Dell Inc. v. Fatma EMRE / Jibo Bilisim Teknolojileri a/k/a Fatma EMRE / Jibo Bilisim Teknolojileri Fatma EMRE
Claim Number: FA1704001725565
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Fatma EMRE / Jibo Bilisim Teknolojileri a/k/a Fatma EMRE / Jibo Bilisim Teknolojileri Fatma EMRE (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellservisturkiye.com> and <dellservisistanbul.com> registered with FBS Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 6, 2017. The Complaint was submitted in both Turkish and English.
On April 7, 2017, FBS Inc. confirmed by e-mail to the Forum that the <dellservisturkiye.com> and <dellservisistanbul.com> domain names are registered with FBS Inc. and that Respondent is the current registrant of the names. FBS Inc. has verified that Respondent is bound by the FBS 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 April 12, 2017, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of May 2, 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@dellservisturkiye.com, postmaster@dellservisistanbul.com. Also on April 12, 2017, the Turkish language 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 May 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global retailer of computers and computer-related products and services. Complainant uses the DELL mark in conjunction with its business practices. 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). Complainant also registered the DELL mark with the Stock Industrial Property Services A.S., Patents and Trademarks, in Turkey (e.g., Reg. No. 124143, registered Oct. 17, 1990). Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> are confusingly similar to Complainant’s DELL mark because the mark is incorporated in its entirety, adding the generic term “servis,” the geographic terms “turkiye” and “istanbul,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <dellservisturkiye.com> and <dellservisistanbul.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized or licensed Respondent to use the DELL mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> resolve to websites attempting to pass themselves off as Complainant by displaying Complainant’s logo, photos of Complainant’s products, and contact phone numbers not associated with Complainant. Respondent also is attempting to gather users’ personal information through the “Contact Us” page on the website, obtaining names, emails, addresses, and phone numbers.
Respondent registered and is using <dellservisturkiye.com> and <dellservisistanbul.com> in bad faith. Respondent has engaged in a pattern of bad faith registration, as evidenced by the two infringing domain names registered in the instant case, plus the registration of more than ten domain names infringing on the rights of other well-known marks. The disputed domain names attract Internet users to Respondent’s websites for commercial gain by attempting to pass themselves off as Complainant and offering parts and services similar or identical to Complainant’s. The websites create confusion as to the affiliation Respondent has with Complainant. Respondent registered <dellservisturkiye.com> and <dellservisistanbul.com> with actual knowledge of Complainant and its rights to the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the dellservisturkiye.com> and <dellservisistanbul.com> domain names.
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(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.”).
Preliminary Issue: Language of the Proceedings
The Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the WHOIS “Registrant Name” for both domains is “Fatma EMRE.” Furthermore, the “Registrant Organization” for each is nearly identical in the WHOIS information for each domain; both organizations contain “Jib Bilisim Teknolojileri.” Additionally, Complainant asserts that the websites associated with the disputed domain names are highly similar, using the same color scheme and logos.
The Panel finds that Complainant has presented sufficient evidence demonstrating that the listed entities are jointly controlled. The entities are collectively referred to as Respondent throughout this Decision.
Complainant is a global retailer of computers and computer-related products and services. Complainant uses the DELL mark in conjunction with its business practices. Complainant claims it registered the DELL mark with USPTO (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). Complainant claims it also registered the DELL mark with the Stock Industrial Property Services A.S., Patents and Trademarks, in Turkey (e.g., Reg. No. 124143, registered Oct. 17, 1990). The consensus among panels is that registrations with USPTO and other government trademark agencies are sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel concludes that Complainant’s government registrations are sufficient to show rights in the DELL mark.
Complainant asserts that Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> are confusingly similar to Complainant’s DELL mark because they incorporate the mark in its entirety, adding the generic term “servis,” the geographic terms “turkiye” and “istanbul,” and the “.com” gTLD. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See, e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Likewise, geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity. See, e.g., Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015). The Panel finds that Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> are confusingly similar to Complainant’s DELL mark.
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 does not have rights or legitimate interests in the <dellservisturkiye.com> and <dellservisistanbul.com> domain names. To support its argument, Complainant illustrates that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies. Respondent as “Fatma EMRE” of “Jibo Bilisim Teknolojileri” for <dellservisturkiye.com> and “Fatma EMRE” of “Jibo Bilisim Teknolojileri Fatma EMRE” for <dellservisistanbul.com>. “Given the WHOIS contact information for the disputed domain [names], one can infer that [r]espondent . . . is not commonly known by the [disputed domain names] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). See also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). “In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).” CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015). The Panel finds Respondent is not commonly known by either of the disputed domain names.
Complainant argues it has not authorized or licensed Respondent to use the DELL mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its contention, Complainant demonstrates that Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> resolve to websites attempting to pass themselves off as Complainant. The websites display Complainant’s logo, show photos of Complainant’s products, and provide contact phone numbers not associated with Complainant, while attempting to gather users’ personal information through the “Contact Us” page on the websites, obtaining names, emails, addresses, and phone numbers. “It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant.” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003). Moreover, a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii). HOPE worldwide, Ltd. v. Jin, FA 320379 (Forum Nov. 11, 2004). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in <dellservisturkiye.com> and <dellservisistanbul.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant asserts that Respondent registered and is using <dellservisturkiye.com> and <dellservisistanbul.com> in bad faith. Complainant argues that Respondent has engaged in a pattern of bad faith registration, as evidenced by the two infringing domain names registered in the instant case, plus the registration of more than ten domain names infringing on the rights of other well-known marks. Respondent’s registration of multiple infringing domain names may indicate a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See, e.g., Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013). Likewise, Panels have found a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks. See, e.g., Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith registrations.
Respondent’s <dellservisturkiye.com> and <dellservisistanbul.com> resolve to webpages attempting to pass off as Complainant’s. Complainant asserts that the disputed domain names attract Internet users to Respondent’s websites for commercial gain by creating confusion as to the affiliation Respondent has with Complainant. The disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicated [c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). Moreover, the disputed domain names offer parts and services similar or identical to Complainant’s. “[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.” AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002). Hence, the Panel finds that Respondent registered and is using the <dellservisturkiye.com> and <dellservisistanbul.com> domain names in bad faith pursuant to the Policy.
Finally, Complainant contends that Respondent registered <dellservisturkiye.com> and <dellservisistanbul.com> with actual knowledge of Complainant and its rights to the DELL mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and notoriety of Complainant's DELL mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, since the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered the domain names, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <dellservisturkiye.com> and <dellservisistanbul.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 16, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page