Dell Inc. v. Ganesh Ganga
Claim Number: FA1509001636163
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Ganesh Ganga (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptopservices.com>, registered with GoDaddy.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2015; the Forum received payment on September 2, 2015.
On September 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delllaptopservices.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 September 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2015 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@delllaptopservices.com. Also on September 8, 2015, 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 October 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
A. Complainant’s Contentions
1. Complainant owns the DELL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Complainant uses the DELL mark in connection with its computers, computer parts, computer security software and services, and other computer-related products and services. The <delllaptopservices.com> domain name is confusingly similar to the DELL mark. The domain name incorporates Complainant’s mark in full, inserts the generic words “laptop” and “services,” and adds a generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s DELL mark. Respondent is not licensed or permitted by Complainant to use Complainant’s mark. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is affiliated or connected with Complainant. See Compl., at Attached Ex. F. Respondent’s website copies the look and feel of Complainant’s official website, and further advertises products of Complainant’s competitors.
3. Respondent has engaged in bad faith registration and use of the <delllaptopservices.com> domain name pursuant to Policy ¶ 4(a)(iii). Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Further, Respondent registered the disputed domain name with knowledge of the DELL business and its rights in the mark. Additionally, Respondent attempts to gather Internet users’ personal information after falsely creating an association with Complainant, which is further evidence of bad faith registration under Policy ¶ 4(a)(iii).
B. Respondent’s Contentions
1. Respondent did not submit a Response.
1. Respondent’s <delllaptopservices.com> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <delllaptopservices.com> domain name.
3. Respondent registered or used the < delllaptopservices.com> 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 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 contends that it owns the DELL mark through registration with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Complainant states that it uses the DELL mark in connection with its computers, computer parts, computer security software and services, and other computer-related products and services. Past panels have found that a complainant whose mark is registered through federal authorities has sufficient rights in the mark pursuant to Policy ¶ 4(a)(i), even where the respondent operates in a different jurisdiction. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in the DELL mark under Policy ¶ 4(a)(i), even though Respondent reportedly operates in India.
Complainant further asserts that the <delllaptopservices.com> domain name is confusingly similar to the DELL mark. The domain name incorporates Complainant’s mark in full, inserts the generic words “laptop” and “services,” and adds a gTLD “.com” to the domain name. Panelists have found that inserting generic words, such as “laptop” and “services” does not sufficiently differentiate the domain name from the otherwise incorporated mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Further, past panels have held that the addition of a gTLD does nothing to negate confusing similarity. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Therefore, this Panel finds that the <delllaptopservices.com> domain name is confusingly similar to the Complainant’s registered DELL mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name nor by Complainant’s DELL mark. The Panel notes that the WHOIS information lists “Ganesh Ganga” as the registrant of record. Further, Complainant contends that Respondent is not licensed or permitted by Complainant to use Complainant’s mark. Panel notes that the WHOIS information for the disputed domain name lists “Ganesh Ganga” as the registrant of record. The Panel also notes that Respondent has failed to submit a response to rebut any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name as required under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent’s disputed domain name resolves to a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is affiliated or connected with Complainant. See Compl., at Attached Ex. F. Respondent’s website copies the look and feel of Complainant’s official website, and further advertises products of Complainant’s competitors. Previous panels have found that none of these uses of a disputed domain name is a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent has failed to establish a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that the disputed domain name displays the DELL marks and images of Complainant’s products, which demonstrates that Respondent attempts to create confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Compl., at Attached Ex. F. Past panels have found bad faith registration and use where Respondent’s feature competing goods and services on a confusingly similar domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). The Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent registered the disputed domain name with knowledge of the DELL business and its rights in the mark. Complainant claims that it is clear that Respondent knew of Complainant’s famous DELL Marks and rights based on Respondent’s use of the disputed domain names to host a website which copies Complainant’s logo, the look and feel of Complainant’s official website, refers visitors to Complainant’s official telephone number, and offers services for Complainant’s products. See Compl., at Attached Ex. F. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Additionally, Complainant urges that Respondent attempts to gather Internet users’ personal information after falsely creating an association with Complainant, which is further evidence of bad faith registration under Policy ¶ 4(a)(iii). See Compl., at Attached Ex. G. Previous panelists have agreed that phishing for Internet users’ personal information is evidence of bad faith under Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates). The Panel finds that Respondent’s phishing activities are additional evidence of bad faith registration and use pursuant 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 <delllaptopservices.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 13, 2015
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