Dell Inc. v. Ashish Srivastav / KRISHNA PRINT SOLUTIONS
Claim Number: FA2207002005585
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Ashish Srivastav / KRISHNA PRINT SOLUTIONS (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delloffices.com>, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2022; the Forum received payment on July 25, 2022.
On July 26, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delloffices.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 July 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@delloffices.com. Also on July 28, 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 August 18, 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 and service mark established by its ownership of the portfolio of registrations described below and its extensive use of the mark as a manufacturer of computers, computer accessories, and provider of other computer-related products and services.
Complainant submits that it has been, and continues to be, extremely successful and its products are sold and services provided in over 180 countries, generating a revenue of $94.2 billion in the fiscal year 2021 and ranking as #28 on the Fortune 500. Complainant specifically submits that with more than 23 percent of the market in 2021, it is one of the top three PC makers in India where Respondent is situated.
Complainant adds that as a consequence of its marketing and sales success, its DELL mark has become famous in the United States and many other countries, including India.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s DELL mark as it incorporates the famous mark DELL in its entirety, tacking on the generic term “offices” which is an addition that does not diminish the similarity between the disputed domain name and Complainant’s DELL mark.
Complainant adds that the presence of a generic top-level domain extension <.com> is irrelevant in an analysis under Policy ¶ 4(a)(i). Citing ROBBINS RESEARCH INTERNATIONAL, INC. v. Hanok Vijaya Neethipudi / 24 global, FA 1989776 (Forum Apr. 27, 2022) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”) (quoting Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002).
Complainant next alleges that Respondent has no rights or legitimate interests in the domain name arguing that Respondent is not commonly known by the disputed domain name.
Complainant adds that Respondent is not an authorized provider of Complainant’s products or services, nor is Respondent an authorized provider of Complainant’s products or services.
Complainant further asserts that it has not licensed or otherwise permitted Respondent to use its DELL Marks, or any other mark owned by Complainant.
Complainant further submits 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, but rather, the disputed domain name is being used for a succession of websites that attempt to deceive consumers into thinking that Respondent or Respondent’s business is Complainant’s business, or is affiliated or connected with, or authorized by, Complainant.
Referring to a screen capture of the website to which the disputed domain name resolved which is exhibited in an annexed to the Complaint, Complainant specifically alleges that until at least as late as May 26, 2022, the disputed domain name resolved to a website that featured a banner at the top of each page that prominently displayed Complainant’s DELL mark and called itself “DELL LAPTOP SERVICE CENTER.”
Moreover, the home page of the website displayed the heading “Our Products” above images and descriptions of Complainant’s products and advertised purported on-site repair, technical experience, and onsite software support services. Respondent referred to itself multiple times as “DELL” in the description of its business, making statements like “Prior to any onsite assistance, DELL may initiate and perform remote diagnostics using electronic remote support solutions to access covered products. . .” and “Dell Laptop Service Centre has a quality stock of genuine Laptop Accessories and Laptop Spare Parts for all branded laptops and sell at best laptop price in India (sic) as compared to other service providers in the market.”
Complainant furthermore relies on the evidence that the annexed exhibit shows that website to which the disputed domain name featured a blue and white color scheme which is like Complainant’s official website and also included a contact page with both a phone number <@gmail.com> email address, neither of which is associated with Complainant.
Complainant further submits screen shot exbibits that show that the disputed domain name subsequently began directing users to an incomplete website that prominently displayed the heading “Dell Service Center.” This page at the disputed domain name otherwise appeared to be a template website page for a blog, including untitled links to: “Blog 1,” “Blog 2,” “Blog 3,” and “Blog 4” with generic “Lorem ipsum . . .” Latin text underneath. Therefore, at the time, Complainant could only conclude that Respondent was planning to continue its unauthorized impersonation of Complainant on a Dell Service Center blog site.
