Dell Inc. v. mr dell / flashiness
Claim Number: FA2206001999636
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is mr dell / flashiness (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jobs-dell.com> and <jobs-dell.xyz>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2022; the Forum received payment on June 8, 2022.
On June 8, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <jobs-dell.com> and <jobs-dell.xyz> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@jobs-dell.com, postmaster@jobs-dell.xyz. Also on June 14, 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 July 10, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DELL trademark established by its ownership of the portfolio of trademark and service mark registrations described below and extensive use of the mark in its business in over 180 countries, including Canada where Respondent purports to be based, which generated revenue of $94.2 billion in the Fiscal Year 2021 and states that it is ranked #28 on the Fortune 500.
Complainant submits that the disputed domain names are each identical to or confusingly similar to the DELL mark in which it has rights because each incorporates the mark exactly, prefaced by the generic term “jobs,” which is highly unlikely to distinguish the disputed domain names from Complainant’s DELL mark.
Moreover, with the exception of a single character, the disputed domain name <jobs-dell.com> domain name is identical to Complainant’s official site at jobs.dell.com, which constitutes a classic example of typosquatting designed to take advantage of Internet users’ typographical errors and redirect them to Respondent’s site instead of Complainant’s official site. Prior panels have concluded that the addition of a generic top-level domain (here, <.com> and <.xyz>) to a complainant’s trademark is insufficient to distinguish a domain name from a trademark. See Omaha Steaks International, Inc. v. Domain Manager / Future Movie Names, Case No. FA 1610127 (Forum April 22, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the corrupted string in a domain name”).
Complainant submits that Respondent has no rights legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names, which also supports a finding of no rights or legitimate interests in the name.
Referring to the WhoIs information disclosed by the Registrar in the course of this proceeding, Complainant submits that the disputed domain names are each registered to “mr dell” of the organization “flashiness,” and no section of the WhoIs information for the disputed domain names contains the phrase “jobs.”
Correspondingly, each of the disputed domain names includes the element “dell,” but does not include Respondent’s full name, nor does it contain any part of Respondent’s alleged organization, “flashiness”.
Complainant argues that while Respondent’s name may include “dell,” there is no evidence that Respondent or his business is commonly known simply as “mr dell” or as “jobs-dell.” In fact, the WHOIS information indicates that Respondent’s business is called “flashiness.”
Complainant adds that the fact that Respondent’s name purportedly contains “dell” does not prevent a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant further submits that Respondent owns no trademark or other intellectual property right in the domain name and asserts that Complainant has not authorized Respondent to register or use the disputed domain names.
Complainant contends that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Screenshots of the webpages to which the disputed domain names resolve, that are annexed to the Complaint, show instead, that when the disputed domain names are entered into an Internet Explorer browser, they lead to an error page supplied by the Registrar, which states “SORRY! If you are the owner of this website, please contact your hosting provider.” When the disputed domain names are entered into a Google Chrome browser, the page at <jobs-dell.xyz> is the same; however, <jobs-dell.com> resolves to a page displaying a security warning, informing the user that the website is deceptive and may trick users into downloading malicious software or entering personal information.
Complainant contends that such failure to use the disputed domain names, as Respondent is doing, is evidence that the Respondent has no rights or legitimate interests in either of them, nor is Respondent putting either of the disputed domain names to a legitimate noncommercial or fair use.
Complainant next alleges that the disputed domain names were registered and are being used in bad faith arguing that the use of a domain name that is confusingly similar to Complainant’s famous DELL mark is evidence of bad faith.
The disputed domain names subsume the DELL mark in its entirety. Such use of Complainant’s mark in the disputed domain names is evidence of bad faith. See Dell Inc. v. ASTDomains, WIPO Case No. D2007-1819. (“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 Respondent’s failure to use the disputed domain names evidences bad faith. See LifeBEAM Technologies, Ltd v. Nileshkumar Lakhani, FA 1757327 (“Complainant provides a screenshot of the current webpage located at the disputed domain name, which contains the message “SORRY! If you are the owner of this website, please contact your hosting provider.” . . . The Panel agrees that Respondent does not make an active use of the domain name, and thus registered and uses the disputed domain name in bad faith.”).
