Dell Inc. v. FREDRICK GESIMBA
Claim Number: FA1910001865142
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is FREDRICK GESIMBA (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellmarketinglp.com>, registered with Launchpad.com 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2019; the Forum received payment on October 2, 2019.
On October 2, 2019, Launchpad.com Inc. confirmed by e-mail to the Forum that the <dellmarketinglp.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com 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 October 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@dellmarketinglp.com. Also on October 4, 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 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994).
2. Respondent’s <dellmarketinglp.com>[i] domain name is confusingly similar to Complainant’s DELL mark. Respondent incorporates the DELL mark in its entirety and adds the terms “marketing” and “LP” in addition to the “.com” generic top-level domain (gTLD).
3. Respondent has no rights or legitimate interests in the <dellmarketinglp.com> domain name. Respondent is not licensed or permitted to use Complainant’s DELL mark nor commonly known by the domain name.
4. Respondent fails to use the <dellmarketinglp.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the domain name fails to resolve to a website with any substantive content and displays a parked page.
5. Respondent registered and uses the <dellmarketinglp.com> domain name in bad faith. Respondent’s domain name resolves to a parked page. Respondent registered the domain name with a privacy service. Lastly,
6. Respondent knew of Complainant’s rights in the DELL mark prior to registering and subsequently using the <dellmarketinglp.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DELL mark. Respondent’s domain name is confusingly similar to Complainant’s DELL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dellmarketinglp.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights in the DELL mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). 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.”). Complainant has provided the Panel with a copy of its USPTO registration for the DELL mark (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Therefore, Complainant has adequately shown rights in the DELL mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <dellmarketinglp.com> domain name is confusingly similar to Complainant’s DELL mark. Registration of a domain name that incorporates the mark of another and adds generic terms and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Respondent incorporates the DELL mark in its entirety and adds the terms “marketing” and “LP” in addition to the “.com” gTLD. Therefore, Respondent’s domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dellmarketinglp.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <dellmarketinglp.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been given permission to use the DELL mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the <dellmarketinglp.com> domain name lists the registrant as “Fredrick Gesimba” and there is no evidence to suggest that Respondent was authorized to use the DELL mark or was commonly known by the <dellmarketinglp.com> domain name. Therefore, the Panel holds Respondent is not commonly known by the <dellmarketinglp.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the <dellmarketinglp.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a parked page. Use of a domain name incorporating the mark of another to resolve to an inactive webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant has provided a screenshot of Respondent’s resolving webpage that shows it to be inactive and that displays information on how to getting started with activiating the webpage. Therefore, Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <dellmarketinglp.com> domain name in bad faith as the domain name resolves to a parked page. Use of a domain name incorporating the mark of another to resolve to an inactive or parked page is evidence of bad faith per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Here, Complainant has provided a screenshot of Respondent’s webpage that shows a inactive webpage that displays information on how to getting started with activiating the webpage. Therefore, Respondent registered and uses the <dellmarketinglp.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues the Respondent had actual knowledge of Complainant’s DELL mark prior to registering the <dellmarketinglp.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 January 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”). Complainant has provided sufficient evidence 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. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the <dellmarketinglp.com> domain name under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellmarketinglp.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 1, 2019
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