DECISION

 

Dell Inc. v. dell service

Claim Number: FA1606001677667

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA.  Respondent is dell service (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <delllaptopservicecenterinnoida.com>, registered with GoDaddy.com, LLC.

 

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 Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.

 

On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delllaptopservicecenterinnoida.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 June 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2016 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@delllaptopservicecenterinnoida.com.  Also on June 7, 2016, 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 July 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Trademark/Service Mark Information:

                       

i.                    Dell and its Business

 

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, including India.  More information about Dell can be found at www.dell.com and www.dell.co.in, Dell’s official website for India.  Moreover, 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 laptops, desktops, computer parts and accessories, computer service and support, and other computer-related products and services.  For example, Dell offers technical and repair services for its laptops, desktops, and other products on its website at www.support.dell.com.  In addition, Dell has long used the marks LATITUDE, INSPIRON, and VOSTRO in connection with its product offerings.  Dell owns a number of trademark registrations for its marks, many of which are incontestable.  See, e.g., U.S. Reg. Nos. 1,860,272, 2,236,785, 2,254,835, 2,794,705, 2,806,769, 2,806,770, 2,808,852, 3,215,023, 3,399,117, 3,465,293.

 

 

 

                        ii.         Dell’s Presence in India

With more than 22 percent of the market, as recently as 2014 Dell was the number two PC maker in India.  See, e.g., With Upbeat End-User Sentiments, India PC Market Shows Signs Of Improvement in CY 2014, Says IDC, International Data Corporation (2015), http://www.idc.com/getdoc.jsp?containerId=prIN25465215.  In fact, Dell has been one of the leaders in the India PC market for several years.  See, e.g., Anurag Prasad, India's top 5 PC makers by market share, Rediff Business (2011), http://www.rediff.com/business/slide-show/slide-show-1-tech-largest-pc-makers-in-india/20111111.htm.

            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 the generic terms “laptop,” “service,” and “center,” as well as the geographic descriptor “in Noida,”^[1] which are highly likely to be associated with Dell, its goods and services, and its presence in India.  The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP 4(a)(i) analysis.^[2]

 

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 being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is Complainant or is at least affiliated or connected with, or authorized by, Complainant. 

 

For example, Respondent prominently displays a version of the Dell logo at the top of the home page of its website hosted at delllaptopservicecenterinnoida.com as shown below:

 

Dell Service Centers

Respondent’s website is used to promote computer repair and support services that compete with those of Complainant.  Respondents specifically lists several DELL brands for which it offers its services, including LATITUDE, INSPIRON, and VOSTRO. Respondent’s website prominently displays pictures of Dell products and copies the look and feel of Complainant’s official www.dell.com website, utilizing similar colors and fonts to those used by Complainant on its official website.  Like www.dell.com, it features a rotating display showcasing DELL products prominently on its home page.  In addition, Respondent has entitled its website “Home | Dell Service.”  Respondent’s use of the domain name in the above described manner is highly likely to lead consumers to mistakenly believe that Respondent’s website is affiliated with, or endorsed by, Dell.

 

ii.         After falsely creating an association with Complainant as described in paragraph 7(b)(i) above, Respondent attempts to gather Internet users’ personal information through its “Enquiry Now..!!” form, near the bottom of its webpage.  This form asks visitors to provide their “Name,” “Contact No.,” and “Email.”  Respondent may then commercially benefit by abusing personal information gathered from users and/or by selling that information to third parties.^[3]

 

iii.        Respondent is not an authorized service provider of Complainant’s computer repair services.  In addition, Complainant has not licensed or otherwise permitted Respondent to use its DELL Marks, or any other mark owned by Complainant.

 

iv.        Respondent is not commonly known by the domain name at issue.  Although the WhoIs information identifies “dell service” as the Registrant of the domain name, as outlined above, Complainant believes the provided WhoIs information is false or incomplete.

 

v.         Respondent is not making a legitimate noncommercial or fair use of the domain name.  Respondent’s inclusion of DELL in the domain name is not a nominative fair use.^[4]

 

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

 

i.          The use of a domain name that is confusingly similar to Complainant’s famous DELL Marks is evidence of bad faith.^[5]  Further, it is clear that Respondent knew of Complainant’s famous DELL Marks and rights based on Respondent’s use of the disputed domain name to host a website which copies the look and feel of Complainant’s official website, displays a version of Complainant’s logo, features pictures of Complainant’s products, and offers services for Complainant’s products.

 

ii.         Not only is the disputed domain name highly likely to cause confusion, but Respondent’s bad faith is clearly demonstrated by the evidence explained in paragraph 7(b)(i), above, which shows that the domain name is being used for a website which attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Dell.^[6]

 

iii.        By using the disputed domain name for a website displaying the DELL Marks and images of Complaint’s products, 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 as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

iv.        Respondent’s use of a confusingly similar domain name to promote services that compete with those of Complainant, namely computer repair services, as described above is further evidence of Respondent’s bad faith.^[7]

 

            v.         As noted above, Respondent is attempting to gather Internet users’ personal information after falsely creating an association with Complainant.  Such facts support a finding of bad faith registration and use of the domain name at issue.^[8]

 

vii.       Respondent’s incorrect contact information in the WhoIs record associated with the disputed domain name, as described above, is additional evidence of bad faith. ^[9]

 

vii.       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 the DELL Marks in a site accessible under the domain name; and Respondent’s domain name incorporates exactly the famous mark DELL.  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(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 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 (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 product and services business. Complainant registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered October 25, 1994), which demonstrates its rights in the mark. Registration with the USPTO (or any other governmental authority for that matter) is sufficient to establish rights in a trademark, even where Respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶4(a)(i), even though Respondent reportedly resides in the Isle of Man). At this point in the proceedings Complainant need only demonstrated it has rights, not that its rights are superior to Respondent’s rights.  Complainant has adequately demonstrated its rights in the DELL mark under Policy ¶4(a)(i).  

