DECISION

 

Dell Inc. v. Liu Xiao Dong

Claim Number: FA2502002138574

 

PARTIES

Complainant is Dell Inc. ("Complainant"), represented by Wendy C. Larson, Texas, USA. Respondent is Liu Xiao Dong ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellpay.com> (the "Disputed Domain Name"), registered with eName Technology Co., Ltd.

 

PANEL

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.

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 4, 2025; Forum received payment on February 4, 2025.

 

On February 5, 2025, eName Technology Co., Ltd. confirmed by e-mail to Forum that the <dellpay.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName 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 February 10, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 3, 2025, 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@dellpay.com. Also on February 10, 2025, the Chinese 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.

 

A timely Response was received and determined to be complete on February 26, 2025.

 

On February 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Douglas M. Isenberg 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complaint was filed in English. On February 5, 2025, Forum notified Complainant that the Registrar said the registration agreement was in Chinese. In response thereto, Complainant submitted a copy of the Complaint in Chinese, in addition to English. However, Respondent submitted a response in English. Rule 11 provides: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." Accordingly, given that both the Complaint and Response have been filed in English, the Panel exercises its authority to determine that English shall be the language of this proceeding.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it "is a world leader in computers, computer accessories, and other computer-related products and services"; that it "sells its products and services in over 180 countries"; that it "generated more than $88 billion in revenue in Fiscal Year 2024"; and that it "is #48 on the Fortune 500."

 

Complainant states, and provides evidence to support, that it is the owner of "a number of trademark registrations" for trademarks that consist of or include "DELL" (the "DELL Trademark"), including the following:

 

·       U.S. Reg. No. 1,860,272 for DELL (registered October 25, 1994) for use in connection with "computers and parts therefor"

·       U.S. Reg. No. 2,236,785 for DELL (registered April 06, 1999) for use in connection with "custom manufacture of computers for others"

·       U.S. Reg. No. 2,333,902 for DELL FINANCIAL SERVICES (registered March 21, 2000) for use in connection with "leasing of computers"

·       U.S. Reg. No. 5,510,370 for DELL (registered July 10, 2018) for use in connection with, inter alia, "financing services"

 

The Disputed Domain Name was created on October 31, 2012. Complainant states that "Respondent has merely 'parked' the [Disputed Domain Name], listed it for sale [for $250,000], and posted about its availability on X.com (now removed) with Complainant's account tagged to get Complainant's attention."

 

Complainant argues that the Disputed Domain Name is confusingly similar to the DELL Trademark because, inter alia, it "incorporates the mark DELL in its entirety, adding the word 'pay,' which does not distinguish the domain from Complainant's famous [DELL Trademark]."

 

Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, parking the Disputed Domain Name and offering it for sale for $250,000 is not in connection with a bona fide offering of goods or services; Respondent's use of the DELL Trademark in the Disputed Domain Name "is not licensed or authorized"; and "Complainant has no information that suggests Respondent has any rights or legitimate interests regarding the" Disputed Domain Name.

 

Complainant argues that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, the DELL Trademark was "famous well before the [Disputed Domain Name] was registered"; Respondent has offered the Disputed Domain Name for sale for $250,000; Respondent's "X.com post shows Respondent identified Complainant specifically as particularly interested in the domain name, supporting a finding that the purpose of Respondent's ownership and use of the name was to extort Dell into paying in excess for the domain," which is "classic unlawful cybersquatting activity"; and "Respondent's passive holding of the domain name evidences bad faith."

 

B. Respondent

Respondent argues that the Disputed Domain Name is not confusingly similar to the DELL Trademark because, inter alia Complainant's DELL trademark "primarily cover[s] computer hardware and software"; that the Disputed Domain Name "combines the generic term *'pay'* with 'dell', forming a term that signifies 'payment services'"; and that "Complainant has not proven 'DellPay' is a well-known trademark or commercially used."

 

Respondent argues that it has rights or legitimate interests in the Disputed Domain Name because, inter alia, "Respondent registered dellpay.com on 31 October 2012, predating the Complainant's alleged 'Dell Pay' service launch" and the Disputed Domain Name "was intended for a cross-border payment technology platform, unrelated to the Complainant's core business."

