national arbitration forum

 

DECISION

 

Dell Inc. v. EDISLEY SOUSA c/o DELLPASSWORDS.COM

Claim Number: FA1410001586079

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is EDISLEY SOUSA c/o DELLPASSWORDS.COM (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellpasswords.com>, registered with eNom, Inc..

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2014; the National Arbitration Forum received payment on October 21, 2014.

 

On October 22, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellpasswords.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@dellpasswords.com.  Also on October 22, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 19, 2014, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.  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 many other countries.  More information about Dell can be found at www.dell.com.  Dell was recently named by Adweek as #15 of the “Most Loved Companies” in the world.  (http://www.adweek.com/news/advertising-branding/check-out-top-100-beloved-brands-last-decade-153026).

           

Complainant has used the famous mark DELL, as well as various other marks that include the word DELL (the “DELL Marks”), for many years for computers, computer parts and accessories, computer service and support, and other computer-related products and services.  Dell owns many trademark registrations for the DELL Marks in numerous jurisdictions.  See, e.g., U.S. Reg. Nos. 1,860,272, 2,236,785, 2,794,705, 2,808,852, 3,215,023. 

 

 

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds:

 

a.         The disputed domain name is identical or confusingly similar to Complainant’s DELL Marks.  Specifically, the domain name incorporates the famous mark DELL in its entirety, merely tacking on “passwords,” a generic term highly likely to be associated with Dell and its goods and services.  The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP 4(a)(i) analysis.^[1] 

 

b.         Respondent has no rights or legitimate interests in the domain name. 

 

          i.          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.  Rather, the domain name is used for a website entitled “Top Bios Password Unlock Services for All Dell Laptop!” and purports to sell passwords once consumers send their computer system numbers and payment information.

 

The website states “Want to unlock your Dell Laptop….” and “send us the full numbers displayed on the screen using the form on Paypal button below or sent it by e-mail to unlockyourlaptop@gmail.com.”   The site then indicates you can “buy your passwords here” and requests payment information.  The site promises “We Have Bios & Hard Drive Password for All Dell Laptop displaying Dell Secure manager.”  It further states at the bottom of the page, “Dell can generate a ‘laptop password’ for a particular laptop … [s]o can we, only we make it much easier with no question asked.”  (emphasis added).  The site also prominently displays advertisements for companies unrelated to Dell on the right hand side of the screen. 

 

Respondent’s statement that it will provide information “with no question [sic] asked” indicates that its offerings may not be lawful, or that it knows its customer’s actions may not be lawful yet it is offering to assist in such acts anyway.  Complainant is concerned that such wrongful activity may be attributed to it, particularly in light of the use of the DELL Mark in the domain name.

 

Even assuming arguendo the Respondent is able to otherwise legally sell passwords to consumers for DELL branded products, such a fact would not establish rights or legitimate interests in registering the DELL Marks in the domain name.^[2]  For example, in assessing whether a reseller (authorized or unauthorized) of genuine goods has rights or a legitimate interests in a domain name, UDRP panelists have imposed certain requirements, including that the “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.”^[3]  As noted above, Respondent’s website displays advertising for goods offered by companies unrelated to Dell.^[4]

 

ii.          Respondent is not commonly known by the domain name 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.         Respondent is not making a legitimate noncommercial or fair use of the domain name. 

 

c.         Respondent registered and is using the domain name in bad faith.

 

i.          Respondent must have been well aware of the DELL Marks when he registered the name.^[5]

 

ii.          Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the DELL Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by using the mark DELL in the domain name.

 

            iii.         Respondent’s statement that it will provide information “with no question [sic] asked” indicates that its offerings may not be lawful, or that it is willing to turn a blind eye to its customer’s unlawful actions.  Such statements may support a finding of bad faith registration and use.^[6]  

 

            iv.        Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name 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 name; and Respondent’s domain name incorporates 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.

 

FINDINGS

(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.

 

DISCUSSION

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 prove 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.”).

 

Identical and/or Confusingly Similar

Complainant uses the DELL mark in connection with its computer products and services business.  Complainant owns the DELL mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,860,272, registered October 25, 1994).  Such registrations are sufficient to establish rights in the DELL mark pursuant to Policy ¶4(a)(i).  See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶4(a)(i)).  Complainant’s USPTO registrations satisfy the requirements of Policy ¶4(a)(i).

 

Complainant claims the <dellpasswords.com> domain name is confusingly similar to Complainant’s DELL mark because Respondent has simply added the generic (but related) term “passwords” to the mark.  While this Panel viewed this claim with some skepticism initially, looking at the disputed domain name’s use convinced the Panel of Complainant’s claim.  The disputed domain name differs from the mark because a top-level domain (“gTLD”) “.com” was added.  A domain name differing from a mark by a single generic related term can be confusingly similar under Policy ¶4(a)(i). Adding a gTLD is irrelevant to the Policy ¶4(a)(i) analysis.  See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); 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.”).  Respondent’s <dellpasswords.com> domain name is (and was intended to be) confusingly similar to Complainant’s DELL mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

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 <dellpasswords.com> domain name.  The WHOIS information identifies “Edisley Sousa” as the registrant of the disputed domain name.  Respondent is neither licensed nor authorized to use the DELL mark.  Respondent failed to submit a Response to refute any of Complainant’s contentions.  Given this evidence, the Panel must conclude Respondent is not commonly known by the <dellpasswords.com> domain name pursuant to Policy ¶4(c)(ii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). 

 

Complainant claims Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name.  Respondent uses the disputed domain name to display advertisements for goods of companies that are completely unrelated to Complainant.  Displaying such advertisements is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name.  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).  The verbiage on Respondent’s web site suggests it is doing something illicit about unlocking Dell computer BIOS for end users.  Certainly, Respondent is not selling (or re-selling) solely Complainant’s products (which would be a permissible use).  Respondent is obviously charging for its password cracking services.  Respondent’s actions do not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii).  Respondent does not contend otherwise.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain.  It is inconceivable Respondent did not know about Complainant’s mark.  After all, Respondent was offering to break the BIOS passwords on Complainant’s computers.  Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."  Respondent seems to want to disrupt Complainant’s business (or at least business model)…and to make a profit while doing it. 

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <dellpasswords.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, November 24, 2014