Dell Inc. v. amir heshmati
Claim Number: FA2110001970991
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is amir heshmati (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-dellservice.com>, registered with Key-Systems GmbH.
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 October 28, 2021; the Forum received payment on October 28, 2021.
On October 29, 2021, Key-Systems GmbH confirmed by e-mail to the Forum that the <dell-dellservice.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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-dellservice.com. Also on November 1, 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 November 24, 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 mark established by its ownership of its portfolio of trademark and service mark registrations described below and its extensive use of the mark in the sale of computers and related products.
Complainant submits that it sells its products and services in over 180 countries, has generated $92.2 billion in revenue in Fiscal Year 2020 and is listed as #34 on the Fortune 500.
Complainant submits that it, and its DELL mark, have become famous in the United States and many other jurisdictions, including the Middle East, because of its marketing and sales success.
Complainant contends that the disputed domain name <dell-dellservice.com> is identical or confusingly similar to Complainant’s DELL mark, as it incorporates the famous mark DELL in its entirety twice, tacking on the generic term “service” which is highly likely to be associated with Complainant’s services. Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant in an analysis under Policy ¶ 4(a)(i).
Complainant then submits that Respondent has no rights or legitimate interests in the disputed domain name, arguing 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 domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant.
Complainant refers to a screen capture of the website to which the disputed domain name resolves adduced in evidence in an annex to the Complaint. Respondent’s website is in Persian and Complainant has provided a translation into the English language by Google Translate.
Complainant points out that Respondent’s website prominently displays Complainant’s DELL marks and DELL logo. Additionally, Respondent’s website displays Complainant’s mark DELL in the web browser tab.
Complainant further complains that the homepage on Respondent’s website displays a blue and white color scheme, reminiscent of the color scheme used by Complainant on its official website and also features pictures of Complainant’s products and offers repair services for Complainant’s products.
Complainant adds that Respondent’s website has links to websites that offer services for Complainant’s competitors’ products e.g. Acer, HP, Lenovo, Asus.
Complainant further alleges that the screen capture shows that after falsely creating an association with Complainant as described above, Respondent is attempting to gather Internet users’ personal information through its “Contact Us” page (as translated by Google Translate), wherein Respondent requests that consumers provide their name, phone number, and email address.
Complainant submits that Respondent may commercially benefit by abusing that information and/or by selling that information to third parties.
Complainant asserts that Respondent is not an authorized provider of repair services for Complainant’s products. In addition, Complainant has not licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant.
Complainant concludes that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name; Respondent’s inclusion of DELL in the disputed domain name is not a nominative fair use, but instead Respondent’s use of the disputed domain name falsely conveys the impression that Respondent’s services are authorized or offered by Complainant; and Respondent has not used the domain name in connection with the bona fide offering of any goods or services.
Complainant then alleges that the disputed domain name was registered and is being used in bad faith, arguing that it is clear that Respondent knew of Complainant’s famous DELL marks based on Respondent’s use of a domain name incorporating Complainant’s mark for a website featuring the DELL marks and logo, as well as images of Complainant’s products. 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 adds that the use of the disputed domain name that is confusingly similar to Complainant’s famous DELL marks is evidence of bad faith.
Respondent’s bad faith is also clearly demonstrated by the evidence because the disputed domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is associated with Complainant. Furthermore, through his use of the disputed domain name, Respondent diverts consumers from Complainant’s business to Respondent’s business.
Complainant further alleges that Respondent is attempting to gather Internet users’ personal information after falsely creating an association with Complainant.
Complainant also contends that by 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.
Complainant adds that Respondent’s use of a confusingly similar domain name to promote services in direct competition with Complainant’s sale of those services, as well as services for Complainant’s competitors (e.g., Acer, HP, Lenovo, Asus) is further evidence of Respondent’s bad faith. See, e.g., Homer TLC, Inc. v. Above.com Domain Privacy, Case No. FA 1579386 (Forum October 13, 2014) (finding that registration of a domain name that featured Complainant’s well-known mark “together with the use of the domain name to promote competing goods or services in a manner designed to exploit confusion with Complainant and its mark, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, and other computer-related products and services and owns a number of trademark registrations for the DELL marks
· United States registered trademark, DELL (design)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 goods 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 goods in international class 37;
· United States registered service mark, DELL, registration number 2,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States registered trademark, registration number 2,808,852, registered on the Principal Register on January 27, 2004 for goods in international class 2;
· United States registered trademark and service mark, DELL (design), 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;
· International Trademark Registration DELL (figurative), registration number 1356494, registered on October 8, 2016 for goods and services in international classes 2, 9, 36, 37, 39, 40, 41, and 42.
