Dell Inc. v. Steven Hall
Claim Number: FA2202001985584
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Steven Hall (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellvisualresearch.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 February 23, 2022; the Forum received payment on February 23, 2022.
On February 24, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <dellvisualresearch.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2022 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@dellvisualresearch.com. Also on February 24, 2022, 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 March 21, 2022 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 trademark established by its ownership of its portfolio for trademark and service mark registrations set out below and at common law by the goodwill it has established in the DELL mark through its sales of DELL branded goods and services in over 180 countries, which generated $94.2 billion in revenue in fiscal year 2021 and is ranked #28 on the Fortune 500 list of companies.
Complainant submits that as a result of its marketing and sales success, its DELL mark has become famous in the United States and many other jurisdictions.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s DELL marks, arguing specifically, that the disputed domain name incorporates the mark in its entirety, tacking on the terms “visual” and “research,” which it argues are both highly likely to be associated with Complainant’s products and services.
Complainant adds that the presence of the generic Top-Level Domain extension (“gTLD”) extension <.com> is irrelevant in an analysis for the purpose of Policy ¶ 4(a)(i). Trip Network Inc. v. Alviera, Case No. FA0914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis).
Next Complainant alleges 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, and asserting that Complainant has not licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant.
Referring to a screen capture annexed to the Complaint which an image of the website to which the disputed domain name resolves, Complainant states that it is essentially blank page entitled “Index of /”, and submits this is a standard page result, returned when a website is not correctly set up.
Complainant submits that the screen capture illustrates that Respondent has neither 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.
Complainant also refers to copy emails exhibited in an annex to the Complaint and submits that they show that Respondent is apparently using the disputed domain name to perpetrate a scheme, wherein Respondent appears to be fraudulently ordering laptops from Complainant and sending them to unsuspecting entities in the United States.
Subsequently, Respondent impersonates Complainant and contacts these entities, using an email address associated with the disputed domain name, namely, [name supplied but redacted by Panel]@dellvisualresearch.com.
Respondent deceptively informs the unknowing entity that the shipment was a mistake and asks that the laptops be returned. Respondent then purports to schedule a common carrier to pick up the fraudulently ordered laptops which are then presumably delivered to Respondent, completing the scheme.
Complainant submits that these exhibited emails, sent by Respondent to its victims, show that Respondent impersonated Complainant by writing to its customers from the abovementioned email address associated with the domain name in dispute and claiming to be “Dell visual warehouse research,” which appears in the signature line of most of the emails. Complainant asserts that this “Dell visual warehouse research” has no affiliation with Complainant.
Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the domain name.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent clearly knew of Complainant’s famous DELL marks and its rights when the disputed domain name containing Complainant’s DELL mark in its entirety, was registered.
Complainant further alleges that the disputed domain name is being used in bad faith to blatantly impersonate Complainant.
Moreover, Complainant argues that the use of a domain name that is confusingly similar to Complainant’s DELL marks is in itself evidence of bad faith.
Complainant repeats as alleged above that Respondent is using the disputed domain name to impersonate Complainant, to send fraudulent emails to Complainant’s customers in pursuance of a fraudulent email scheme.
Complainant adds that Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the disputed domain name; the disputed domain name does not consist of the legal name of or names commonly used to identify Respondent; Respondent has not used the disputed domain name in connection with a bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the DELL mark in a site accessible under the disputed domain name; and Respondent’s domain name incorporates exactly the famous DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures computers, computer accessories, and other computer-related products and provides related services under the DELL mark for which it owns a portfolio of registrations including the following:
· United States registered trademark DELL, 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 services 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 services 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 DELL, 2,808,852, and registered on the Principal Register on January 27, 2004 for goods in international class 2; and
· United States trademark and service mark DELL, registration number 3,215,023; and registered on the Principal Register on March 6, 2007 for goods and services in international classes 2, 9, 36, 37, 40 and 42.
Complainant has an established Internet presence, hosting its official website at <www.dell.com>.
The disputed domain name <dellvisualresearch.com> was registered on February 9, 2022 and resolves to an undeveloped web page containing only the words “Index of / Name Last modified Size Description cgi-bin/ 2022-02-09 16:30” but which has been used to create an email account from which Respondent is sending emails purporting to come from Complainant to Complainant’s customers without Complainant’s consent.
There is no information available about Respondent, who is the registrant of the disputed domain name, except for that provided in the Complaint, the Complainant’s WhoIs and the information provided by Registrar in response by the Forum for registration of the disputed domain name in the course of this proceeding.
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 provided convincing evidence that it has rights in the DELL mark, established by its ownership of its portfolio of trademark registrations described above and extensive use of the mark in its business manufacturing and supplying computers and related goods and services.
The disputed domain name <dellvisualresearch.com> consists of Complainant’s DELL mark, in combination with the words “visual” and “research” and the generic Top Level Domain “(gTLD”) extension <.org>.
Complainant’s DELL mark is the initial, dominant, and only distinctive element of the disputed domain name. The mark is clearly identifiable in the disputed domain name, and the other elements “visual” and “research” have no distinguishing character.
The gTLD extension <.com> does not prevent a finding of confusing similarity as Internet users would understand it to be a necessary technical requirement for a domain name registration.
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 legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant.
· The screen capture of the website to which the disputed domain name resolves is merely a blank page entitled “Index of /”, which Complainant submits is a standard page returned when a website is not correctly set up;
· Said screen capture illustrates that Respondent has neither 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 copy emails exhibited in an annex to the Complaint show that Respondent is apparently using the disputed domain name to perpetrate a fraudulent scheme by using the disputed domain name to create an email account to send emails purporting to come from Complainant;
· Therefore Respondent is not making a legitimate noncommercial or fair use of the domain name.
· Given the incorporation of Complainant’s DELL mark in its entirety into the disputed domain name, Respondent may intend to sell the disputed domain name based on the value of the DELL mark or may use the disputed domain name for a website address would be highly likely to cause consumers to mistakenly believe that Respondent, or Respondent’s website is, or is authorized by, Complainant;
It is well established that once a Complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s trademark rights predate the registration of the disputed domain name. Complainant has shown that it has a global business with sales in over 180 countries, which generated $94.2 billion in revenue in Fiscal Year 2021 and is #28 on the Fortune 500.
It is most implausible that the registrant of the disputed domain name was unaware of Complainant when the disputed domain name was chosen and registered.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the DELL mark.
The uncontested evidence shows that the disputed domain name does not resolve to any active website but instead has been used to create an email account from which emails are being sent to Complainant’s customers, impersonating Complainant.
It is not necessary for this Panel to determine whether Complainant’s allegations that Respondent is purporting to carry out a fraudulent email scam. The content of the copy email correspondence adduced in evidence in the annex to the Complaint are sufficient for this Panel to find on the balance of probabilities the disputed domain name has been used, without Complainant’s consent or authority to create an email account which is being used to impersonate Complainant.
Such use of the disputed domain name must disrupt Complainant’s business and so this Panel finds that the disputed domain name is being used in bad faith.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellvisualresearch.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman
Panelist
Dated: March 23, 2022
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