DECISION

 

Dell Inc. v. Jason Hoad

Claim Number: FA2001001880790

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, United States.  Respondent is Jason Hoad (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ihatedell.com>, registered with GoDaddy.com, LLC.

 

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.

 

Eduardo Magalhães Machado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 27, 2020; the Forum received payment on January 27, 2020.

 

On January 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ihatedell.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 January 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2020 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@ihatedell.com.  Also on January 31, 2020, 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.

 

A timely Response was received and determined to be complete on February 17, 2020.

 

Additional Submission filed by the Respondent was received on February 12, 2020.

 

On February 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

 

Complainant asserts rights in the DELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered on Oct. 25, 1994).

 

In this sense, Complainant argues that the disputed domain name <ihatedell.com> is confusingly similar to Complainant’s DELL mark as it includes the DELL mark in its entirety with the derogatory addition “ihate” that would not diminish the similarity between the disputed domain and Complainant’s DELL mark. Moreover, Complainant argues that the addition of the “.com” generic top-level domain (“gTLD”) would also not prevent the confusing similarity of the disputed domain name with Complainant’s mark.

 

Complainant has also affirmed that Respondent lacks rights or legitimate interests in the <ihatedell.com> domain name as Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with any bona fide offering of goods or services. Instead, Complainant claims that Respondent’s disputed domain name resolves to a webpage displaying adult-oriented material.

 

Complainant further maintains that Respondent is not commonly known by the disputed domain name and that Respondent is not authorized to use Complainant’s DELL mark.

 

Furthermore, Complainant affirms that Respondent has registered and is using the <ihatedell.com> domain name in bad faith considering that the disputed domain name currently redirects to a website displaying adult-oriented material and pornographic content, which are not related to Complainant’s activities.

 

In this sense, Complainant states that the Respondent, by using the disputed domain name for a website that features adult-oriented content, links, and advertisements, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s DELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

 

B.   Respondent

 

In the response filed by the Respondent, Respondent basically alleged that it had not registered the disputed domain name and that Respondent’s name had been fraudulently used for the purchase of the disputed domain name, which Respondent claims that it did not purchase/register/buy.

 

In light of the above, Respondent has requested that the disputed domain name be transferred to the Complainant.

 

C. Additional Submissions

 

In regard to the Additional Submission filed by the Respondent, the Respondent reiterated its position that it had never registered the disputed domain name and that Respondent would never intend to own a domain of said nature.

 

In addition, Respondent reaffirmed that his name had been fraudulently used in the registration of the disputed domain name.

 

FINDINGS

Complainant is a world leader in computers, computer accessories, and other computer-related products and services.

 

Complainant owns trademark registrations for the DELL such as U.S. Reg. Nos. 1,860,272, 2,236,785, 2,794,705, 2,806,769, 2,806,770, 2,808,852, and 3,215,023; and UK Reg. Nos. 1430952, 1504488, and 2344330 as provided by Ex. C. Complainant’s earliest registration for the DELL mark dates from 1994 (Reg. No. 1,860,272,).

 

According to the WHOIS information, the disputed domain name was registered on December 31, 2019. The disputed domain name currently redirects to a website displaying pornographic content, as provided by Ex. D. of the complaint.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).

 

The Complainant owns rights related to the DELL mark as per registration of the mark with the USPTO (e.g., Reg. No. 1,860,272, registered October 25, 1994). See Ex. C.

 

In this sense, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered DELL mark, as the <ihatedell.com> domain name wholly reproduces the DELL mark in its entirety with the mere addition of the expression “ihate”, which is not sufficient to prevent the similarity and possibility of confusion of the disputed domain name with Complainant’ s DELL mark as “ihate” is considered a non-distinctive term. See GB Investments, Inc. v. Donald Baker, WIPO Case No. D2007-1320).

 

Moreover, the addition of the “.com” gTLD also does not prevent the disputed domain name from being confusingly similar to the Complainant’s trade mark pursuant to the Policy.

 

The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Considering the documents attached to the file as well as Respondent’s response to Complainant’s contentions, the Panel finds that Respondent does not own any rights or legitimate interests in the disputed domain name.

 

Respondent is not commonly known by the disputed domain name nor has it ever been authorized to register or to use Complainant’s marks. In this regard, Respondent has expressly affirmed that it did not register the disputed domain name and that Respondent’s name had been illegally and fraudulently used by third parties for the registration of the disputed domain name. This assertion by the Respondent itself evidences that Respondent does not own rights or legitimate interests in the <ihatedell.com> domain name.

 

Moreover, form the evidence attached to the complaint (Ex. D.), Respondent fails to use the <ihatedell.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

Specifically, Respondent uses the disputed domain name to display adult-oriented and pornographic material. Respondent’s use of a disputed domain name to display adult-oriented material cannot be considered a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).

 

In this sense, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The disputed domain name has been registered and is being used in bad faith by the Registrant pursuant to Policy ¶¶ 4(b)(iii) and (iv) as it reproduces Complainant’s registered DELL mark in an attempt to attract internet users to the disputed domain name for commercial gain as well as such registration and use of the disputed domain name associated with adult-oriented and pornographic material, which has no relation whatsoever with Complainant’s activities, is also disrupting of Complainant’s business.

 

As per screenshots provided by Ex. D of the complaint, the disputed domain name, which wholly reproduces Complainant’s DELL mark, is currently redirecting internet users to an adult oriented website. Thus, the registration of the disputed domain name can be considered not only an attempt by the Registrant to attempt internet users to a webpage for commercial gain, but also as disrupting of Complainant’s business.

 

That is because, Registrant’s use of a disputed domain name, which is luring Internet users to a pornographic webpage unrelated to Complainant’s activities, may damage Complainant’s business, evidencing bad faith in registration and use of the disputed domain name. See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant.  Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy 4(b)(iv).”); 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)).

 

Registrant’s use of a disputed domain name to display adult-oriented material also evidences bad faith pursuant to Policy 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”); see also Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Respondent’s use of the disputed domain name to feature adult-oriented advertisements is further evidence of bad faith under Policy ¶ 4(a)(iii).”).

 

In light of the above, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

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 <ihatedell.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Eduardo Magalhães Machado, Panelist.

Dated: February 28, 2020.