [sic] is primarily dedicated to providing information on upgrade specific Dell gear. This information is also available on the official dellemc site, but not easy to get to and sometime involves unzipping massive files. Storage admins/engineers find it easier to quickly find the relevant information on thedellemc.com and can always go to the official site for the actual code download (which is not hosted by thedellemc.com); hence the link to delltechnologies.com.”
Respondent states that it has rights or legitimate interests in the Disputed Domain Name for the following reasons: “[t]he site (thedellemc.com) provides specific engineering/admin level tips and processes to help in administering/upgrading specific Dell gear; hence the relevance in name.” And: “The purpose of the site in question is to provide quick and easy access to technical tips such as upgrading code / firmware / drivers to Dell products. I do not gain any financial benefit from this site. It is used for engineers to makes our lives easier. I do not gain any monetary benefit from running this site.”
Respondent states that the Disputed Domain Name was not registered and is not being used in bad faith for the following reasons: “[M]y intention is not to work in bad faith. I have taken the site down since the initial compliant has been filed by Danae [sic] on Sep 9th 2021. I understand the complaint and will take action to remove the dell logo and correct lettering to avoid any confusion about the link to the official Dell properties and make it clear that this site is not the official channel for Dell (just in case the picture of a baby in glasses is not already indicative of that: Ref to Exhibit E from complainant).” And: “The sites’ [sic] contact form was still a work in progress (has not worked since inception) and not an attempt to collect/sell customer information. Same goes for the email to that domain. Since the primary purpose of the site is to disseminate specific information for admin/engineers, I can remove the contact page all together [sic].”
C. Additional Submissions
In its additional submission, Complainant states, in relevant part, that “[w]hile Respondent claims in its response that the site at the disputed domain name is meant only to offer information on Dell products, Respondent’s website, in fact, is designed to appear as if it were an official site of Complainant’s and offers competing services that divert users from Complainant’s business, neither of which give Respondent rights or legitimate interests in the disputed domain name. Thedellemc.com website refers to itself as ‘theDellEMC’; makes statements like ‘All things Dell’ and ‘Go here to find all things related to Dell. Log in to access a multitude of software’; prominently displays Complainant’s DELL Marks, including the DELL logo; and makes no attempt to inform visitors that Respondent’s website is not owned by, or affiliated with, Complainant…. Respondent suggests that the informal nature of a single picture on its site is sufficient to indicate to unsuspecting visitors that Respondent’s site is not an official Dell site; however, past panels have found that not even an explicit disclaimer is sufficient to mitigate the risk of at least initial confusion.” Complainant further states: “Although Respondent claims it (a) does not receive any financial benefit, (b) does not have a working contact page, (c) and provides links to Dell’s official site for software downloads, this could have been, and could be, modified by Respondent at any time should Respondent continue to control the domain name.”
In its additional submission, Respondent states, in relevant part: “Disputed domain does not state that it is the official dell site and does not divert business away from Dell. By making it easier for engineers and technicians to get the relevant data, it is quite possible that Dell gets more business and larger user base of which I’m in favor of.” And: “It is unlikely that a tech/engineer (target audience) will be confused by my site and mistake it for the official site.”
Complainant is the owner of multiple registrations for the DELL Trademark, which was registered as early as October 25, 1994. The Disputed Domain Name was created on August 20, 2020, and has been used in connection with a website that includes the DELL Trademark (as well as a stylized version of the DELL Trademark for which Complainant owns at least one registration) and purports to offer “[d]ocuments, links and tips for a storage engineer” as well as “all things related to Dell.”
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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DELL Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the DELL Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “thedellemc”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the DELL Trademark (including the DELL EMC trademark) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the reasons set forth above.
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, despite its Response, Respondent has provided no relevant evidence. Further, as set forth in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner…. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.” To be clear, the issue is not whether it would be fair for Respondent to publish the website it has published in connection with the Disputed Domain Name (a finding that this Panel does not address) but, rather, whether it is fair for Respondent to use a domain name that is (aside from inclusion of the irrelevant word “the”) identical to the DELL Trademark.
Accordingly, the Panel finds that Complainant has established its prima facie case and without any relevant evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview 3.0, section 3.1.4. Here, it is obvious that the DELL Trademark is famous or widely known given Complainant’s long usage of the mark and multiple registrations therefore, as well as the size of Complainant’s business using the mark.
Further, given Respondent’s use of the Disputed Domain Name in connection with a website that contains the DELL Trademark (as well as a stylized version of the DELL Trademark for which Complainant owns at least one registration), which website includes content described by Complainant (and not rebutted by Respondent) “to offer competing services,” it is apparent that the Disputed Domain Name creates a likelihood of confusion with the DELL Trademark, establishing bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Volvo Trademark Holding Aktiebolag v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2020-1070 (“Internet users seeing the Domain Name are likely to mistake it for a name related to or associated with Complainant” where respondent’s website offes copies of manuals about complainant’s goods); and Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) v. Gunay Vatansever, WIPO Case No. D2017-0490 (“The Domain Name is extremely likely to confuse Internet users trying to find the Complainant's official website or support channels for driver downloads. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. The use of the Trade Mark also makes a false representation, in favour of the Respondent's business, of a commercial connection with the Complainant or endorsement by it.”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thedellemc.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: October 12, 2021
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