Dell Inc. and Boomi, Inc. v. srideviharisith nrs
Claim Number: FA2004001891347
Complainant is Dell Inc. and Boomi, Inc. (“Complainant”), represented by Caitlin Costello, Virginia, United States. Respondent is srideviharisith nrs (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boomiacademy.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2020; the Forum received payment on April 8, 2020.
On April 9, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <boomiacademy.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 April 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@boomiacademy.com. Also on April 9, 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 Notification of Respondent Default.
On May 1, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “[t]he Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
This Panel finds that there is sufficient nexus between the Parties herein to comply with FORUM’s Supplemental Rule 1(e) because the second Complainant is a wholly owned indirect subsidiary of the first Complainant.
A. Complainant
Complainants claim rights in the BOOMI trademark acquired through their ownership of the trademark registrations described below and use of the mark by the second named Complainant whose services include free on-demand technology training and certification courses, as well as a “BOOMI blog”.
Complainants submit that the disputed domain name is identical or confusingly similar to Complainants’ BOOMI mark. Specifically, the disputed domain name <boomiacademy.com> incorporates the mark BOOMI in its entirety, merely tacking on the generic phrase “academy,” which is highly likely to be associated with Complainants and their goods and services. The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP ¶ 4(a)(i) analysis. Trip Network Inc. v. Alviera, Case No. FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainants further submit that Respondent has no right or legitimate interests in the disputed domain name asserting that Respondent is not an authorized provider of Complainants’ products or services. In addition, Complainants have not licensed or otherwise permitted Respondent to use their BOOMI marks, or any other marks they own.
Complainants next allege that Respondent is not commonly known by the domain name at issue.
Complainants argue that Respondent has neither used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Referring to a screenshot of the website to which the disputed domain name resolves which is annexed as an exhibit to the Complaint, Complainants submit that Respondent’s website prominently displays the BOOMI mark throughout and features a color scheme containing blue and white that is reminiscent of that found on Complainants’ official site. Respondent’s website purports to allow visitors to do online training courses on tech topics and programs, such as PEGA, Cyber Security, Blue Prism, Microsoft Azure, JAVA Script, and Oracle DBA. Information is provided regarding each courses’ number of lectures and quizzes, as well as the instructor name, duration time, and number of students. However, the course information indicates that there were “0” lectures and “0” quizzes for each course, as well as “0” ratings. Moreover, the courses do not appear to feature any specific instructor’s name or duration time. Nonetheless, many of these courses do have a number of “enrolled students” identified in the course information.
Furthermore, in each specific course listing, there is a “BUY THIS COURSE” button. Visitors that click on the button are taken to a contact page, which requests visitors’ personal information, such as their email address. It likewise provides two phone numbers for users to call, one with a Los Angeles, CA area code, and the other with a Texas area code covering multiple counties. There is likewise a fake phone number provided on Boomi Academy’s Facebook page.
Complainants submit that such use of Complainants’ BOOMI mark for the purported offering of services is not a use of the disputed domain name in connection with a bona fide offering of goods and services. See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 0104580 (Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Complainants conclude that Respondent is not making a legitimate noncommercial or fair use of the domain name and that Respondent’s inclusion of their BOOMI mark in the domain name is not a nominative fair use.
Complainants further submit that Respondent registered and is using the disputed domain name in bad faith. By using the disputed domain name for a website displaying the BOOMI mark that offers competing services, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Dell Inc. v. Pritam Singh c/o Pandaje Technical Services Pvt Ltd., FA 1645279 (Forum Dec. 5, 2015) (holding “Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion” and finding bad faith).
Furthermore, Complainants’ allege that Respondent has failed to respond to cease-and-desist letters from Complainants, which supports a finding of bad faith.
Complainants additionally submit that Respondent’s use of Complainants’ marks in connection with the solicitation of users’ personal contact information in this context supports a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures and markets computers, computer accessories, and other computer-related products and services and has also developed a family of businesses, collectively known as Complainant Technologies, that offers products and services related to technology, software, security, and more.
The second Complainant is a wholly owned indirect subsidiary of the first Complainant that offers on-demand integration technology services under the mark BOOMI mark.
The first Complainant is the registered owner of the following trademark registrations in the jurisdiction where Respondent claims to be established:
Indian registered trademark DELL BOOMI, registration number 206 2549, registered on June 27, 2018 for goods in 9.
Indian registered service mark DELL BOOMI, registration number 206 2548, registered on June 27, 2018 services in class 42.
The second Complainant is the registered owner of United States registered trademark BOOMI, registration number 3,453,159, registered on June 24, 2008 on the Principal Register for goods and services international classes nine and 42.
The disputed domain name was registered on October 28, 2018 and resolves to a website purports to offer to the public training for technology services including cybersecurity and computer programming.
There is no information about Respondent except for that which is provided in the Complaint, on the Registrars WhoIs, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of 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 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”).
Complainants have adduced convincing uncontested evidence of their rights in the BOOMI trademark acquired through their ownership of the trademark registrations described below and use of the mark by the second named Complainant.
The disputed domain name <boomiacademy.com> is composed of the Complainants’ BOOMI in its entirety, the descriptive phrase “academy” and the gTLD <.com> extension.
Complainant’s BOOMI trademark is the initial and only distinctive element of the disputed domain name. The word “academy” is descriptive of training services which are offered by the second Complainant and purported to be offered by the Respondent. It has no distinguishing characteristic.
For the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainants have made a prima facie case that Respondent has no right or legitimate interests in the disputed domain name asserting that Respondent is not an authorized provider of Complainants’ products or services; that Complainants have not licensed or otherwise permitted Respondent to use their BOOMI mark; that Respondent is not commonly known by the disputed domain name; that 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 a bona fide offering of goods or services; that the website to which the disputed domain name resolves prominently displays the BOOMI mark and features a color scheme containing blue and white that is reminiscent of that found on Complainants’ official site; that Respondent is using the disputed domain name as the address of a website that purports to offer services which are competing with the second Complainant’s training products and that the information on Respondent’s website indicates that Respondent is not making a legitimate noncommercial or fair use of the domain name and that Respondent’s inclusion of BOOMI in the domain name is not a nominative fair use.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainants have therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the distinctive character of the BOOMI mark which is the dominant element of the disputed domain name and the use to which the disputed domain name has been put, resolving to a website which is competitive with Complainants’ business, this Panel must find on the balance of probabilities that it is implausible that the disputed domain name was chosen and registered for any reason other than to reference Complainants’ BOOMI mark and to target Complainants’ goodwill and reputation in the mark in order to attract and divert Internet traffic. This panel finds therefore that the disputed domain name was registered in bad faith.
Complainants have adduced evidence illustrating that the disputed domain name resolves to a website displaying the BOOMI mark that offers services that compete with those offered by Complainants and in particular the technology training offerings of the second named Complainant.
This Panel finds therefore that by using the disputed domain name in this way Respondent has, in bad faith, intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Furthermore, given the circumstances, outlined in the Complaint, this Panel accepts Complainants’ submission that Respondent’s failure to respond to cease-and-desist letters from Complainants and Respondent’s use of Complainants’ marks in connection with the solicitation of users’ personal contact information also support a finding of bad faith use of the disputed domain name.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainants have therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and are entitled to be granted the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boomiacademy.com> domain name be TRANSFERRED from Respondent to the first Complainant, Dell Inc.
______________________________________
James Bridgeman SC
Panelist
Dated: May 2, 2020
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