Dell Inc. v. Todd Leetham
Claim Number: FA1909001862906
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, USA. Respondent is Todd Leetham (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellltechnologies.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2019; the Forum received payment on September 19, 2019.
On September 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellltechnologies.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 September 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@dellltechnologies.com. Also on September 20, 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 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL and DELL TECHNOLOGIES marks through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., DELL – Reg. No. 1,860,272, registered Oct. 25, 1994; DELL TECHNOLOGIES – Reg. No. 5,651,864, registered Jan. 15, 2019). Respondent’s <dellltechnologies.com> domain name is confusingly similar to Complainant’s DELL mark as it incorporates the mark in its entirety, along with the term “technologies” and the additional letter “l” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <dellltechnologies.com> domain name. Respondent is not licensed or otherwise permitted to use Complainant’s DELL or DELL TECHNOLOGIES mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name as a passive page that displays only a “website coming soon!” message.
Respondent registered and uses the <dellltechnologies.com>
domain name in bad faith because Respondent intends to imply a connection
with Complainant’s mark. Respondent also passively holds the domain name, which
is further evidence of bad faith. Further, Respondent holds the domain name
with incorrect contact information which further evinces bad faith. Finally,
Respondent had actual knowledge of Complainant’s DELL mark and attempted to
trade off of the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <dellltechnologies.com> 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”).
Complainant claims rights in the DELL and DELL TECHNOLOGIES marks through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., DELL – Reg. No. 1,860,272, registered Oct. 25, 1994; DELL TECHNOLOGIES – Reg. No. 5,651,864, registered Jan. 15, 2019). See 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.”). The Panel finds that Complainant has established rights in the DELL mark for the purposes of Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <dellltechnologies.com> domain name is confusingly similar to Complainant’s mark because Respondent uses the Complainant’s DELL or DELL TECHNOLOGIES mark in its entirety, adds the generic or descriptive term “technologies,” an additional “l” and a gTLD. The addition of a generic or descriptive word, an additional letter, and a gTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The Panel finds that the <dellltechnologies.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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)); see also 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”). The Panel finds Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <dellltechnologies.com> domain name because Respondent is not authorized or permitted to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See 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.”). The WHOIS of record identifies “Todd Leetham” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not authorized or permitted to use Complainant’s DELL mark and Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent fails to use the <dellltechnologies.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name as an inactive holding. Inactive holding of a domain generally fails to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Complainant provides a screenshot of the disputed domain name’s resolving webpage which displays the message “website coming soon!” The Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii) and Respondent lacks rights and legitimate interests in respect of the domain name.
Complainant has proved this element.
Although Complainant makes no cognizable arguments under Policy ¶ 4(b), such arguments are merely illustrative rather than exclusive to find bad faith. See The Toronto-Dominion Bank v. Paul Gabriel / Net, FA 1714326 (Forum Mar. 6, 2017) (“In this case Panel finds no compelling evidence for the application of any of the above-described [¶ 4(b) bad faith] scenarios. Nevertheless, the Panel finds registration in bad faith and use in bad faith as separate matters.”). The Panel finds that Complainant’s uncontested allegations and evidence support a finding of bad faith.
Complainant first claims that Respondent’s bad faith is demonstrated by its failure to actively use the <dellltechnologies.com> domain name. Failure to actively use a disputed domain name may demonstrate bad faith per Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving webpage in support of its contentions. The Panel finds that this is evidence that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant further argues the Respondent had actual knowledge of Complainant’s DELL mark prior to registering the <dellltechnologies.com> domain name. Actual knowledge of a complainant’s rights in a mark may support a finding under Policy ¶ 4(a)(iii), and can be established through evidence of the fame of the mark. 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”). Here, Complainant contends that Respondent intends to trade off the fame of Complainant’s mark by incorporating the mark as well as the term “notebook” to imply a connection to Complainant’s products. Complainant displays its fame through a reference to its place on the “Global 500 – The Most Valuable Brands of 2018.” The Panel finds from Complainant’s uncontested allegations and evidence that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the <dellltechnologies.com> domain name and under Policy ¶ 4(a)(iii) Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
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 <dellltechnologies.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: October 14, 2019
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