Dell Inc. v. Small Valley Among Trees / Dell.org - A Small Valley Among Trees
Claim Number: FA1906001846229
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Small Valley Among Trees / Dell.org - A Small Valley Among Trees (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell.org>, registered with Tucows Domains Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2019; the Forum received payment on June 3, 2019.
On June 4, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <dell.org> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2019 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.org. Also on June 5, 2019, 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 June 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant produces and sells computers, computer accessories, and other computer-related products and services. Complainant has rights in its DELL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Respondent’s <dell.org> domain name is confusingly similar to Complainant’s DELL mark as it incorporates the mark in its entirety and merely adds the “.org” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, because Respondent is inactively holding the disputed domain name, as it has not been updated since 2012.
Finally, Respondent’s <dell.org> domain name was registered and is being used in bad faith, as the Respondent inactively holding the disputed domain name. Respondent is attempting to pass off as Complainant with the email address of the disputed domain name which could be used to deceive internet users. Additionally, Respondent had knowledge of Complainant’s mark, as Respondent historically had reviews of Complainant’s goods. Furthermore, Respondent previously included a disclaimer on the resolving webpage for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on September 3, 1998.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration 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”).
The Panel finds that the disputed domain name, <dell.org>, is confusingly similar to Complainant’s valid and subsisting trademark, DELL. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the g TLD “.org” to Complainant’s precise trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel also finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is also not commonly known by the dispute domain name. Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, because Respondent is inactively holding the disputed domain name, as it has not been updated since 2012.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the dispute domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. The disputed domain name was registered and is being used in bad faith, as Respondent apparently is inactively holding the disputed domain name. Bad faith may be found when a disputed domain name infringes on a famous mark and is inactively held by the respondent under Policy ¶ 4(a)(iii). See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s famous GALLO marks and (2) the respondent made no use of the domain name <winegallo.com>). Here, Complainant points to the fame of the DELL mark and screenshots of the resolving webpage for the disputed domain name, showing periods of the webpage being under construction and no activity since 2012. See Compl. Exs. D and F. Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith, as Respondent is inactively holding the disputed domain name.
Next, it appears that the disputed domain name was registered and is being used in bad faith, as Respondent is attempting to pass itself off as Complainant with an email address of the disputed domain name which could be used to deceive internet users. Use of an email address associated with the disputed domain name may be evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant points out that Respondent’s email address dell@dell.org fully incorporates Complainant’s mark and may be used to deceive internet users. See Compl. Ex. E. Even though Complainant does not provide evidence of Respondent actually using the email address in such a manner, if the disputed domain name is in control or the Respondent, there is nothing stopping Respondent from engaging in such disruptive behavior. The Panel finds that the disputed domain name was registered and is being used in bad faith, as Respondent may attempt to pass itself off as Complainant with an email address of the disputed domain name which could be used to deceive internet users under Policy ¶ 4(b)(iv).
Additionally, the Panel finds that Respondent had knowledge of Complainant’s mark. It is a rare instance indeed when a dispute domain name remains unenforced for 21 years and the Complainant can show that Respondent had prior actual knowledge of Complainant’s rights in and to the trademark. However, this is such an instance. Given the fame of Complainant’s mark and the totality of the circumstances, it is simply not believable that Respondent happened upon the dispute domain name randomly. Therefore, the Panel finds that Respondent had actual notice of Complainant’s prior rights and interests in and to the disputed domain name.
Finally, it appears that Respondent attempted at some time to use a disclaimer on the resolving webpage for the disputed domain name. Use of a disclaimer does not mitigate bad faith registration and use of a disputed domain name under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”). Here, Complainant provided historic screenshots of the resolving webpage for the disputed domain name, showing a disclaimer informing internet users that the disputed domain name is not affiliated with Complainant. See Compl. Ex. D. As is often the case, the disclaimer here provides further evidence of the bad faith use and registration of the disputed domain name rather than mitigate its use.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the dispute domain name.
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.org> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 28, 2019
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