The annexed, exhibited screen captures further show that as early as July 26, 2022, the disputed domain name resolved to a website that prominently featured the DELL mark, Complainant’s logo, and photos of Complainant’s products; purported to offer DELL parts and onsite laptop and desktop repair services that directly competed with Complainant’s offerings; featured a blue and white color scheme similar to Complainant’s official website; and featured a phone number that is not associated with Complainant.
Moreover, oddly, when one clicks on the “All Products” link at the top of the homepage, the products offered are organic foods, which is directly at odds with how the site is portrayed to offer Complainant’s products and services elsewhere.
Arguing that Respondent’s inclusion of DELL mark in the disputed domain name is not a nominative fair use, Complainant submits that therefore Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Further alleging that the disputed domain name was registered and is being used in bad faith, Complainant alleges that Respondent owns no trademark or other intellectual property rights in the domain name; the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain name 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 name; and Respondent’s disputed domain name incorporates exactly the famous DELL mark. See 15 U.S.C. §1125(d)(1)(B)(i).
Complainant further contends that it is clear that Respondent knew of Complainant’s famous DELL mark, because Respondent used the disputed domain name to host a website which used Complainant’s DELL mark, displayed images and descriptions of Complainant’s DELL products, and targeted Complainant’s customers.
Repeating that Respondent is not an authorized provider of Complainant’s products or services, Complainant asserts that at no time has Complainant authorized Respondent to incorporate its DELL mark into a domain name, nor is Complainant currently licensing or otherwise permitting Respondent to use its DELL mark, or any other mark owned by Complainant. Complainant contends that therefore Respondent’s use of the disputed domain name that is confusingly similar to Complainant’s famous DELL mark is evidence of bad faith.
Further, Complainant submits that not only is the disputed domain name itself highly likely to cause confusion, but the evidence shows that it is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is associated with Complainant.
Complainant contends that by using the disputed domain name for a succession of web pages displaying the DELL mark that purport 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. Furthermore, through its use of the disputed domain name, Respondent diverts consumers from Complainant’s business to Respondent’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant is a manufacturer of computers, computer accessories, and other computer-related products and provides related services marketed under the DELL mark for which it owns a portfolio of registrations including in India where Respondent is situated, a representative selection being as follows:
· 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 (figurative), 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.
· Indian registered trade mark DELL, registration number 1190375, registered on May 9, 2005 for goods in class 2.
Complainant has an established Internet presence, hosting its official website at <www.dell.com>. The disputed domain name <delloffices.com> was registered on May 4, 2022 and is being used for a succession of websites that attempt to deceive consumers into thinking that Respondent is Complainant, or that Respondent’s business is owned by, affiliated with, connected to, or authorized by, Complainant.
There is no information available about Respondent, except for that provided in the Complaint, as amended, 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 of the disputed domain name for the purposes of this proceeding.
The Registrar confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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 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 computers, computer accessories, and other computer-related goods and services business.
The disputed domain name <delloffices.com> consists of Complainant’s mark in its entirety, in combination with the element “offices” and the generic Top Level Domain (“gTLD”) extension <.com>
Complainant’s DELL mark is the initial, dominant and only distinctive element in the disputed domain name.
Neither the generic element “offices” has no distinguishing character in context, and the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore the presence of neither element prevents a finding of confusing similarity between the disputed domain name and Complainant’s DELL mark.