 

Respondent argues that the Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, "No imitation of Dell's official website or trademarks; No commercial gain from the domain; No disruption to the Complainant's business."

 

FINDINGS

For the reasons set out below, the Panel finds for Complainant and orders transfer of the Disputed Domain Name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the DELL Trademark.

 

As to whether the Disputed Domain Name is identical or confusingly similar to the DELL Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "dellpay") because "[t]he applicable Top-Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test". WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.

 

As set forth in section 1.7 of WIPO Overview 3.0:

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name…. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

 

Further, as set forth in section 1.8 of WIPO Overview 3.0: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."

 

Here, it is obvious that the Disputed Domain Name contains the DELL Trademark in its entirety and that the DELL Trademark is recognizable within the Disputed Domain Name. Further, the addition of the descriptive word "pay" does not prevent a finding of confusing similarity.

 

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

 

Rights or Legitimate Interests

Respondent has attempted to establish rights or legitimate interests in the Disputed Domain Name by arguing that it registered the Disputed Domain Name prior to "Complainant's alleged 'Dell Pay' service launch" and that the Disputed Domain Name "was intended for a cross-border payment technology platform, unrelated to the Complainant's core business." Presumably, Respondent is stating that this intended use constitutes a "bona fide offering of goods or services" pursuant to paragraph 4(c)(i) of the Policy. Respondent makes no arguments that would appear to establish rights or legitimate interests under paragraphs 4(c)(ii) or 4(c)(iii) of the Policy.

 

However, Respondent has provided no evidence that it has actually used, or made demonstrable preparations to use, the Disputed Domain Name in connection with any such "cross-border payment technology platform" – despite registration of the Disputed Domain Name more than 12 years ago. Indeed, the only evidence of use in the record is that provided by Complainant, which shows efforts by Respondent to sell the Disputed Domain Name for as much as $250,000. Numerous previous panels have found that such use does not establish rights or legitimate interests. See, e.g., Singapore Telecommunications Limited v. NA NA, WIPO Case No. D2016-1251 ("advertising the Domain Name as being for sale… is not a bona fide offering of goods or services"); Bharti Airtel Limited v. Milen Radumilo, WIPO Case No. D2015-1948 ("Respondent does not appear to be using the domain name in connection with a bona fide offering of any kind" where "the disputed domain name… is used with a site that offers the domain name for sale"); and Sanofi and Genzyme Corporation v. Wang Xuesong, WIPO Case No. DCC2016-0007 ("the disputed domain name was being used with a website that merely offered the disputed domain name for sale [which]… is not a bona fide offering of goods or services for the purposes of the Policy").

 

Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).

 

Here, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(i), and Respondent has not denied trying to sell the Disputed Domain Name for $250,000, only that it registered the Disputed Domain Name for some sort of "cross-border payment technology platform, unrelated to the Complainant's core business." However, as set forth in section 3.1.1 of WIPO Overview 3.0: "Particularly where the domain name at issue is identical or confusingly similar to a highly distinctive or famous mark, panels have tended to view with a degree of skepticism a respondent defense that the domain name was merely registered for legitimate speculation (based for example on any claimed dictionary meaning) as opposed to targeting a specific brand owner." Indeed, here, the DELL Trademark appears to be highly distinctive or famous, and although the Panel would have preferred to see evidence of the strength of the DELL Trademark in 2012, when the Disputed Domain Name was registered, the Panel takes judicial notice of the strength of the DELL Trademark based on the Panel's personal knowledge, as is appropriate according to section 4.8 of WIPO Overview 3.0.

 

Further, with respect to Respondent's assertion that its inclusion of the word "pay" in the Disputed Domain Name is somehow relevant, the Panel disagrees – not only because of the strength of the DELL Trademark itself but also because multiple registrations for the DELL Trademark cover services that are the same as or similar to those that Respondent said it intended to offer in connection with the Disputed Domain Name (at least some registrations of which were issued prior to creation of the Disputed Domain Name), which surely would create a likelihood of confusion pursuant to paragraph 4(b)(iv) of the Policy.

 

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dellpay.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Douglas M. Isenberg, Panelist

Dated: March 10, 2025