Dell Inc. v. soniya c/o Mani
Claim Number: FA1305001501740
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is soniya c/o Mani (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellshowroominbangalore.com> and <dellbangalore.com>, registered with GOOD DOMAIN REGISTRY PVT LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2013; the National Arbitration Forum received payment on May 24, 2013.
On May 27, 2013, GOOD DOMAIN REGISTRY PVT LTD. confirmed by e-mail to the National Arbitration Forum that the <dellshowroominbangalore.com> and <dellbangalore.com> domain names are registered with GOOD DOMAIN REGISTRY PVT LTD. and that Respondent is the current registrant of the names. GOOD DOMAIN REGISTRY PVT LTD. has verified that Respondent is bound by the GOOD DOMAIN REGISTRY PVT LTD. 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 May 31, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2013 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@dellshowroominbangalore.com, postmaster@dellbangalore.com. Also on May 31, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names 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. Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Dell has used television, radio, magazines, newspapers, and the Internet as marketing media. Dell has been, and continues to be, extremely successful. Dell sells its products and services in over 180 countries, including India. For several years, Dell has been the world’s largest direct seller of computer systems. As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and in many other countries. More information about Dell can be found at www.dell.com.
ii. Dell’s Marks and Registrations
Complainant has used the famous mark DELL, as well as various other marks that incorporate the word DELL (the “Dell Marks”), for many years for computers (including desktop and laptop computers), computer service and support, computer batteries, tablets, projectors, servers, workstations, and other computer-related products and services. Dell owns a number of U.S. trademark registrations for the Dell Marks, a number of which are incontestable, as well as trademark registrations in numerous jurisdictions around the world. See, e.g., U.S. Reg. Nos. 1,860,272; 2,236,785; 2,794,705; 2,808,852; and 3,215,023. Dell also uses various other marks such as ALIENWARE, LATITUDE, INSPIRON, VOSTRO, and XPS, among many others, for similar computer-related products and services, and Dell owns a number of registrations for these marks. See, e.g., U.S. Reg. Nos. 1,424,688; 2,254,835; 2,616,204; 3,399,117; 3,449,467; and 3,465,293.
iii. Dell’s E-commerce Services
As noted above, Dell’s primary website is located at the domain name dell.com. Dell’s products and services, including laptops, laptop batteries, chargers, and services and support relating to computers, may be ordered or obtained online by consumers, and Dell’s products are shipped all around the world. Dell does a significant volume of its business online.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. The disputed domain names are identical or confusingly similar to Complainant’s Dell Marks. Specifically, the domain names are identical or confusingly similar as follows:
· dellshowroominbangalore.com incorporates the famous mark DELL in its entirety, merely tacking on the words “showroom,” “in,” and “Bangalore,” terms highly likely to be associated with Dell and its goods and services. Further, the term “Bangalore” is geographically descriptive of a location where Complainant offers goods and services.[1]
· dellbangalore.com incorporates the famous mark DELL in its entirety, merely tacking on the geographically descriptive word “Bangalore.”[2]
The presence of a generic top-level domain (“.com”) in these domain names is irrelevant in a UDRP 4(a)(i) analysis.[3]
b. Respondent has no rights or legitimate interests in the domain names.
i. Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Rather, the domain names dellshowroominbangalore.com and dellbangalore.com are used for websites prominently displaying the Dell Marks, and offering or promoting products and services that Respondent represents are genuine Dell products and services, but which in fact are not.
