Dell Inc. v. Ofosu Kenneth / Private person
Claim Number: FA2304002038576
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is Ofosu Kenneth / Private person (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-purchase.com>, registered with Regtime Ltd..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Russian and English Complaint to Forum electronically on April 3, 2023; Forum received payment on April 3, 2023.
On April 7, 2023, Regtime Ltd. confirmed by e-mail to Forum that the <dell-purchase.com> domain name is registered with Regtime Ltd. and that Respondent is the current registrant of the name. Regtime Ltd. has verified that Respondent is bound by the Regtime 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 April 12, 2023, Forum served the Complaint and all Annexes, including a Russian and English Written Notice of the Complaint, setting a deadline of May 2, 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@dell-purchase.com. Also on April 12, 2023, the Russian and English 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.
On May 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in the Russian language, thereby making the language of the proceedings Russian. After reviewing the applicable rules on language of the proceeding under the UDRP the Panel finds as follows.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant made the following contentions.
Complainant sells computers, computer accessories and other computer-related products and services. Complainant has rights in the DELL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272, registered October 25, 1994) and other international trademark authorities. See Compl. Ex. C. Respondent’s <dell-purchase.com> domain name is identical or confusingly similar to Complainant’s DELL mark as it merely adds a hyphen, the generic word “purchase” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <dell-purchase.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DELL mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by using Complainant’s DELL mark in furtherance of a phishing scheme.
Respondent registered and uses the <dell-purchase.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to pass off as Complainant for Respondent’s commercial gain. Further, Respondent had actual knowledge of Complainant’s rights to the DELL mark prior to registering the disputed domain name. Finally, Respondent uses the disputed domain name to phish for user’s personal and financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing computers, computer accessories and other computer-related products and services.
2. Complainant has established it rights in the DELL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272, registered October 25, 1994) and other international trademark authorities.
3. Respondent registered the disputed domain name on February 8, 2023.
4. Respondent has caused the disputed domain name to be used by the Respondent to pass itself off as Complainant by using Complainant’s DELL mark in furtherance of a phishing scheme.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DELL mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 1,860,272, registered on October 25, 1994) and other international trademark authorities. See Compl. Ex. C. Registration of a mark with multiple international trademark agencies is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the DELL mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DELL mark. Complainant argues that Respondent’s <dell-purchase.com> domain name is identical or confusingly similar to Complainant’s DELL mark as it merely adds a hyphen, the generic word “purchase” and the “.com” gTLD. The addition of a hyphen, a generic or descriptive term and a gTLD fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DELL mark and to use it in its domain name, adding a hyphen and the generic word “purchase” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <dell-purchase.com> domain name on February 8, 2023;
(c) Respondent has caused the disputed domain name to be used by the Respondent to pass itself off as Complainant by using Complainant’s DELL mark in furtherance of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <dell-purchase.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the DELL mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Ofosu Kenneth / Private person” and Complainant submits that there is no other evidence to suggest that Respondent was authorized to use the DELL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <dell-purchase.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes itself off as Complainant in furtherance of a phishing scheme. Using a disputed domain name to pass off as a complainant for the purpose of phishing for users’ personal information may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the disputed domain name resolving to a website using Complainant’s mark and logo as well as a blue and white color scheme that mimic’s Complainant’s official website. See Compl. Ex. D. Complainant submits that Respondent creates a false association with Complainant and then engages in a fraudulent phishing scheme by asking users to enter personal and financial information. The Panel therefore finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <dell-purchase.com> domain name in bad faith as Respondent registered the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme for Respondent’s commercial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant for commercial gain can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As the Panel notes, Complainant provides a screenshot of the disputed domain name resolving to a website that uses Complainant’s mark and logo and mimics Complainant’s legitimate website. See Compl. Ex. D. Complainant argues that Respondent is confusing users into believing that it has an association or affiliation with Complainant. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <dell-purchase.com> domain name with actual knowledge of Complainant’s rights in the DELL mark based on Respondent’s use of the DELL mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes itself off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of the DELL mark and Respondent’s resolving website demonstrate Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. As the Panel agrees, it finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <dell-purchase.com> domain name in bad faith as Respondent registered the disputed domain name to phish for users’ personal and financial information. Registration of a confusingly similar domain name to phish fraudulently for users’ information may evince bad faith registration and use per Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). As the Panel recalls, Complainant provides a screenshot of the disputed domain name resolving to a page requesting user’s personal and financial information. See Compl. Ex. D. Complainant argues that Respondent is attempting to collect this information in bad faith. As the Panel agrees, it finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-purchase.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 10, 2023
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