Dell Inc. v. Rahmad gunawan
Claim Number: FA1810001813955
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Rahmad gunawan (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellaiodriver.us>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2018; the Forum received payment on October 29, 2018.
On October 29, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <dellaiodriver.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@dellaiodriver.us. Also on October 29, 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 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant contends as follows:
Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Over the years, Complainant has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries.
Complainant has rights in the DELL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <dellaiodriver.us> domain name is confusingly similar to Complainant’s mark as it tacks on the generic acronym “aio,” the generic term “driver,” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <dellaiodriver.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass itself off as Complainant by displaying similar content to the content Complainant displays on its own website. Further, Respondent uses the domain name to engage in attempts to install malicious software onto users’ computers and also to phish for personal information for commercial gain.
Respondent registered and uses the <dellaiodriver.us> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use of Complainants’ and others’ trademarks in domain names. Additionally, Respondent uses the domain name for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Complainant, which creates confusion among users. Further, it is clear that Respondent knew of Complainant’s famous DELL mark and rights based on Respondent’s use of the disputed domain name to host a website that features Complainant’s marks and purports to offer driver downloads for Complainant’s products.
B. Respondent
Respondent contends as follows:
I apologize for the trouble that caused you.
I have erased all the content from the website and I will transfer the domain to you.
Complainant has trademark rights in the DELL mark.
Respondent registered the at-issue domain name after Complainant acquired rights in DELL.
Respondent has agreed to transfer the at-issue domain name to Complainant.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case Respondent agrees to transfer the at-issue domain name per Complainant’s request. Respondent indicates so in its short email response. The Panel, noting the parties’ agreement as to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant.
As discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, the Panel must nevertheless find that Complainant has rights in a mark that is confusingly similar or identical to the at-issue domain name under Policy ¶ 4(a)(i). The underlying rational for this requirement is succinctly put by the esteemed panel in its recent decision in, Association Solutions Network, LLC v. REDACTED FOR PRIVACY, FA1809914 (Forum Nov. 5, 2018).
This [finding of rights in a mark that is confusingly similar to the at-issue domain name] establishes the standing of Complainant and a necessary pre-requisite to having the domain name transferred to it.
If Complainant does not own a trademark that is related to an at-issue domain name through confusing similarity, then this forum has no authority to order the transfer of the at-issue domain name. In effect, Complainant lacks standing.
When a panel decides a case where there is no response at all (akin to a default) the panel nevertheless considers the record to assure that there is a reasonable basis supporting each condition necessary for relief to be granted. In cases where there is agreement to transfer it seems fundamental that only those complainants that succeed under 4(a)(i) be permitted the requested relief. An agreement of the parties to transfer a domain name cannot and does not empower the panel to order such transfer where the complainant is found to have no trademark rights or where there is no confusingly similarity with complainant’s claimed trademark.
If this were not the case then anyone could file a UDRP, or similar domain name dispute resolution procedure, and if respondent agrees to the requested relief then complainant would be awarded the domain name even without having any rights in a confusingly similar trademark or even without having any trademark rights at all. While such situations are likely rare, the result would be that the proceeding could be used as a weapon to take advantage domain name holders. More importantly, it would allow a panel to transfer domain names that are beyond the scope of the dispute resolution policy; policy that considers the complaints of Complainants with colorable trademark rights. Trademark rights and/or confusingly similarity arising solely by an agreement of the parties are fictional rights and do not permit a panel to order that a domain name be transferred, even if the parties agree to transfer.
Here, Complainant’s ownership of a USPTO trademark registration for its DELL trademark shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Furthermore, Respondent’s <dellaiodriver.us> domain includes Complainant’s trademark followed by the generic acronym “aio” and the suggestive term “driver” all followed by the country code top-level domain name “.us.” The inclusion of descriptive terms and a top-level domain name in Respondent’s trademark laden <dellaiodriver.us> is insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <dellaiodriver.us> domain name is confusingly similar to Complainant’s DELL trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having found that Complainant has rights in mark confusingly similar to the at-issue domain name under Policy ¶ 4(a)(i) and that Respondent agrees to Complainant’s requested relief, the Panel concludes that such relief shall be GRANTED.
Accordingly, it is Ordered that the <dellaiodriver.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 25, 2018
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