Dell Inc. v. Muhammad Junaid / VM Sol
Claim Number: FA2302002032567
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia. Respondent is Muhammad Junaid / VM Sol (“Respondent”), PK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minidellpcs.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on February 20, 2023; Forum received payment on February 20, 2023.
On February 21, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <minidellpcs.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 February 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2023 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@minidellpcs.com. Also on February 23, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send emails to the Forum, see below.
On March 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant states that is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has also developed a family of businesses, collectively known as Dell Technologies, that offers products and services related to technology, software, security, and more. Dell Technologies provides the essential infrastructure for organizations to build their digital future, transform IT, and protect their most important asset, information. Over the years, Complainant has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Complainant has used television, radio, magazines, newspapers, and the Internet as marketing media. Complainant has been, and continues to be, extremely successful. Complainant sells its products and services in over 180 countries, including Pakistan. Complainant has generated $101.197 billion in revenue in Fiscal Year 2022 and is #31 on the Fortune 500. Complainant asserts rights in the DELL mark based upon its registration in the United States in 1994. The mark is registered elsewhere around the world (including in Pakistan) and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its DELL mark as it contains the mark in its entirety, merely adding the descriptive terms “mini” and “pcs” (both terms associated with “personal computers”) and the generic top-level domain (“gTLD”) “.com”.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainants DELL mark, nor is it commonly known by the disputed domain name. Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant: the resolving website displays a similar color scheme to Complainant’s official website, logos that are similar to Complainant’s logos, photos of Complainant’s products, and a “Contact Us” page that invites users to enter personal information. The resolving website purports to offer for sale Complainant’s products, and it offers services that compete with those of Complainant as well as unrelated services.
Respondent registered and uses the disputed domain name in bad faith. Respondent registered and uses the disputed domain name to pass off as Complainant to offer related and unrelated products and services. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its emails to the Forum, Complainant states, in pertinent part:
1. I can understand the Dell concerns with domain - minidellpcs.com. And agreed with you. As I didn't have idea that it's comes understand copyright. I buy this domain with not bad intentions. But, as you mentioned in the documents, so the best way to down or delete the website.
2. I can truly understand the concern of the (Complainant) that the domain I have to buy, uses for the sub-sale services of Dell Mini PCs. But now read the documents you shared with me. Before reading the (Complainant) concerns I was thinking maybe it's legal and can Dell will be supported we sale their services. Now I can see they don't allow someone to do work like this. What I can do? Delete the website ASAP. Down the domain. List for reseller - as i have invested a lot of time in this domain. There will be no hurdles from my side as I'm going to down the website. "When you read this email the website will get down, and the domain will be listed for resell. Note: my decision is clear - I have no plan to confront Dell. But [I have] deleted the website. And list[ed] the domain for sale.
3. I think the Dell authorities are right in this case. As I mentioned in my email before I was thinking my keeping these types of domains may not be issues. But I now understand that we cannot keep the domain with the brand name of the other companies. So, I will delete this website soon. I hope then the issue will be resolved - will do care next time to avoid such legalities.
4. [Here is] an update about the domain - https://www.minidellpcs.com/. I down the website. But I have 2 questions! (1) you can use it as a blog website to write about Dell PCs promotion of the Mini Dell PCs, tips etc. (2) nonprofit blog.
It its first emails to the Forum, Respondent appears to consent to transfer the disputed domain name to Complainant. However, it its last email, it appears to wish to retain the disputed domain name and potentially to use it in a way that would be different from the way it was used when the Complaint was filed.
In light of Respondent’s last email the Panel finds that Respondent has not consented to transfer the disputed domain name.
Complainant owns the mark DELL uses it to market computer products and services.
Complainant’s rights in its mark date back to 1994.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website offers services that compete with those of Complainant, as well as unrelated services.
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 disputed domain name contains Complainant’s DELL mark in its entirety, merely adding the descriptive terms “mini” and “pcs” (both terms associated with “personal computers”) and the generic top-level domain (“gTLD”) “.com”. Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or relevant or meaningless letters is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s DELL mark and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information for the disputed domain name lists the registrant as “Muhammad Junaid”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The resolving website offers services that compete with those of Complainant, as well as unrelated services. Previous Panels have found that this does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
As already noted, Respondent appears to wish to retain the disputed domain name and potentially to use it in a way that would be different from the way it was used when the Complaint was filed. Apart from the fact that Respondent does not provide any concrete evidence regarding possible future use of the disputed domain name, prior panels have refused to find good faith use and legitimate interest following changes to respondents’ websites made after a complaint was filed. See MB Financial Bank, N.A. v. MBBANK, FA0602000644517 (Forum April 4, 2006) (finding bad faith and no legitimate interest after noting “that the proper record for review of this dispute should be based on the website and Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact [without explanation]”); see also InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole, FA0309000198015 (Forum Nov. 10, 2003) (finding that respondent’s alteration of a website following commencement of the UDRP was “contrived to prevent Complainant from succeeding, not to make a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii)”); see also American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Forum July 27, 2010) (“This panel’s proper focus is on the <americanway.com> website that was contemporary with the filing of the Complaint. That website does not show Respondent to be making a bona fide offering or [sic] goods or services or fair use of its domain name.”).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
As already noted, possible future use of the disputed domain name is not relevant: the Panel will base its decision on the actual use at the time the Complaint was filed.
Also as already noted, the resolving website offers services that compete with those of Complainant, as well as unrelated services. Previous Panels have held that use of a disputed domain name to offer goods or services that are in competition with those of a complainant is evidence of bad faith attraction for commercial gain. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Bad faith has been found even where a respondent has commercially benefited through activity unrelated to a complainant’s business. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Thus, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: Respondent admits that it knew of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <minidellpcs.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 22, 2023
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