For example, the website at dellshowroominbangalore.com prominently features a DELL STORE logo. The bottom right-hand corner of the home page of this site invites consumers to “Contact Dell” and “Call or chat with a Dell sales expert,” and also displays the text “Dell support is customized to meet your needs. Contact Dell for sale and service support. we guide you to go further step [sic]. You can reach Dell support Mon-sat(9:30AM- 9:00PM).” Further, this website also copies the look and feel of Dell’s official www.dell.com website, and uses slogans and images used by Dell on its official website. For example, the site at dellshowroominbangalore.com uses colors and fonts similar to those used by Dell on its official website, and (among other similarities with the www.dell.com website) the home page at dellshowroominbangalore.com features an image displaying (in part) two Dell laptops and the words “Affordable, portable fun.” This similarity further exacerbates the confusion caused by Respondent’s use of the Dell Marks and its misrepresentations that it is an authorized Dell service provider. This website also contains pages promoting “Dell Laptops” and “Dell desktops” that feature images of laptops and laptop batteries with a brand of Dell computer listed under each image (e.g. “Alienware,” “Inspiron,” “Vostro,” and “XPS”). When viewing individual products promoted on these web pages, a link entitled “Visit Dell Store” is displayed that leads to the “Contact” page of this website where Respondent solicits contact information of Internet users using a “Dell Sales Enquiry” online form. The “Contact” page of the site also provides a map and address for a “Dell Showroom Bangalore.” This website also has a “Dell Service” page promoting services such as “hardware support,” “Dell PC Diagnostics,” “Non-Dell Product Support,” etc. The site also has a page promoting “Dell Mobiles & Tablets.”
Similarly, the website at dellbangalore.com prominently features a DELL logo that incorporates the words “DELL LAPTOP STORE” at the top of each page of the site, and the DELL logo is prominently displayed on various pages of the site. Further, the home page of the site contains the text “Authorised [sic] Dell Laptop Store in Chennai,” as well as a statement that the “Laptop Store is India's largest Dell online laptop shop offering all Dell Laptops, Dell Notebooks, Dell Notebook Accessories.” The home page also invites consumers to “Visit our dell showroom for more models and offers.” This website also has a menu bar with links entitled “Dell Laptops,” “Dell Pricelists,” “Dell Desktops,” and “Dell Services,” each of which leads to pages promoting various Dell products or services and featuring images of various brands Dell computers (e.g. “Alienware,” “Inspiron,” “Vostro,” and “XPS”). The menu bar also has a link for “Dell for Buisness [sic]” that leads to a page promoting Dell projectors, Dell servers, and Dell workstations. When viewing the products displayed on these pages, links entitled “Buy” and “Buy Now” are displayed that lead to the “Store Locator” page of the site where Respondent solicits contact information of Internet users. The site also has a copyright notice that states “2012 © Dell Laptop.”
ii. Respondent is not commonly known by the domain names at issue. In addition, Complainant has not licensed or otherwise permitted Respondent to use its Dell Marks, or any other mark owned by Complainant.
iii. As described in paragraph 5(b)(i) above, Respondent is attempting to gather Internet users’ personal information on its websites at dellshowroominbangalore.com and dellbangalore.com after falsely creating an association with Complainant. Respondent may then commercially benefit by abusing that information and/or by selling that information to third parties.[4]
iv. Respondent is not making a legitimate noncommercial or fair use of the domain names.
c. Respondent registered and is using the domain names in bad faith.
i. Not only are the domain names dellshowroominbangalore.com and dellbangalore.com themselves highly likely to cause confusion, but Respondent’s bad faith is clearly demonstrated by the evidence explained in paragraph 5(b)(i) above, which shows that Respondent is using these domain names for websites that attempt to deceive consumers into believing that Respondent is an authorized Dell distributor and service provider and that the products promoted on the websites are genuine Dell products.
ii. By using the disputed domain names dellshowroominbangalore.com and dellbangalore.com for websites prominently displaying the Dell Marks and promoting non-genuine Dell services and products that Respondent represents are authorized by Dell, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s Dell Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites.
