Dell Inc. v. Chong Sam Lee
Claim Number: FA1910001865104
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Chong Sam Lee (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drll.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on October 2, 2019; the Forum received payment on October 2, 2019.
On October 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <drll.com> domain name (the 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 October 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of October 22, 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 firstname.lastname@example.org. Also on October 2, 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 October 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. It has rights in the DELL mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,860,272 registered Oct. 25, 1994). Respondent’s <drll.com> Domain Name is confusingly similar to Complainant’s DELL mark as it fully incorporates the DELL mark albeit with a misspelling (replacing the letter “e” with an “r”) and adds the “.com” generic top-level (gTLD).
Respondent lacks rights or legitimate interests in the Domain name as Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the Domain Name redirects visitors to multiple domain names before eventually resolving at some times to product pages on Complainant’s website or at other times to the web sites of competitors of Complainant. Complainant has not licensed or otherwise permitted Respondent to use the mark.
Respondent registered and is using the Domain Name in bad faith. Respondent uses it to redirect users at times to product pages on Complainant’s website and at other times to the website of a competitor of Complainant. Respondent engages in the practice of typosquatting, and Respondent knew of Complainant’s rights in the mark when it registered the Domain Name. Respondent has no trademark or other intellectual property rights in the Domain Name and the Domain Name is not the legal name of or a name commonly used to identify Respondent.
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the Domain Name 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
The DELL mark was registered to the Dell Computer Corporation with the USPTO (Reg. No. 1,860,272) on October 25, 1994 and was subsequently assigned to Complainant (Complaint Exhibit C). Complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <drll.com> Domain Name is confusingly similar to Complainant’s DELL mark. It incorporates a misspelled version of Complainant’s mark, merely substituting the letter “e” with an “r” and adding the gTLD “.com.” These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (“The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “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 domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the DELL mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it redirects visitors to multiple domain names before ultimately resolving to various product pages at Complainant’s web site or to the web site of one of Complainant’s competitors, and (ii) Complainant has not licensed or otherwise permitted Respondent to use its mark. These allegations are addressed as follows:
Complaint Exhibit D is a screenshot of a web site to which the Domain Name ultimately redirects Internet traffic after passing through a number of other, unrelated domains. It is the home page of Hewlett Packard, another major distributor of computers and computer services. Complaint Exhibit E consists of screenshots of pages from Complainant’s web site, to which the Domain Name redirects Internet traffic, also after passing through a number of other unrelated domains. These pages describe and offer various products of Complainant. Using a confusingly similar domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Likewise, using a confusingly similar Domain Name in a manner over which a complainant has no control does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii), even if it resolves to the complainant’s own web site. Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).”).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant did not expressly address the provisions of Policy ¶ 4(c)(ii) but the WHOIS information submitted to the Forum lists the registrant of the Domain Name as “Chong Sam Lee.” This name names bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use. First, by using the Domain Name to redirect Internet traffic through a number of unrelated domain names to the web site of one of Complainant’s competitors, Respondent is disrupting the business of Complainant. There is no evidence, however, that the competing web site is sponsored by or affiliated with Respondent or that Respondent is competing commercially with Complainant. A number of UDRP panels have found that using a confusingly similar domain name to disrupt the business of a complainant was bad faith for the purposes of Policy ¶ 4(b)(iii), even when the respondent was not a competitor. Others have essentially by-passed the competition factor, focusing instead on disruption, and have simply found bad faith under ¶ 4(b)(iii).[i]
Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here does not offer the same types of goods or services offered by Complainant and is not vying with Complainant for customers or business in the computer industry. In the absence of actual commercial competition between a complainant and a respondent, the respondent’s redirecting traffic to the web site of an unrelated third party who does compete with the complainant cannot logically fall within the circumstances stated in Policy ¶ 4(b)(iii). Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to direct Internet traffic to the web site of a third-party competitor is still bad faith. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith. Respondent’s intentional diversion of Internet traffic to the web site of a third-party competitor of Complainant is seriously disruptive to Complainant’s business and, in and of itself, qualifies as bad faith registration and use of the Domain Name. Friedman & Soliman Enterprises, LLC v. Gary Salesko, M&B Relocation and Referral, LLC, Case No. 2016-0800 (WIPO June 2, 2016) (“it cannot be considered good faith to acquire a domain name that is confusingly similar to a company’s trademark, . . . , and use it to mislead Internet users by redirecting traffic to the company’s competitor.”), Infineon Technologies AG v. Yang Ding Jie / Shang Hai Yi Guan Zhuang Huang She Ji You Xian Gong Si, FA 1837608 (Forum May 1, 2019) (“[redirecting Internet traffic to an inactive web site], in and of itself, would be a substantial disruption of Complainant’s business and qualifies as bad faith registration and use, even in the absence of evidence of competition.”).
Second, by using the Domain Name to redirect Internet traffic through a number of unrelated domains to various product pages on Complainant’s own web site Respondent does disrupt the business of Complainant. Some UDRP panels have held that this constitutes bad faith pursuant to Policy ¶ 4(b)(iii).[ii] Again, however, that paragraph clearly contemplates that there be actual competition between the relevant complainant and respondent, and there is no evidence of that in this case. As with the redirect to the page of a third-party competitor described above, absent the element of competition between Complainant and Respondent, Respondent’s redirecting traffic to the web site of the Complainant cannot logically fall within the circumstances stated in Policy ¶ 4(b)(iii).
Likewise, however, using a confusingly similar domain name to redirect Internet traffic through a number of unrelated domains to the web site of the Complainant is still bad faith. It conveys the impression that Complainant, which is a computer and computer services company, cannot control its own web site and this is manifestly disruptive to the business of Complainant. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a confusingly similar domain name to redirect Internet traffic through a number of unrelated domains to the web site of the Complainant is materially disruptive and demonstrates bad faith.
The available evidence does not demonstrate whether or how Respondent might be realizing some form of commercial gain from its actions, such as might fit within the circumstances articulated by Policy ¶ 4(b)(iv), or what its motivation might be. Complainant speculates that Respondent might somehow be compensated based upon the number of unrelated domain names to which the Internet user is redirected before reaching its ultimate destination. There is no evidence of this before the Panel, but insofar as Respondent’s use of the Domain Name is known, the Panel has no trouble finding bad faith where bad faith is evident, independent of Policy ¶¶ 4(b)(iii) and (iv).
Third, by substituting the letter “r” for the “e” in Complainant’s mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of similar appearance in an email address or typing errors made by Internet users seeking the web sites of the owners of the mark. The fact that the two letters involved, “e” and “r,” are immediately adjacent to each other on the keyboard confirms that this misspelling is intentional. Given the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, typosquatting necessarily implicates another factor that has also, by itself, been held to constitute bad faith. It is evident from the world-wide notoriety of Complainant in the computer and computer services industry, from the extent to which Respondent targeted Complainant’s mark in the Domain Name, and from the fact that Respondent used the Domain Name to redirect Internet traffic to the web sites of both Complainant itself and one of its major competitors that Respondent had actual knowledge of Complainant’s mark when it registered the Domain Name. Again, considering the nonexclusive, open ended nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drll.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
October 28, 2019
[i] 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)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).), Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
[ii] Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).
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