Complainant further submits that the use of a privacy service to register the disputed domain names gives rise to a rebuttable presumption of Respondent’s bad faith. See Baylor University v. Domain Administrator c/o Fundacion Private Whois, FA 1541455 (“the disputed domain name is registered with a privacy service. In the commercial context, this raises the rebuttable presumption Respondent registered and uses the disputed domain name in bad faith,” finding Respondent’s failure to rebut this presumption “sufficient to find bad faith registration and use”).
The fact that the disputed domain names purportedly include the element “dell” does not prevent a finding of bad faith registration and use and previous panels established under the Policy have found bad faith use and registration in similar situations.
Complainant adds that Respondent’s provision of apparently false contact information in the WHOIS record associated with the disputed domain name, as described above, is additional evidence of bad faith. Hoffmann-La Roche Inc. v. Jonathan Mason, WIPO Case No. D2013-0906 (finding bad faith, in part, because respondent provided false contact details).
In conclusion, Complainant submits 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 names; the disputed domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the disputed domain names; and the disputed domain names incorporate exactly the famous DELL mark. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures and markets computers and related products and provides related services for which it uses the DELL trademark and service mark. Complainant is the registered owner of a portfolio of trademark and service mark
United States trademark registration DELL (stylized) registration number 1,860,272, registered on the Principal Register on October 25, 1994 for goods in international class 9;
· United States service mark registration DELL registration number 2,236,785, registered on the Principal Register on April 6, 1999 for services in international class 40;
· United States trademark registration DELL registration number 2,794,705, registered on the Principal Register on December 16, 2003 for goods in international class 9;
· United States service mark registration DELL registration number 2,806,769, registered on the Principal Register on January 20, 2004 for services in international class 37;
· United States service mark registration DELL registration number 2,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States trademark registration DELL registration number 2,808,852, registered on the Principal Register on January 27 2004 for goods in international class 2;
· United States trademark and service mark registration DELL (stylized) registration number 3,215,023 registered on the Principal Register on March 6, 2007 for goods and services in integrational classes 2, 9, 36, 37, 40 and 42;
· Canadian registered trademark DELL, registration number TMA603306, registered on February 26, 2004 for the following services “maintenance and repair of computer hardware; installation of computer networks; installation of computer systems”
· Canadian registered trademark DELL, registration number TMA624741, registered on September 17, 2002 for “Printers; personal and handheld computers; computer hardware and computer peripherals, namely modems, computer cables, computer styli, handheld computers, including handheld computers with wireless email and wireless access to electronic communications networks; projectors; and instruction manuals sold there with as a unit all the aforesaid goods”; and
· Canadian registered trademark DELL, registration number TMA357503, registered on June 23, 2019 for the following wares/merchandises: “Computers; computer peripheral devices, accessories and parts therefor; computer software; computer documentation” and for the following services “Repair and maintenance services for computer equipment; user support services for computer software.”
Complainant has an established Internet presence and maintains its official United States of America website at <www.dell.com> and its official Canadian website at <www.dell.com/en-ca>.
The disputed domain name <jobs-dell.com> was registered on February 15, 2022.
The disputed domain name <jobs-dell.xyz> was registered on April 1, 2022.
Each of the disputed domain names resolve to inactive pages, differing depending on the browser used to access them, as described above in the Complaint and discussed below in the reasoning of this decision.
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 details of the registration of the disputed domain name.
The registrant of each of the disputed domain names availed of a privacy service to conceal his identity on the published WhoIs and in the course of this proceeding the Registrar disclosed that Respondent is the registrant.
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 uncontested evidence to prove that on the balance of probabilities it has rights in the DELL mark, established by its ownership of its portfolio of trademark- and service mark- registrations described above and extensive use of the mark in its business as a manufacturer of computers and provider of related products and services with a global reach, in 180 countries, including Canada where Respondent purports to be based and having generated a revenue of $94.2 billion in the Fiscal Year 2021.
Each of the disputed domain names <jobs-dell.com> and <jobs-dell.xyz> consists of Complainant’s DELL trademark preceded by the word “jobs” and a hyphen, and followed by the respective gTLD extension <.com> and <.xyz>.
