Dell Inc. v. Jitendra priyadarshi
Claim Number: FA1810001811046
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Jitendra priyadarshi (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellbrandstore.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2018; the Forum received payment on October 10, 2018.
On October 10, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellbrandstore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@dellbrandstore.com. Also on October 10, 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 November 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Dell Inc., is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark based upon the registration 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 <dellbrandstore.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic terms “brand” and “store” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
ii) Respondent does not have rights or legitimate interests in the <dellbrandstore.com> domain name. Respondent is not permitted or licensed to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent disrupts Complainant’s business by attempting to sell competing products. Further, Respondent attempts to phish for Internet users’ personal information through a fake “Contact Us” webpage.
iii) Respondent registered and uses the <dellbrandstore.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. In addition, Respondent is attempting to pass off as Complainant in order to conduct a fraudulent phishing scheme. Moreover, Respondent uses a privacy service to conceal its identity. Finally, Respondent had actual knowledge of Complainant’s DELL mark prior to registering the <dellbrandstore.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent registered the disputed domain name on February 8, 2018.
2. Complainant has established rights in the DELL mark based upon registration with the USPTO (Reg. No. 1,616,571, registered on Oct. 9, 1990).
3. Respondent's website prominently displays the DELL trademark and logo along with photographs of Complainant’s related products in an attempt to sell faulty products.
4. The webpages associated with the disputed domain name which show a fake “Contact Us” page which prompts Internet users’ to enter their personal information.
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 claims rights to the DELL mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under 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 that Complainant has rights in the DELL mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <dellbrandstore.com> domain name is confusingly similar to Complainant’s DELL mark as Respondent merely adds two generic terms and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark do not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the terms “brand”, “store” and a “.com” gTLD to Complainant’s DELL mark. The Panel agrees with Complainant and finds that the <dellbrandstore.com> does not contain changes that would sufficiently distinguish it from the DELL mark per Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <dellbrandstore.com> domain name as Respondent is not authorized to use Complainant’s DELL mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of this proceeding. As a result, the Panel sees that the WHOIS information of record identifies registrant as “Jitendra priyadarshi” See WHOIS Furthermore, there is no evidence in the record to suggest Respondent was authorized to use Complainant’s DELL mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent attempts to disrupt Complainant’s business by diverting Internet users to a scam website where it sells competing products. Use of a domain name to disrupt a complainant’s business in order to sell competing products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). Here, Complainant contends Respondent's website prominently displays the DELL trademark and logo along with photographs of Complainant’s related products in an attempt to sell faulty products. See Compl. Ex. D. The Panel agrees that an attempt to sell Complainant’s competing goods does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant contends Respondent attempts to phish for Internet users’ personal information at the website associated with the <dellbrandstore.com> domain name. Use of a domain name to collect Internet users’ personal and/or financial information may evidence a respondent lacks right and legitimate interests in a disputed domain name per Policy ¶ 4(a)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Complainant provides screenshots of the webpages associated with the disputed domain name which shows a fake “Contact Us” page which prompts Internet users’ to enter their personal information. See Compl. Ex. D. Accordingly, the Panel concludes under a Policy ¶ 4(a)(ii) analysis that Respondent uses the disputed domain name to phish for Internet users’ personal information.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and is using the <dellbrandstore.com> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells competing products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells competing goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum July 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). Here, Complainant contends that Respondent is using the DELL mark on the resolving webpage to sell competing products. See Compl. Ex. D. Furthermore, by using the <dellbrandstore.com> domain name along with photographs of products labeled with Complainant’s mark, Respondent attempts to profit by creating a likelihood of confusion with Complainant’s DELL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. Id. Therefore, the Panel finds Respondent attempts to disrupt Complainant’s business and commercially benefit off of Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Complainant argues that Respondent attempts to pass off as Complainant in order to conduct a fraudulent phishing scheme. Passing off in attempt to gain users’ personal information may constitute bad faith per Policy ¶ 4(b)(iv). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information); Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). As previously mentioned, Complainant provides screenshots of the webpages associated with the disputed domain name which shows a fake “Contact Us” page which prompts internet users’ to enter their personal information. See Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent who registers an infringing domain name with knowledge of complainant’s mark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant asserts given the global reach of the Internet and the fact that Respondent's website displays the DELL mark alongside competing products, Respondent must have been aware of Complainant and its DELL mark prior to registering the disputed domain name. See Compl. Ex. D. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the DELL mark prior to registering the <dellbrandstore.com> domain name, thereby supporting a finding of bad faith under 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 <dellbrandstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 3, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page