Complainant has an established Internet presence and maintains its primary website at <www.dell.com>.
The disputed domain name was registered on September 13, 2021 and resolves to a website in the Persian language that has the same look and feel as Complainant’s website and purports inter alia to offer Complainant’s goods and repair services for Complainant’s products in Iran.
There is no information available about Respondent, 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 for the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal his identity on the published WhoIs. The Registrar disclosed to his identity in response to the request by the Forum.
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 and convincing evidence if its rights in the DELL mark established by its ownership of its portfolio of trademark and service mark registrations described above and its extensive use of the mark in the sale of computers and related products in over 180 countries which generated $92.2 billion in revenue in Fiscal Year 2020. Complainant has provided convincing third-party evidence of its assertions in the form of an article entitled “Global 500 - The Most Valuable Brands of 2021” published by Brand Finance.
The disputed domain name <dell-dellservice.com> consists of a repetition of Complainant’s DELL mark, in combination with a hyphen, the word “service” and the gTLD extension <.com>.
Complainant’s DELL mark is the initial, dominant and only distinctive element in the disputed domain name. The repetition of the word “dell” does not take away from its significance. The word “service” is descriptive and has no distinguishing character in contest and the hyphen is merely a punctuation. In context the gTLD extension would be rightly considered by Internet users to be a necessary technical requirement with no other significance.
This Panel finds therefore that the disputed domain name is confusingly similar to the DELL mark in which Complainant has rights and Complainant has therefore succeeded in the first element of 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 domain name, arguing 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;
· the disputed domain name resolves to a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant when it is not;
· a translation from Persian into English of a screen capture of the website to which the disputed domain name resolves adduced in evidence in an annex to the Complaint shows that Respondent’s website prominently displays Complainant’s DELL mark and Complainant’s DELL logo without authorization or license;
· Respondent’s website also displays Complainant’s mark DELL in the web browser tab without license or permission;
· the homepage on Respondent’s website displays a blue and white color scheme is reminiscent of the color scheme used by Complainant on its official website and also features pictures of Complainant’s products and offers repair services for Complainant’s products;
· Respondent’s website has links to websites that offer services for Complainant’s competitors’ products e.g. Acer, HP, Lenovo, Asus;
· the translated screen capture shows that it is possible that Respondent is attempting to gather Internet users’ personal information for abusive purposes through a Contact Us page, wherein Respondent requests that consumers provide their name, phone number, and email address;
· Complainant asserts that Respondent is not an authorized provider of repair services for Complainant’s products, nor has Complainant licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant;
· Respondent is not making a legitimate noncommercial or fair use of the domain name; Respondent’s inclusion of DELL in the domain name is not a nominative fair use, but instead Respondent’s use of the disputed domain name falsely conveys the impression that Respondent’s services are authorized or offered by Complainant; and
· Respondent has not used the domain name in connection with the bona fide offering of any goods or services.
It is well established that once a Complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name the burden of production shifts to the respondent to prove the existence of such rights or interests.
Complainant has failed to discharge the burden of production 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).
This Panel accepts that Complainant’s DELL mark has become famous across the world including Iran, as shown by the third-party evidence adduced in the form of an article entitled “Global 500 - The Most Valuable Brands of 2021” published by Brand Finance.
It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its mark, goodwill and reputation when the disputed domain name was registered.
Having considered the evidence, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant, its rights and reputation and to attract and divert Internet traffic to Respondent’s website.
This finding is supported by the fact that the disputed domain name was so quickly used to resolve to a website on which Respondent purports to misrepresent himself as being Complaint, or having an authorized relationship with Complainant.
The evidence shows that Respondent is using the disputed domain name to resolve to his website by intentionally attempting to divert Internet traffic and attract Internet, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
To achieve this end, Respondent has created a website with the look and feel of Complainant’s website. He uses Complainant’s trademark and logo without permission.
Of great concern is that Respondent is using Complainant’s trademark in the disputed domain name to attract Internet users to his website on which visitors are provided with links to third party competitors of Complainant.
This Panel finds therefore that the disputed domain name has been registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to be granted the remedy requested.
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-dellservice.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 26, 2021
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