Dell Inc. v. vikas tiwari
Claim Number: FA1703001724159
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is vikas tiwari (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellofficial.com>, registered with BigRock Solutions Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017.
On March 28, 2017, BigRock Solutions Ltd. confirmed by e-mail to the Forum that the <dellofficial.com> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 March 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2017 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@dellofficial.com. Also on March 29, 2017, 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 30, 2017.
On April 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). Respondent’s <dellofficial.com>[1] is confusingly similar as it incorporates the entire DELL mark and adds the generic term “official” along with the generic top-level domain (“gTLD”) “.com”.
2. Respondent has no rights or legitimate interests in <dellofficial.com>. Respondent is not commonly known by the domain name, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name.
3. Respondent also doesn’t use the domain names for any bona fide offering of goods or services as the domain name resolves to a website almost identical to Complainant’s in an attempt 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.
4. Respondent registered and uses the <dellofficial.com> domain name in bad faith. Respondent registered the domain name to commercially benefit by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent uses the domain name to promote services that directly compete with those of Complainant.
5. Finally, Respondent must have had actual or constructive knowledge, as the disputed domain name resolves to a website nearly identical to Complainant’s official website, while copying Complainant’s logos and featuring offers and services for Complainant’s products.
B. Respondent
Respondent states in email correspondence, “I don't have the intention to pretend that we are dell or similar to dell and we do not wanted to mislead the customers as well. So, Please suggest me how can we settle this dispute.”
Complainant holds trademark rights for the DELL mark. Respondent’s domain name is confusingly similar to Complainant’s DELL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dellofficial.com> domain name and that Respondent registered and uses the 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.
Complainant is one of the largest computer companies in the world. It began engaging in the manufacturing and sale of computers in 1985 in the United States, and now distributes to over 180 countries. Complainant registered the DELL mark with the USPTO in 1990 (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). Registration of a mark with the USPTO sufficiently recognizes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <dellofficial.com> domain name is confusingly similar as it fully incorporates its mark and adds a generic term and a gTLD. Changing marks in these ways have not been held to make a domain name sufficiently distinguishable from a mark in which a complainant has rights. 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.). Similarly, adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Thus, the Panel agrees with Complainant that Respondent’s domain name does not sufficiently distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dellofficial.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in <dellofficial.com>. A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel has learned that the WHOIS identifies “vikas tiwari” as the registrant. Complainant has pointed out there is nothing in the record to show that Respondent has ever been legitimately known by the DELL mark. This is evidence that Respondent lacks rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant also has shown that Respondent has never been legitimately affiliated with Complainant, has never been known by the <dellofficial.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. The Panel concludes Respondent is not commonly known by <dellofficial.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not use the <dellofficial.com> domain for any bona fide offering of goods or services because it attempts to pass off as Complainant. Passing off can show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant has provided evidence that the domain name resolves in a website almost identical to Complainant’s, presumably in an attempt to deceive consumers into thinking that Respondent is Complainant or, alternatively, that Respondent is at least affiliated or connected with or authorized by Complainant. Complainant believes that Respondent does so for commercial benefit. The Panel concludes that Respondent’s use of the <dellofficial.com> domain to pass off as Complainant shows a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <dellofficial.com> in bad faith by attempting to attract users seeking Complainant’s services and commercially benefit by using a confusingly similar domain name and offering competing services. The record supports Complainant’s contention. Conduct of this nature amounts to bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant lastly claims that Respondent must have had actual knowledge of the DELL mark because the <dellofficial.com> domain name resolves to a website nearly identical to Complainant’s official website, while copying Complainant’s logos and featuring offers and services for Complainant’s products. Based on this evidence the Panel agrees that Respondent must necessarily have had actual knowledge of Complainant's rights in the mark prior to registering the domain name and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied 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 <dellofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 18, 2017
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