DECISION

 

Dell Inc. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)

Claim Number: FA1707001739794

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA.  Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dell-russia.com>, registered with DomainContext, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 13, 2017; the Forum received payment on July 13, 2017. The Complaint was received in both English and Russian.

 

On July 17, 2017, DomainContext, Inc. confirmed by e-mail to the Forum that the <dell-russia.com> domain name is registered with DomainContext, Inc. and that Respondent is the current registrant of the name.  DomainContext, Inc. has verified that Respondent is bound by the DomainContext, 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 July 24, 2017, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of August 14, 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@dell-russia.com.  Also on July 24, 2017, the Russian 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 August 16, 2017, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant has rights in the DELL mark through its registrations with the United Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl., at Attached Ex. C, p.18. Respondent’s domain name is confusingly similar to the DELL mark because it contains the mark, along with inconsequential changes, such as the addition of a hyphen, a geographic word (“Russia”), and the generic top-level domain (“gTLD”) “.com.”

2.    Respondent has no rights and legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name. The domain name is being used by Respondent to deceive consumers into thinking that Respondent is affiliated with Complainant. Specifically, Respondent includes the message “Сервисный центр DELL в Москве” which translates to “Service Center DELL in Moscow.” See Compl., at Attached Ex. D. The website also displays “Ремонт Dell в сервисном центре DELL RUSSIA в Москве” or “Dell repair service center DELL RUSSIA Moscow” and includes an exact copy of Dell’s logo. See id., see also Compl., p.4. No such use indicates any bona fide offering of goods or services or any legitimate noncommercial or fair use.

3.    Respondent registered and used the disputed domain name in bad faith. Respondent’s attempts to offer products/services similar or identical to Complainant’s indicates bad faith as per Policy ¶ 4(b)(iv). Last, Respondent had actual or at least constructive knowledge when registering and subsequently using the disputed domain name because the resolving websites clearly copy the color scheme and look and feel of Complainant’s online offerings in an attempt to pass itself off as Complainant.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <dell-russia.com> domain name is confusingly similar to Complainant’s DELL mark.

2.    Respondent does not have any rights or legitimate interests in the <dell-russia.com> domain name.

3.    Respondent registered or used the <dell-russia.com> domain name in bad faith.

 

Language of the Proceedings

The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

 

 

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 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.”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims it has rights in the DELL mark through its registrations with the United Patent and Trademark Office

(“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl., at Attached Ex. C, p.18. Registration with the USPTO (or any other governmental authority) is sufficient to establish rights in a trademark. 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)). The Panel agrees that Complainant has demonstrated rights in the DELL mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s DELL mark. Complainant claims Respondent’s domain name is confusingly similar to the DELL mark because it contains the mark, along with inconsequential changes, such as the addition of a hyphen, a geographic word (“Russia”), and the gTLD “.com.” A TLD, whether a gTLD, sTLD or ccTLD, must be disregarded under a Policy ¶ 4(a)(i) analysis because domain names are required to have a TLD. See, e.g., Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016).  Adding descriptive or generic or geographic words and hyphens does not adequately distinguish a disputed domain name from a mark under a Policy ¶ 4(a)(i) analysis, leading to a finding of confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel agrees that Respondent’s disputed domain name is confusingly similar to the DELL mark under 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 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 argues that Respondent has no rights and legitimate interests in or to the disputed domain name.  Complainant contends that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent’s incorporation of the DELL mark in the domain name.  The Panel notes that the WHOIS information of record shows “Domain Admin / Privacy Protect, LLC (PrivacyProtect.org)” as registrant.  While Respondent has not responded to the Complaint, the Panel finds no evidence weighing against the prima facie case made by Complainant under Policy ¶ 4(c)(ii).  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).

 

Further, Complainants notes that the domain name is being used by Respondent to deceive consumers into thinking that Respondent is affiliated with Complainant. Specifically, Respondent includes the message “Сервисный центр DELL в Москве” which translates to “Service Center DELL in Moscow.” See Compl., at Attached Ex. D. The website also displays “Ремонт Dell в сервисном центре DELL RUSSIA в Москве” or “Dell repair service center DELL RUSSIA Moscow” and includes an exact copy of Dell’s logo. See id., see also Compl., p.4. Says Complainant, after falsely creating an association with Complainant, Respondent is attempting to gather Internet users’ personal information, including the visitors’ name, phone number, and device type. See Compl., pp. 4–5 (“Respondent encourages visitors to contact it via forms entitled ‘Ask Dell’ and ‘Sign up for repair.’ Respondent requests such information from consumers as their ‘Номер телефона’ or ‘Phone number’ and ‘Имя и фамилия’ / ‘Фио’ or ‘First and Last Name.’ Respondent also encourages visitors to dial 8 (495) 212-19-30, a telephone number not associated with Complainant, to reach ‘service center DELL.’”). Respondent may then commercially benefit by abusing that information and/or by selling that information to third parties.  Panels have considered such uses to fail in evincing a bona fide offering of goods or services or any legitimate noncommercial or fair use.  See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 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). Accordingly, the Panel finds Complainant’s contentions about Respondent’s use and the evidence provided amount to a prima facie demonstration of Respondent’s lack of rights and legitimate interests that has gone unrebutted.

 

Registration and Use in Bad Faith

Next, Complainant argues that Respondent’s attempts to offer products/services similar or identical to Complainant’s indicates bad faith as per Policy ¶ 4(b)(iv). The Panel agrees that the foregoing suggests that Respondent is engaged in a scheme to phish for Internet users’ personal information, and that past panels have found such behavior to impute Policy ¶ 4(b)(iv) bad faith. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).  Therefore, the Panel agrees that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith.

 

Last, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the DELL mark. Complainant argues that its longstanding use of the mark and Respondent's competitive use at the resolving websites indicate that Respondent had actual knowledge of Complainant's mark and rights. 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 (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 (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").

 

The Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO Nov. 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO Sept. 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use.  See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <dell-russia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  August 29, 2017