Dell Inc. v. World Trade Key In
Claim Number: FA1402001544455
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is World Trade Key In (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellsupport.info> and <dellindia.info>, registered with Crazy Domains FZ-LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2014; the National Arbitration Forum received payment on February 19, 2014.
On February 21, 2014, Crazy Domains FZ-LLC confirmed by e-mail to the National Arbitration Forum that the <dellsupport.info> and <dellindia.info> domain names are registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the names. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 February 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2014 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@dellsupport.info, postmaster@dellindia.info. Also on February 26, 2014, 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.
A timely Response was received and determined to be complete on March 7, 2014.
On March 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant asserts that
· Complainant has used the DELL mark for a number of years to market and sell various computing and electronic devices and related services around the world, including in Respondent’s home country of India. Complainant has protected its brand by obtaining trademark registration for the DELL mark in the appropriate jurisdictions. See, for example, Complainant’s United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 1,860,272 registered October 25, 1994).
· Respondent’s <dellsupport.info> and <dellindia.info> domain names are confusingly similar to the DELL mark. The terms are both highly associated with Complainant’s business: one implies “support” service, the other a geographic area in which Complainant is known to operate extensively. The presence of a generic top-level domain (“gTLD”) “.info” is not relevant.
Policy ¶ 4(a)(ii)
Complainant asserts that
· Respondent is not known by these domain names. Complainant has not permitted Respondent to otherwise use the DELL mark in domain names.
· Respondent is using these domain names to deceive Internet users into believing that they will receive official DELL support services. Respondent goes so far as to use Complainant’s own design and word marks throughout the associated websites.
· Respondent’s deception goes as far as to solicit Internet users’ personal information. Respondent may then sell off this information to third parties.
Policy ¶ 4(a)(iii)
Complainant asserts that
· Respondent uses Complainant’s own marks on the domain names’ websites so as to amplify the likelihood that Internet users will mistakenly associate Complainant with Respondent’s schemes. As a result, Respondent can offer unauthorized services and/or sell off Internet users’ personal information.
· Respondent’s information gathering techniques infer bad faith.
· Respondent must have been well aware of Complainant’s interest in the DELL mark prior to registering the domain name. It is otherwise unexplainable for Respondent to appropriate Complainant’s specific DELL marks in the promotion of Respondent’s independent schemes.
B. Respondent
Based on the documents filed by Respondent the followings can be stated:
· Respondent apologizes as to its registration of these domain names, and claims that it lacked knowledge of the DELL marks.
· Respondent has already "closed" the disputed domain names and Respondent and its “client” do not mind if Complainant and this Panel do “whatever they thought is good” regarding the domain names.
· Respondents requests the Panel to "close the matter and do not stretch it more".
· Respondent points out several other undisputed domain names that include the DELL mark, and questions whether Complainant seeks to take action on those domain names.
1. Complainant, Dell Inc., has been engaged in the business of marketing and selling various computing and electronic devices and related services for a number of years around the world, including in Respondent’s home country of India, where the Complainant has a significant market presence and the largest employee basis outside the US.
2. Complainant is the owner of numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DELL mark as well as various other marks including the word DELL (e.g. U.S. Reg. Nos. 1,860,272; 2,236,785; 2,794,705; 2,806,770; 2,808,852; and 3,215,023).
3. Respondent registered the <dellsupport.info> and <dellindia.info> domain names with Crazy Domains FZ-LLC and that Respondent is the current registrant of the domain names.
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.
Complainant argues that it has used the DELL mark for a number of years to market and sell various computing and electronic devices and related services around the world, including in Respondent’s home country of India. Complainant has protected its brand by obtaining trademark registration for the DELL mark in the appropriate jurisdictions such as with the USPTO (e.g., Reg. No. 1,860,272 registered October 25, 1994). The Panel finds that USPTO registration satisfies Complainant’s burden to show rights under Policy ¶ 4(a)(i), regardless of where Respondent dwells. See, e.g., Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”). The Panel notes that evidences furnished by Complainant demonstrate that the Complainant's DELL mark is probably well-known in the relevant market in India.
The Panel agrees with the Complainant that both domain names are confusingly similar under Policy ¶ 4(a)(i), as both add a single term to form a phrase in which the DELL mark remains the dominant feature, whilst adding a gTLD. The Panel finds that the addition "support" is in close association with the contents of the websites operated under the disputed domain names (Exhibit H-I), while the addition "india' refers to the location of the Respondent, therefore both additions are considered as mostly descriptive terms. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
The Panel notes that Respondent made no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that there is no evidence in the record that Respondent is known by the disputed domain names, and Respondent does not suggest that it has ever been known by the names. See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
The Panel finds that both the <dellsupport.info> and <dellindia.info> domain names have websites that use the Complainant’s own design and word marks including the DELL mark extensively in promoting Respondent’s own computer services. See Compl., at Attached Exs. H–I. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) the panel agreed that the use of a complainant’s own marks to promote a competing business was neither bona fide under Policy ¶ 4(c)(i), nor legitimately noncommercial or fair under Policy ¶ 4(c)(iii). The Panel therefore finds that Respondent’s competing services, offered under the DELL mark, fail to rise to the level of a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel notes that Respondent made no contentions with regards to Policy ¶ 4(a)(ii).
The Panel highlights that Respondent uses Complainant’s own marks on the disputed domain names’ websites so as to amplify the likelihood that Internet users will mistakenly associate Complainant with Respondent’s schemes. The Panel hereby notes that Respondent did make efforts to utilize Complainant’s color schemes whilst also incorporating Complainant’s own trademarks into the websites associated with the <dellsupport.info> and <dellindia.info> domain names. See Compl., at Attached Exs. H–I. The Panel therefore finds that the nature of the disputed domain names’ websites creates a Policy ¶ 4(b)(iv) likelihood of confusion through which Respondent may unfairly profit, evincing bad faith registration and use. See, e.g., Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that based on the evidence furnished by Complainant, the Respondent must have been well aware of Complainant’s interest in the DELL mark prior to registering the domain name, since it is otherwise unexplainable for Respondent to appropriate Complainant’s specific DELL marks in the promotion of Respondent’s independent schemes. The Panel therefore finds that Respondent had actual knowledge of Complainant's mark and rights and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel notes that Respondent made no contentions with regards to 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 <dellsupport.info> and <dellindia.info> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: March 27, 2014
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