 

Complainant claims Respondent’s <delllaptopservicecenterinnoida.com> domain name is confusingly similar to the DELL mark because it incorporates the mark in its entirety, along with the generic terms “laptop,” “service,” and “center,” the geographic term “in Noida,” and the gTLD “.com.” First of all, a TLD (where a gTLD, sTLD or ccTLD) must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires a TLD.  Similarly, adding geographic designations does not adequately distinguish the domain name from Complainant’s mark.  Adding descriptive terms which reflect Complainant’s business does not adequately distinguish the domain name from Complainant’s mark.  Such alterations to marks are insufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (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 <delllaptopservicecenterinnoida.com> domain name is confusingly similar to the DELL mark under 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 (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 (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 has no rights or legitimate interests in the <delllaptopservicecenterinnoida.com> domain name. The WHOIS information regarding the <delllaptopservicecenterinnoida.com> domain lists “dell service” as registrant, but Complainant claims this WHOIS information is false or incomplete. Respondent has not disputed this claim.  Complainant has not given Respondent permission to use its DELL mark. Under these circumstances, there is no obvious relationship between Respondent’s unknown real name and the domain name.  This means the Panel cannot conclude is Respondent commonly known by the domain pursuant to Policy ¶4(c)(ii). See T Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Complainant claims Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <delllaptopservicecenterinnoida.com> domain name. Respondent is using the domain name to pass itself off as Complainant to the casual internet viewer. The domain name resolves to a website that features pictures of Complainant’s products, copies the look and color scheme of Complainant’s website, and displays a version of Complainant’s logo. While there is a disclaimer, it isn’t prominent to the causal viewer.  Respondent’s passing off of a website as belonging to Complainant does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii)). Respondent’s <delllaptopservicecenterinnoida.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶4(c)(i) and (iii).

 

Complainant claims Respondent is using the <delllaptopservicecenterinnoida.com> domain name to engage in a phishing scheme. Respondent attempts to gather users’ personal information through an “Enquiry Now…!!!” form on the website, which asks for names, phone numbers, and e-mail addresses. Such use likely constitutes phishing, which Respondent does not dispute. Phishing does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Therefore, Respondent’s use of the disputed domain name to phish for Internet users’ personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).

 

Finally, Respondent has not obtained any rights by registering the domain name because Respondent used a fictitious name.  Respondent has not publicly associated itself with the disputed domain name.  This means Respondent could not have acquired any rights and legitimate interests in the disputed domain name.

 

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

 

Registration and Use in Bad Faith

Complainant claims Respondent’s registration and use of the <delllaptopservicecenterinnoida.com> domain name promotes competing repair services, which constitutes bad faith disruption under Policy ¶4(b)(iii). Complainant and Respondent both repair laptop computers, so they are clearly competitors.  Respondent’s use of its domain to promote competing services also violates Policy ¶4(b)(iv) because Respondent clearly wants to make money doing this. A respondent’s use of a domain to operate a competing website constitutes bad faith under Policy ¶4(b)(iii) and Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). Respondent’s registration and use of the <delllaptopservicecenterinnoida.com> domain name constitutes bad faith under to Policy ¶4(b)(iii) and Policy ¶4(b)(iv).

 

Complainant claims Respondent attracts Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent apparently registered the domain name to pass off a website as belonging to Complainant, creating a likelihood of confusion with Complainant (and Complainant’s mark) to profit from users looking for Complainant’s services. Attracting Complainant’s customers to a competing “look alike” web site constitutes bad faith registration and use under Policy ¶4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”); see also Am. Online, Inc. v. Miles, FA 105890 (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.”)

 

Respondent had actual knowledge of Complainant's rights in the DELL mark. The site clearly uses Complainant’s mark in context.  The site clearly shows Complainant’s business.  It seems an inescapable conclusion Respondent had actual knowledge of Complainant's mark and rights. There is no other rational explanation.  This Panel finds 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 "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant claims Respondent’s use of the disputed domain name to harvest personal information from users, which constitutes phishing. Phishing is evidence of bad faith registration and use. See Capital One Fin. Corp. v. Howel, FA 289304 (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). Therefore, Respondent’s use of a confusingly similar domain name to fraudulently acquire information from Internet users constitutes phishing and is additional evidence of bad faith registration and use under Policy ¶4(a)(iii).

 

Respondent used false and/or incomplete WHOIS information, thereby demonstrating bad faith registration and use under Policy ¶4(a)(iii). Respondent simply repeats the term “delhi” for the Registrant Street, Registrant City, and Registrant State/Province, instead of providing a valid address in the WHOIS information. Using false WHOIS contact information is evidence of bad faith under Policy ¶4(a)(iii). See AT&T Corp. v. ATandT.net, D2005-1006 (WIPO November 22, 2005) (finding that a domain is registered and used in bad faith where “it is clear that Respondent provided false and fictitious information to the registrar of the domain name.”). Therefore, the Panel concludes Respondent has engaged in bad faith registration and use under Policy ¶4(a)(iii).

 

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 <delllaptopservicecenterinnoida.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, July 14, 2016