Dell Inc. v. Uzman Notebook
Claim Number: FA2003001887961
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Virginia, United States. Respondent is Uzman Notebook (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-tr.com> (the disputed domain name”), registered with Nics Telekomunikasyon A.S.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 12, 2020; the Forum received payment on March 12, 2020. The Complaint was submitted in both Turkish and English.
On March 14, 2020, Nics Telekomunikasyon A.S. confirmed by e-mail to the Forum that the <dell-tr.com> disputed domain name is registered with Nics Telekomunikasyon A.S. and that Respondent is the current registrant of the name. Nics Telekomunikasyon A.S. has verified that Respondent is bound by the Nics Telekomunikasyon A.S. 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@dell-tr.com. Also on March 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Turkish language Notification of Respondent Default.
On April 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,794,705, registered Dec. 16, 2003) and The Turkish Patent and Trademark Office (e.g. Reg No. 2014 26361, registered on Mar. 28, 2014) (hereinafter, collectively, the “DELL Mark”).
The disputed domain name was registered on October 11, 2015. The disputed domain name is confusingly similar to Complainant’s DELL mark as it contains the mark in its entirety, a hyphen, and adds the letters “tr” (which is a geographic abbreviation signifying Turkey), and a “.com” generic Top-Level Domain (“gTLD”).
Respondent has no rights or legitimate interests in the <dell-tr.com> disputed domain name. Respondent is not authorized to use Complainant’s DELL 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. Instead, the disputed domain name attempts to pass off as Complainant in order to offer competing computer parts and support and repair services.
Respondent registered and is using the <dell-tr.com> disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and divert Internet customers seeking Complainant to Respondent’s website for Respondent’s commercial gain. In addition, Respondent’s registration and use indicate actual knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds valid trademark rights in the DELL Mark. The disputed domain name is confusingly similar to Complainant’s DELL Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed 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 disputed 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 disputed domain name; and
(3) the disputed 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”).
Preliminary Issue: Language of the Proceedings
Prior to discussing the three elements of the Policy, the Panel must decide the language of the proceedings. The Registration Agreement is written in Turkish, thereby making the language of the proceedings Turkish in accordance with UDRP Rule 11(a).
However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Turkish language agreement, which would result in prejudice toward either party. See The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (FORUM Mar. 3, 2020) (deciding that the proceedings may be conducted in English without prejudice to the Respondent, because the FORUM provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case).
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel concludes that Complainant has rights in the DELL mark based upon the registration of the DELL Mark with the USPTO and The Turkish Patent and Trademark Office. Registration of a mark with the USPTO may be sufficient to establish rights in that mark pursuant to Policy ¶ 4(a)(i). 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). Complainant provides a copy of its multiple USPTO registrations for the DELL mark (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). See Compl. Ex. C. The Panel may therefore find that Complainant’s registration of the DELL mark with the USPTO is sufficient to establish rights in the DELL Mark under Policy ¶ 4(a)(i).
The Panel also concludes that the disputed domain name is confusingly similar to the DELL Mark under the Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s DELL Mark in its entirety, with the addition of a hyphen and the letters “tr” (a geographic abbreviation signifying Turkey), followed by the gTLD “.com”. The addition of punctuation, a geographic term, and a gTLD to a protected mark may not be sufficient to distinguish a disputed domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Ushio Inc. v. Domain Admin / Whois Privacy Corp., FA 1863888 (Forum Nov. 4, 2019) (finding that the addition of a hyphen, a geographic designation, and a gTLD are not sufficient to distinguish the disputed domain name from Complainant’s mark).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
To wit, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the DELL Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Complainant has not authorized Respondent to use the DELL Mark in any way.
Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain name resolves to a webpage that attempts to pass off as Complainant and offer products and services in direct competition with Complainant. Use of a disputed domain name to resolve to a webpage selling goods or services in direct competition with a complainant’s business supports a finding that a respondent has not used a domain for a bona fide offering or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, Respondent has registered and is using the <dell-tr.com> disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iii) can be found where a respondent uses a confusingly similar domain name to disrupt the Complainant’s business by diverting users to a disputed domain name that resolves to a website selling competing products or services.
See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Furthermore, bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with the Complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Here, Respondent created a likelihood of confusion with Complainant and its DELL Mark by registering a disputed domain name that incorporates in its entirety Complainant’s DELL Mark, with the exception of a hyphen and the letters “tr”. Respondent’s use of the disputed domain name resolves to a website that displays products and services similar to those the Complainant offers through its legitimate online retail business.
Second, the fame of the DELL Mark, which was adopted by Complainant far in advance of the Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with such a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the DELL Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). As noted above, the DELL Mark is widely known worldwide. Respondent registered the disputed domain name on October 11, 2015, years after the DELL Mark was first used in commerce. It therefore strains credulity to believe that Respondent had not known of the Complainant or its DELL Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <dell-tr.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 23, 2020
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