DECISION

 

Dell Inc. v. BHUWANESHWAR KC / mmm bbb

Claim Number: FA1605001675190

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA.  Respondent is BHUWANESHWAR KC / mmm bbb (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <dell-datasafe.us>, <dell-service.us>, and <support-dell.us>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 16, 2016; the Forum received payment on May 16, 2016.

 

On May 16, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2016 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-datasafe.us, postmaster@dell-service.us, postmaster@support-dell.us.  Also on May 17, 2016, 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 June 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the usTLD 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 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.

 

RELIEF SOUGHT

Complainant requests the domain names be transferred from Respondent to Complainant.

 

Preliminary Issue: Multiple Respondents

In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”

 

It appears the three domain names in dispute are all under the control of a common registrant who has been deliberately engaging in a pattern of providing false contact information in order to frustrate the Domain Dispute process. Two of the domain names are registered to Bhuwaneshwar KC (apparently a non-existent entity). The remaining domain name is under Bhuwaneshwar’s control because: a) the Registrant Name of record is gibberish consisting of repeated letters that do not form words or contain any other indicia of legitimacy; b) the websites hosted at the disputed domain names all have a common appearance and offer the same services; c) the websites at the subject domain names all employ the same live chat tool (created by Zopim); d) the websites at the disputed domain names are all hosted by the same webhost (Linode, LLC); and e) the websites at the subject domain names all encourage visitors to call the same telephone number (1-855-887-0097).

 

Therefore, the Panel will treat the owners of the disputed domains as either a single person or controlled by a single person.

 

PARTIES' CONTENTIONS

A. Complainant

            Trademark/Service Mark Information:  Rule 3(c)(viii).

                       

i.              Dell and its Business

 

Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, and other computer-related products and services.  Over the years, Dell 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.  Dell has used television, radio, magazines, newspapers, and the Internet as marketing media.  Dell has been, and continues to be, extremely successful.  Dell sells its products and services in over 180 countries.  For several years, Dell has been the world’s largest direct seller of computer systems.  As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and many other countries, including India.  More information about Dell can be found at www.dell.com and www.dell.co.in, Dell’s official website for India.  Moreover, Dell was recently named by Adweek as #15 of the “Most Loved Companies” in the world.  (http://www.adweek.com/news/advertising-branding/check-out-top-100-beloved-brands-last-decade-153026).

           

Complainant has used the famous mark DELL, as well as various other marks that include the word DELL (the “DELL Marks”), for many years for laptops, desktops, computer parts and accessories, computer service and support, and other computer-related products and services.  For example, Dell offers technical and repair services for its laptops, desktops, and other products on its website at www.support.dell.com.  Dell owns many trademark registrations for its marks in numerous countries, including the United States (a number of which are incontestable) and India.  See, e.g., U.S. Reg. Nos. 1,616,571, 1,860,272, 2,236,785, 2,284,782, 2,715,756, 2,794,705, 2,806,769, 2,806,770, 2,808,852, 3,215,023, 4,897,209.

 

ii.         Dell’s Presence in India

 

With more than 22 percent of the market, Dell is the number two PC maker in India.  See, e.g., http://www.idc.com/getdoc.jsp?containerId=prIN25465215, International Data Corporation (2015).  In fact, Dell has been one of the leaders in the India PC market for several years.  See, e.g., Anurag Prasad, India's top 5 PC makers by market share, Rediff Business (2011), http://www.rediff.com/business/slide-show/slide-show-1-tech-largest-pc-makers-in-india/20111111.htm.

 

            FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds:

 

a.         The disputed domain names are identical or confusingly similar to Complainant’s DELL Marks.  Specifically, the domain names each incorporate the famous mark DELL in its entirety, merely tacking on hyphens and the generic terms “data safe,” “service,” and “support,” terms highly likely to be associated with Dell and its goods and services.  The presence of a country code top-level domain (“.us”) is irrelevant in a usDRP 4(a)(i) analysis.^[1]

 

b.         Respondent has no rights or legitimate interests in the domain names. 

 

i.          Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.  Rather, the domain names are being used for websites that attempt to deceive consumers into thinking that Respondent or Respondent’s business is Complainant or is at least affiliated or connected with, or authorized by, Complainant. 

