Dell Inc. v. Milen Radumilo / White & Case
Claim Number: FA1807001799093
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Milen Radumilo / White & Case (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-batteries.com>, registered with Annapurna Domains LLC.
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 July 30, 2018; the Forum received payment on July 30, 2018.
On July 30, 2018, Annapurna Domains LLC confirmed by e-mail to the Forum that the <dell-batteries.com> domain name is registered with Annapurna Domains LLC and that Respondent is the current registrant of the name. Annapurna Domains LLC has verified that Respondent is bound by the Annapurna Domains LLC 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 August 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@dell-batteries.com. Also on August 6, 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 August 29, 2018, 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. 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
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). Respondent’s <dell-batteries.com>[i] domain name is confusingly similar to Complainant’s mark because it merely appends a hyphen, the generic term “batteries,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <dell-batteries.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 domain name as the WHOIS information of record lists “Milen Radumilo / White & Case” as the registrant.
3. Respondent also fails to use the <dell-batteries.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 redirect Internet users to parked webpages featuring links related to Complainant’s business or its competitors. Respondent may also use the domain name to distribute malicious software. Further, Respondent offered to sell the domain name for profit.
4. Respondent registered and is using the <dell-batteries.com> domain name in bad faith. Respondent registered the domain name primarily for the purpose of selling it for profit. Further, Respondent used the domain name to create confusion with Complainant’s DELL mark for commercial gain.
5. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 <dell-batteries.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.
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.”).
Complainant has established rights in its DELL mark through registration with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Complainant asserts that Respondent’s <dell-batteries.com> domain name is confusingly similar to Complainant’s mark because it merely appends a hyphen, the generic term “batteries,” and the gTLD “.com.” The addition of a hyphen, generic term, and gTLD may not sufficiently distinguish a domain name from a mark in which a complainant has rights. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and gTLD is insufficient in distinguishing a domain name from a mark under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, Respondent’s <dell-batteries.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dell-batteries.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 alleges that Respondent does not have rights or legitimate interests in the <dell-batteries.com> domain name, as Respondent is not commonly known by the domain name and Complainant 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 a domain name, the respondent may be 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 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 the <dell-batteries.com> domain name lists “Milen Radumilo / White & Case” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by the <dell-batteries.com> domain name.
Complainant also alleges that Respondent uses the <dell-batteries.com>
domain name to redirect Internet users to parked webpages featuring links for
Complainant’s business and its competitors. Use of a domain name to resolve to
a parked webpage may not be considered a bona fide offering of goods or
services or legitimate noncommercial or fair use where the domain name
incorporates the mark of another. See McGuireWoods LLP v. Mykhailo Loginov / Loginov
Enterprises d.o.o,
FA1412001594837 (Forum Jan. 22,
2015) (“The Panel finds Respondent’s use of the disputed domain names to
feature parked hyperlinks containing links in competition with Complainant’s
legal services is not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshots of the <dell-batteries.com>
resolving website, which indicate that the site features links such as “Laptop
Batteries,” “Notebook Batteries,” and “Battery Charger.” Accordingly, the
Panel holds that Respondent failed to use the domain name for a legitimate Policy ¶ 4(c)(i) or (iii)
purpose.
Finally, Complainant alleges that Respondent offered to sell the <dell-batteries.com> domain name for profit. Offers to sell a domain name for a price that exceeds out-of-pocket expenses may evidence a lack of rights and legitimate interests in a domain name. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provided a screenshot of the WHOIS report for the <dell-batteries.com> domain name, which indicates that the domain name is listed for sale at a price of $688. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <dell-batteries.com> domain name per Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <dell-batteries.com> domain name to create confusion with Complainant’s DELL mark for commercial gain. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant provided screenshots of the domain name’s resolving website, which indicate that the site features numerous competing hyperlinks. Accordingly, the Panel holds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent registered the <dell-batteries.com> domain name with full knowledge of Complainant’s rights in the DELL mark. Actual knowledge of a complainant's rights in a mark prior to registering a domain name incorporating that mark is 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). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. 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).”). Given the notoriety and fame of the DELL mark, and business, it is apparent that the Respondent had actual knowledge of Complainant’s rights when the <dell-batteries.com> domain name was registered and subsequently used.
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 <dell-batteries.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 7, 2018
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