Dell Inc. v. pushpender chauhan
Claim Number: FA1805001784548
Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas. Respondent is pushpender chauhan (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellsupports.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has 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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically May 1, 2018; the Forum received payment May 1, 2018.
On May 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellsupports.org> 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 May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@dellsupports.org. Also, on May 2, 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 May 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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.
A. Complainant’s Contentions in this Proceeding:
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). See Compl. Ex. C. Respondent’s <dellsupports.org> domain name is identical or confusingly similar to Complainant’s DELL mark as Respondent merely adds the generic term “supports” and a “.org” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <dellsupports.org> domain name. Respondent is not licensed or permitted to use Complainant’s DELL mark. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant and promote computer support services that seek to directly compete with Complainant.
Respondent registered and is using the <dellsupports.org> domain name in bad faith. Respondent engages in a pattern of bad faith registration and use by registering domain names incorporating third-party marks. Respondent also attracts users to the disputed domain names where Respondent attempts to pass off as Complainant and promote competing, computer support services. Additionally, Respondent attempts to obtain users’ personal information through a phishing scheme. Furthermore, due to the fame and Respondent’s use of the DELL mark, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent’s Allegations in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <dellsupports.org> domain name March 13, 2018. See WHOIS of Record.
Complainant established its rights and legitimate interests in the mark contained in its entirety within the disputed domain name that Respondent registered.
Respondent has no such rights or interests in the mark or the disputed domain name.
Respondent registered a domain name containing Complainant’s protected mark and the disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used 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 has rights in the DELL mark through its trademark registration with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides copies of its USPTO registrations for the DELL mark (e.g., Reg. No. 1,616,571, registered Oct. 9, 1990). See Compl. Ex. C. Therefore, the Panel finds Complainant demonstrated rights in the DELL mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <dellsupports.org> domain name is identical or confusingly similar to Complainant’s DELL mark as Respondent merely adds a generic term and a gTLD to the mark. Adding a generic term or a gTLD to a complainant’s mark does not negate confusing similarity between a disputed domain name and the mark it exploits under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Complainant shows that Respondent merely adds the term “supports” and a “.org” gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered and used 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), then the burden of proof shifts to Respondent to show it does have such 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 asserts Respondent has no rights or legitimate interests in the <dellsupports.org> domain name because Respondent is not licensed or permitted to use Complainant’s DELL mark. Lack of authorization to use a complainant’s mark may be evidence that a respondent lacks rights or legitimate interest 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 never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel also notes that while Complainant does not argue that Respondent is not commonly known by the disputed domain name, WHOIS information may be additional evidence that Respondent lacks rights and legitimate interest under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS of Record identifies Respondent as “pushpender Chauhan,” a name far from similar to Dell and its mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under a Policy ¶ 4(c)(ii) analysis.
Additionally, Complainant contends Respondent is not using the <dellsupports.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant argues Respondent attempts to pass off as Complainant to offer competing, computer support services. Use of a disputed domain name to pass off as complainant in order to sell competing goods or services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 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).”). Complainant provides screenshots of the disputed domain name which resolves to a website that features Complainant’s DELL mark in connection to computer support services. See Compl. Ex. D. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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 Respondent registered and is using the <dellsupports.org> domain name in bad faith. Specifically, Complainant argues Respondent engages in a pattern of bad faith registration by registering domain names incorporating third-party marks. Registration of domain names with third-party marks may be evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides a copy of reverse WHOIS search of the Respondent, which show a list of domain names incorporating third-party marks. See Compl. Ex. F. Therefore, the Panel finds Respondent engages in a pattern of bad faith registration when analyzed under Policy ¶ 4(b)(ii).
Additionally, Complainant argues Respondent intentionally attracts users to the <dellsupports.org> domain name for commercial gain by attempting to pass off as Complainant and sell competing, computer support services. Use of a disputed domain name to pass off and sell competing goods or services, for commercial gain, may demonstrate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 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 provides a copy of the disputed domain name’s resolving website, which features Complainant’s DELL mark in connection with pictures of Complainant’s products and a computer support service. See Compl. Ex. D. Thus, the Panel finds that Respondent attempted to attract users for commercial gain and this constitutes bad faith under Policy ¶ 4(b)(iv).
Moreover, Complainant argues Respondent also uses the <dellsupports.org> domain name to obtain users’ personal information. Use of a disputed domain name for a phishing scheme indicates bad faith under Policy ¶ 4(a)(iii). See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name). Complainant provides screenshots from the disputed domain name’s resolving website which contains a “Contact Us” page which requires users to submit their name, phone number, and email. See Compl. Ex. E. Consequently, the Panel finds that Respondent engages in phishing and this constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
Furthermore, Complainant claims Respondent had actual or constructive knowledge of Complainant’s DELL mark. The Panel should disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does evidence 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). Complainant contends that Respondent must have had actual knowledge of the DELL mark due to the fame of the mark and Respondent’s appropriation of the mark at the disputed domain name. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to 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 <dellsupports.org> domain name be TRANFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 11, 2018
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