Dell Inc. v. Fu Jian Zhou / Cheng Du Si Wei De Li Ke Ji You Xian Gong Si
Claim Number: FA2207002003168
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Fu Jian Zhou / Cheng Du Si Wei De Li Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellvip.com>, (‘the Domain Name’) registered with Chengdu West Dimension Digital Technology Co., Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2022; the Forum received payment on July 6, 2022. The Complaint was submitted in both Chinese and English.
On July 6, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <dellvip.com> Domain Name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 July 12, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 1, 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@dellvip.com. Also on July 12, 2022, the Chinese and English language 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 August 5, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA for computers and related goods and services with first use recorded as 1987. It operates a web site at www.dell.com.
The Domain Name registered in 2015 incorporates the Complainant’s DELL mark in its entirety merely adding the generic term ‘vip’ and the generic top level domain ‘.com’ neither of which diminish the similarity between the Domain Name and the Complainant’s registered trade mark.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and although they used to be a partner of the Complainant and so are aware of the Complainant, its business, rights and services, they are not currently authorized by the Complainant. The Complainant never authorized the Respondent to use the DELL mark in the Domain Name.
The Domain Name is being used for a web site displaying the message ‘Feel sorry! This site has been stopped by the administrator, please contact the administrator for details!’ This is effectively passive use and not a bona fide offering of goods or services or a legitimate non commercial fair use of the Domain Name. Passive use in these circumstances is bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the famous mark DELL registered, inter alia, in the USA for computers and related goods and services with first use recorded as 1987. It operates a web site at www.dell.com.
The Domain Name registered in 2015 points to a site bearing the message ‘Feel sorry! This site has been stopped by the administrator, please contact the administrator for details!’
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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”).
The Domain Name consist of, inter alia, the Complainant's DELL mark (which is registered, inter alia in the USA for computer related goods or services and has been used since 1987), the generic term ‘vip’ and the gTLD ‘.com’.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘vip’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Name from the DELL mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Respondent is not currently authorized to use the DELL mark. The Respondent does not appear to be commonly known by 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).
The Domain Name does not resolve to an active web site. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i).).
The Respondent has not answered this Complaint and has not provided any explanation.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Complainant admits that the Respondent used to be a partner of the Complainant but asserts, although it has not provided evidence that, the Respondent was not authorized to register the Domain Name at the time it was registered. However, where a respondent registers a domain name under an affiliation agreement with a complainant but subsequently fails to cease use of the mark following the end of the agreement, the Panel may infer respondent never intended to respect complainant’s trademark rights under the affiliation agreement and the Panel may find bad faith registration under Policy paragraph 4(a)(iii). See CrossFit, Inc. v. Yen Nguyen / CrossFit AVA, FA1806001789786 (Forum July 9, 2018) (“Bad faith registration may be inferred given that the affiliate agreement was effectively terminated yet Respondent nevertheless continued to use the confusingly similar at-issue domain name. Given Respondent’s behavior after its license to use the domain name lapsed, it is reasonable to find that Respondent had no intention of respecting Complainant’s trademark rights at the time Respondent registered the at-issue domain name but rather intended to use the domain name whether or not it had a license to do so.”)
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs 4 (b)(iii) and has satisfied the third limb 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 <dellvip.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 5, 2022
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