This Panel finds therefore that the disputed domain name <delloffices.com> 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;
· Respondent is not an authorized provider of Complainant’s products or services;
· Respondent is not an authorized provider of Complainant’s products or services;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL mark, or any other mark owned by Complainant;
· 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, but rather, the disputed domain name is being used for a succession of websites that attempt to deceive consumers into thinking that Respondent or Respondent’s business is in fact Complainant’s business or is affiliated with, connected to, or authorized by, Complainant;
· a screen capture of the website to which the disputed domain name resolved as late as May 26, 2022, exhibited with the Complaint, shows that the website featured a banner at the top of each page that prominently displayed Complainant’s DELL mark and called itself “DELL LAPTOP SERVICE CENTER”;
· the home page of the website displayed the heading “Our Products” above images and descriptions of Complainant’s products and advertised purported on-site repair, technical experience, and onsite software support services on which Respondent referred to himself multiple times as “DELL” in the description of its business, making statements such as “Prior to any onsite assistance, DELL may initiate and perform remote diagnostics using electronic remote support solutions to access covered products. . .” and “Dell Laptop Service Centre has a quality stock of genuine Laptop Accessories and Laptop Spare Parts for all branded laptops and sell at best laptop price in India (sic) as compared to other service providers in the market.”;
· the annexed exhibit shows that website to which the disputed domain name featured a blue and white color scheme which is like Complainant’s official website and also included a contact page with both a phone number <@gmail.com> email address, neither of which is associated with Complainant;
· an exhibited screen shot shows that the disputed domain name subsequently began directing users to an incomplete website that prominently displayed the heading “Dell Service Center.” This page at the disputed domain name otherwise appeared to be a template website page for a blog, including untitled links to: “Blog 1,” “Blog 2,” “Blog 3,” and “Blog 4” with generic “Lorem ipsum . . .” Latin text beneath indicating that Respondent was planning to continue its unauthorized impersonation of Complainant on a “Dell Service Center” blog site;
· the exhibited screen captures further show that as early as July 26, 2022, the disputed domain name leads to a website that prominently featured the DELL mark, Complainant’s logo, and photos of Complainant’s products; purporting to offer DELL parts and onsite laptop and desktop repair services that directly compete with Complainant’s offerings, and featuring a blue and white color scheme similar to Complainant’s official website as well as a phone number that is not associated with Complainant, but when one clicks on the “All Products” link at the top of the homepage, the products offered are organic foods, which is directly at odds with how the site is portrayed to offer Complainant’s products and services elsewhere;
· Respondent’s inclusion of DELL mark in the disputed domain name is not a nominative fair use, and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
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.
For completeness, it should be noted that, while it is not strictly necessary, but in the absence of a Response, this Panel has considered how these circumstances might align with the principles outlined in the seminal decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 which has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In the present case, the text and other content however misrepresents to the public that the website is owned by, has a connection with, or is endorsed by Complainant and therefore it does not accurately disclose Respondent’s relationship with Complainant. Furthermore the uncontested evidence shows that the “All Products” link on Respondent’s website leads to offerings of organic foods which have no connection whatsoever with Complainant’s computer products and services. Therefore, considering the evidence on the record and in the absence of any response from Respondent to Complainant’s argument, Respondent therefore could not avail of a defense based on the Oki Data principles.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the extent and strength of the Complainant’s proven prior rights and reputation, in the DELL name and mark across the world including India, where Respondent purports to be situated, it is implausible that the registrant chose and registered the disputed domain name without knowledge of Complainant, its rights and its mark.
The disputed domain name is composed of Complainant’s mark, as its initial, dominant and only distinctive feature in combination with the generic word “offices” which is lacking in any distinctiveness.
In the absence of any explanation from Respondent, this Panel must find on the balance of probabilities that the disputed domain name was chosen and registered to target and take predatory advantage of the reputation and goodwill of Complainant and its DELL mark.
This Panel finds therefore the disputed domain name was registered in bad faith.
The uses to which the disputed domain name has been put, as illustrated by the screen captures of the websites to which the disputed domain name has resolved since its registration, show that Respondent has used the website to impersonate Complainant and to give the impression that Respondent and the services he offers are in some was associated with Complainant. The DELL mark prominently placed as it is, within the disputed domain name and Respondent’s website address will on the balance of to attract, confuse and misdirect Internet traffic intended for Complainant away to Respondent’s websites.
The uncontested evidence also shows that the content of one of Respondent’s websites to which the disputed domain name resolved contains links to organic food products which have no connection with Complainant or its DELL mark.
Such intentional use of the disputed domain name in an attempt 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 web site and the services purported to be offered by Respondent on his web site, constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is 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 <delloffices.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman
Panelist
Dated: August 22, 2022
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