DECISION

Dell Inc. v. Whois Manager / Whois Privacy Management Service

Claim Number: FA1803001778749

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Whois Manager / Whois Privacy Management Service

(“Respondent”), Delaware, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellservicesales.com>, registered with EPAG Domainservices GmbH.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 26, 2018; the Forum received payment on March 26, 2018.

On March 27, 2018, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <dellservicesales.com> domain name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices GmbH 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 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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@dellservicesales.com. Also on April 3, 2018, 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 April 27, 2018, 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.

Panel Note: Supported Language Request

Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the German language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the German language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

PARTIES' CONTENTIONS

Complainant

1. Complainant, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant uses its DELL mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Respondent’s <dellservicesales.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “service sales” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.

2. Respondent does not have rights or legitimate interests in the <dellservicesales.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its DELL mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Whois Manager / Whois Privacy Management Service” as the registrant. Respondent is not using the <dellservicesales.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that advertises a browser extension that likely installs malware onto Internet users’ computers.

3. Respondent registered and is using the <dellservicesales.com> domain name in bad faith because it resolves to a website that likely distributes malicious software.

Respondent

1. Respondent did not submit a Response.

FINDINGS

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

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

3. Respondent registered or used the <dellservicesales.com> domain name 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 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

Complainant contends it established rights in its DELL mark through registration with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). See Compl. Ex. C. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant established rights in the DELL mark under Policy ¶ 4(a)(i).

Next, Complainant claims that Respondent’s <dellservicesales.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic phrase “service sales” and the gTLD “.com” to the fully incorporated mark. The addition of generic terms and a gTLD may not negate confusing similarity between a disputed domain name and a mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel holds that Respondent’s <dellservicesales.com> domain name is confusingly similar to Complainant’s mark.

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its DELL mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <dellservicesales.com> lists a privacy service, “Whois Manager / Whois Privacy Management Service” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <dellservicesales.com> domain name.

Further, Complainant argues that Respondent is not using the <dellservicesales.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain name to resolve to website that advertises a browser extension that likely installs malware onto Internet users’ computers. Use of a domain name to distribute malware may not be considered a bona fide offering or fair use pursuant to Policy ¶ 4(c)(i) & (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Complainant provided screenshots of the <dellservicesales.com> resolving website, which purports to offer a browser extension called “Search Safely Plus Chrome.” See Compl. Ex. E. The software in question has been deemed malicious by numerous websites. See Compl. Ex. D. Therefore, the Panel finds that Respondent is using the domain name to distribute malicious software and hold that Respondent failed to use the domain name for a bona fide offering or fair use.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and is using the <dellservicesales.com> domain name in bad faith because it resolves to a website that likely distributes malicious software. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Use of a domain name to resolve to a website that distributes malicious software may evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As mentioned previously, Complainant argues that screenshots of the resolving website indicate that Respondent uses the domain name to distribute malicious software. See Compl. Ex. E. Therefore, the Panel concludes that Respondent registered and is using the domain name in bad faith pursuant to 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 <dellservicesales.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: May 9, 2018