Complainant’s DELL mark is the dominant and only distinctive element in each of the disputed domain names.
The element “jobs” is descriptive and in a domain name tends to infer a human resource function. It has no distinguishing character in the disputed domain names and in neither case does it prevent a finding of confusing similarity between the disputed domain name and the DELL mark.
The hyphen has no function or character in the context of the disputed domain names, except that by separating the elements “jobs” and “dell”, it serves to emphasize each element.
The gTLD extensions <.com> and <.xyz>would in each case be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between either of the disputed domain names and Complainant’s DELL mark.
This Panel finds therefore that each of the disputed domain names <jobs-dell.com> and <jobs-dell.xyz> 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 names;
· the WhoIs information disclosed by the Registrar in the course of this proceeding, shows that the disputed domain names are each registered to “mr dell” of the organization “flashiness” and no section of the WhoIs information for the disputed domain names contains the phrase “jobs”;
· the disputed domain names each includes the element “dell,” but does not include Respondent’s full name, nor does either contain any part of Respondent’s alleged organization, “flashiness”;
· while Respondent’s name may include “dell,” there is no evidence that Respondent or his business is commonly known simply as “mr dell” or as “jobs-dell” and in fact, the WHOIS information indicates that Respondent’s business is called “flashiness”;
· the fact that Respondent’s name purportedly contains “dell” does not prevent a finding that the Respondent lacks rights or legitimate interests in the disputed domain names;
· Respondent owns no trademark or other intellectual property right in the disputed domain names and Respondent has not authorized Respondent to register or use the disputed domain names;
· screen captures of the webpages to which the disputed domain names resolve, that are annexed to the Complaint, show that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Instead, when the disputed domain names are entered into an Internet Explorer browser, they each lead to an error page supplied by the Registrar, which states “SORRY! If you are the owner of this website, please contact your hosting provider”; when the disputed domain names are entered into a Google Chrome browser, the page to which <jobs-dell.xyz> resolves is the same; however, the domain name <jobs-dell.com> resolves to a page that displays a security warning, informing the user that the website is deceptive and may trick users into downloading malicious software or entering personal information;
· Respondent’s failure to use the disputed domain names is evidence that the Respondent has no rights or legitimate interests in either of them and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a 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 therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
When the disputed domain names <jobs-dell.com> and <jobs-dell.xyz> were chosen and registered on February 15, 2022 and April 1, 2022, respectively, Complainant had already established an enormous pre-existing international reputation with a global reach, in 180 countries, including Canada where Respondent purports to be based and had generated a revenue of $94.2 billion in the previous Fiscal Year.
Given the long and extensive international reputation of Complainant, which ranks #28 on the Fortune 500, it is implausible that the registrant of the disputed domain names was unaware of Complainant when the disputed domain names were chosen and registered.
On the balance of probabilities therefore, the disputed domain names must have been chosen and registered to target and take predatory advantage of Complainant’s mark and goodwill in the DELL mark.
The uncontested evidence in the screen captures annexed to the Complaint shows that when the disputed domain names are entered into an Internet Explorer browser, they each lead to an error page supplied by the Registrar, which states “SORRY! If you are the owner of this website, please contact your hosting provider.” When the disputed domain names are entered into a Google Chrome browser, the page to which the disputed domain name <jobs-dell.xyz> resolves is the same; however, the page to which the disputed domain name <jobs-dell.com> resolves, displays a security warning, informing the user that the website is deceptive. Complainant has alleged that this website may trick users into downloading malicious software or entering personal information but this is a mere unsubstantiated allegation which does not assist Complainant’s case in the least.
However, taking into account the high degree of distinctiveness and extensive reputation of Complainant’s mark, Respondent’s failure to submit a response or to contest any of the allegations made in the Complaint, Respondent’s failure to provide any evidence of actual or contemplated good-faith use of the disputed domain names, Respondent’s clear failure to provide a full and correct registration details for the disputed domain names, and the implausibility of any good faith use to which the disputed domain names may be put, this Panel finds that the evidence shows that this passive holding of the disputed domain names, on the balance of probabilities constitutes bad faith use.
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 <jobs-dell.com> and <jobs-dell.xyz> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 11, 2022
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