iii. Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain names; and Respondent’s domain names incorporate exactly the famous DELL mark. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to own the DELL mark through its trademark registration with the United States Patent & Tradeamrk Office (“USPTO”) (e.g., Reg. No. 1,860,272 registered on October 25, 1994). Complainant also owns additional marks for similar computer-related products and services, such as ALIENWARE (e.g., Reg. No. 2,616,204 registered on September 10, 2002) and VOSTRO (e.g., Reg. No. 3,399,117 registered on March 18, 2008). Complainant’s USPTO trademark registrations adequately establish Complainant’s rights in the DELL mark under Policy ¶4(a)(i), despite the fact Respondent resides in India. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 2007)(finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant claims the <dellshowroominbangalore.com> and <dellbangalore.com> domain names are confusingly similar to the DELL mark. The <dellshowroominbangalore.com> domain merely adds the words “showroom” “in” and “Bangalore,” which are descriptive terms associated with Complainant. The term “Bangalore,” which is included in both disputed domain names, is merely geographically descriptive of a location where Complainant offers its goods and services. The addition of generic or descriptive words to a registered mark does not sufficiently distinguish between the mark and the disputed domain name. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i). The addition of geographic terms does not normally avoid a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶4(a)(i).”); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶4(a)(i) analysis.”). The gTLD “.com” is irrelevant for Policy ¶4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The <dellshowroominbangalore.com> and <dellbangalore.com> domain names are confusingly similar to Complainant’s DELL mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the domain names in dispute. Complainant has neither licensed nor otherwise authorized Respondent’s use of the DELL mark. The WHOIS information does not demonstrate Respondent is commonly known by the disputed domain names. Respondent has no permission to use the DELL mark. Therefore, Respondent is not commonly known by the domain names in dispute under Policy ¶4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent’s use of the DELL mark in the disputed domain names does not constitute a bona fide offering of goods or services, nor does Respondent’s use constitute a legitimate noncommercial or fair use. The disputed domain names resolve to webpages featuring Complainant’s logo and mark which advertise counterfeit goods and services purporting to be Complainant’s genuine products. Respondent does not offer genuine Dell products. The sale of counterfeit goods does not constitute a bona fide use or noncommercial or fair use. See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods and services nor a legitimate noncommercial fair use under Policy ¶¶4(c)(i) and (iii).
Complainant claims the resolving webpages copy the look and feel of Complainant’s official website. The resolving webpages use slogans, images, contact information, and links that appear on Complainant’s official website. It seems evident Respondent is attempting to impersonate Complainant. Respondent cannot acquire rights or legitimate interests in the disputed domain names where the respondent attempts to pass itself off as the complainant. Respondent’s use of Complainant’s online themes and imaging in the resolving websites is evidence the domain names at issue do 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Ctr. LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant claims Respondent is attempting to gather Internet users’ personal information through the disputed domain names and may benefit by abusing that information and/or selling the information to third parties. This practice is known as phishing. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Phishing does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(1), or a legitimate noncommercial or fair use pursuant to Policy 4 (c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not comport with Policy ¶¶4(c)(i) or (iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent intentionally creates confusion with Complainant for commercial gain. Respondent uses the disputed domain names to offer and promote counterfeit products. Respondent’s use of the DELL mark in the disputed domain names does constitute bad faith pursuant to Policy ¶4(b)(iv) under these circumstances. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Complainant claims Respondent’s bad faith is further evidenced by Respondent’s attempt to imitate Complainant’s official website and conduct itself as though it is an authorized dealer of Complainant’s goods and services. The resolving webpages use slogans, images, contact information, and links that appear on Complainant’s official website. Such efforts by Respondent to pass itself off as Complainant provide evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant also claims Respondent is attempting to gather Internet users’ personal information through the disputed domain names and may benefit by abusing that information and/or selling the information to third parties. Phishing is evidence of bad faith under Policy ¶4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <dellshowroominbangalore.com> and <dellbangalore.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 5, 2013
[1] Harrah's License Co., LLC v. Eric Hawkins, Case No. FA1225284 (NAF Oct. 21, 2008) (“a registered trademark followed by a geographical locator . . . can show confusing similarity, particularly where the complainant does business under the name of the mark in the geographical place indicated.”).
[2] Id.
[3] Trip Network Inc. v. Alviera, Case No. FA914943 (NAF Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶4(a)(i) analysis).
[4] See, e.g., Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (NAF Apr. 30, 2010) (transferring name and stating, the respondent’s “attempt to ‘phish’ for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”
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