Dell Inc. v. Dell Milton
Claim Number: FA1610001700610
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Dell Milton (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllikethecomputer.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically October 31, 2016; the Forum received payment October 31, 2016.
On November 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delllikethecomputer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@delllikethecomputer.com. Also on November 1, 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 November 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Policy ¶ 4(a)(i)
Complainant has rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered on October 9, 1990). Respondent’s <delllikethecomputer.com> domain name is confusingly similar to the DELL mark because it contains the mark along with the generic phrase “like the computer” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the domain name, <delllikethecomputer.com>, despite being known as “Dell Milton” because the phrase “like the computer” is not part of Respondent’s name and Respondent is not authorized to use the DELL mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to offer competitive visual and web design services on a website designed to create an impression of association with Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <delllikethecomputer.com> domain name in bad faith because the resolving website is used to offer competitive visual and web design services on a website designed to create an impression of association with Complainant. Respondent registered the <delllikethecomputer.com> domain name in bad faith because Respondent did so with actual knowledge of Complainant’s rights in the DELL mark as demonstrated by references to Complainant on the website and within the domain name.
Respondent:’s Allegations in this Proceeding:
Respondent failed to submit a formal Response. The Panel notes that Respondent registered the <delllikethecomputer.com> domain name, March 3, 2016, some 26 years after Complainant registered its protected mark.
Complainant has well-known rights and legitimate interests in the mark contained within the disputed domain name.
Respondent registered the disputed domain name, which is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the mark and no permission to use it in any manner.
Respondent registered and is using the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant claims rights in the DELL mark through its registration with the USPTO (e.g., Reg. No. 1,616,571, registered October 9, 1990) which it uses for desktop computers, laptops and related goods and services. Complainant provided this registration in Exhibit C. Therefore, the Panel finds that Complainant has rights in the DELL mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
Complainant argues that Respondent’s <delllikethecomputer.com> domain name is confusingly similar to the DELL mark because it contains the mark along with the phrase “like the computer” and the gTLD “.com.” Complainant urges that the phrase “like the computer” is both generic and clearly referential to Complainant. This Panel agrees, the <delllikethecomputer.com> domain name is confusingly similar to the DELL mark under which Complainant produces and markets computers among other things. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 maintains that Respondent is not commonly known by the <delllikethecomputer.com> domain name despite being identified by the available WHOIS information as “Dell Milton” because the phrase “like the computer” is not part of Respondent’s name and Respondent is not authorized to use the DELL mark. This Panel agrees; Complainant prevails on its argument because no other evidence would support findings to the contrary. Respondent is not commonly known by the disputed domain name. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum March 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information); see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that Respondent fails to use the <delllikethecomputer.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to offer competitive visual and web design services on a website designed to create an impression of association with Complainant. Complainant provided screenshots of the website in Exhibit D to demonstrate that the website contains a blue and white color scheme similar to that of Complainant, the display of a circular logo similar to ones used by Complainant, direct references to Complainant through the displayed words “Yes Dell, like the computer,” and the purported offering of visual and web design services. This Panel agrees that Respondent is using the <delllikethecomputer.com> domain name to offer competing services to those of Complainant or to otherwise foster the impression that an association exists between Complainant and the resolving website, which is contrary to fact. The Panel finds that Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does 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 also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent uses the <delllikethecomputer.com> domain name in bad faith because the resolving website is used to offer competitive visual and web design services on a website designed to create an impression of association with Complainant. Complainant provided screenshots of the website in Exhibit D to demonstrate that the website contains a blue and white color scheme similar to that of Complainant, the display of a circular logo similar to ones used by Complainant, direct references to Complainant through the displayed words “Yes Dell, like the computer,” and the purported offering of visual and web design services. This Panel finds this evidence sufficient to support findings that Respondent uses the domain name in bad faith according to policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Complainant maintains as well that Respondent registered the <delllikethecomputer.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the DELL mark as demonstrated by references to Complainant on the website and within the domain name. This Panel agrees and finds that the nominal use of Complainant’s mark and use that seeks to opportunistically capitalize on a purported relationship with Complainant that does not exist, supports findings that Respondent shows actual knowledge at the time of domain name registration, and registered the disputed domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”)
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <delllikethecomputer.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 5, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page