 

For example, Respondent’s website located at dell-service.us prominently displays the DELL mark at the top of its homepage along with the word “service” as shown below:^[2]

 

Respondent’s website prominently displays pictures of Dell products and promotes Respondent’s computer support services, which consumers are highly likely to associate with Complainant, while referring to Respondent as “DELL SERVICE.”  Respondent’s website also features links to Complainant’s official Facebook and Twitter pages, exacerbating the likelihood that consumers will mistakenly assume there is a connection between Respondent and Dell.  Further, the website at dell-service.us includes a live chat tool that purportedly allows visitors to “CHAT WITH Dell Chat Support,” and prominently displays “DELL SUPPORT,” but is not linked, or in any way connected, to Complainant’s support team or services.  In addition, Respondent’s website encourages visitors to call DELL SERVICE at 1-855-887-0097, a number not associated with Complainant.

 

Respondent uses highly similar or identical webpages which feature nearly identical elements at each of the disputed domain names.

 

ii.         Respondent is not an authorized service provider of Complainant’s computer repair services.  In addition, Complainant has not licensed or otherwise permitted Respondent to use its DELL Marks, or any other mark owned by Complainant. ^[3]

 

iii.        Respondent is not commonly known by the domain names at issue.

 

iv.        Respondent is not making a legitimate noncommercial or fair use of the domain names.

 

c.         Respondent registered or is using the domain names in bad faith.

 

i.          The use of domain names confusingly similar to Complainant’s famous DELL Marks is evidence of use and registration in bad faith.^[4] Further, it is clear that Respondent knew of Complainant’s famous DELL Marks and rights based on Respondent’s use of the disputed domain names to host websites that prominently display pictures of Complainant’s products, link to Complainant’s official social media pages, and offer competing computer support services.

 

ii.         The fact that Respondent registered at nearly 100 domain names that contain the DELL marks is also evidence of bad faith.^[5]

 

iii.        Not only are the disputed domain names highly likely to cause confusion, but Respondent’s bad faith is clearly demonstrated by the evidence explained in paragraph 7(b)(i), above, which shows that the domain names are being used for websites which attempt to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Dell.^[6]

 

iv.        By using the disputed domain names for websites displaying the DELL Marks and images of Complainant’s products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.

 

v.         Respondent’s use of confusingly similar domain names to promote services that compete with those of Complainant is further evidence of Respondent’s bad faith.^[7]

 

vi.        Respondent’s inclusion of an inconspicuous “disclaimer” on the webpages, in noticeably smaller font, does not mitigate against a finding of bad faith.^[8] For example, Respondent’s website at dell-service.us states “Disclaimer: Dell Service is a total independent and completely autonomous technical service provider. We provide technical support for all the major vendors and third party products. The third party trademarks, logos, names of the brands and the products have been given for information purpose only and we in no means are advocating any affiliation or connection to any of the product or brand. Neither do we sponsor any product any brand or any service. Hence Dell Service does not claim any sponsorship by any of the third party. If your product is under warranty, the repair service maybe available free from the brand owner.” Such unclear language is not likely to alleviate the consumer confusion created by Respondent’s use of confusingly similar domain names and websites as described in paragraph 7(b)(i) above.  In fact, the supposed “disclaimer” may only further deceive visitors who have been led to believe that Respondent or Respondent’s website is Complainant.

 

vii.       Respondent’s incorrect contact information in the WhoIs records associated with the disputed domain names, as described in section 4 above, is additional evidence of bad faith. ^[9]

 

viii.      Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the DELL Marks in a site accessible under the domain names; and Respondent’s domain names incorporate exactly the famous mark DELL.  See 15 U.S.C. § 1125(d)(1)(B)(i).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)          the domain names registered by Respondent are 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 names; and

(3)          the domain names have been registered or are being used 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(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 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.”).

 

Identical and/or Confusingly Similar

Complainant uses the DELL mark in connection with its computer-related products and services. Complainant registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered October 9, 1990). Registration with the USPTO (or any other governmental authority) is sufficient to establish rights in a trademark, even if the respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶4(a)(i), even though Respondent reportedly resides in the Isle of Man). Complainant has demonstrated rights in the DELL mark under Policy ¶ 4(a)(i), even though Respondent resides in India.

 

Complainant claims Respondent’s <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names are confusingly similar to the DELL mark because they incorporate Complainant’s mark entirely and only add the ccTLD “.us,” a hyphen, and the descriptive terms “service,” “support,” “data,” or “safe.” A TLD, whether a gTLD, sTLD or ccTLD, must be disregarded under a Policy ¶ 4(a)(i) analysis because domain names are required to have a TLD.  Adding descriptive or generic words does not adequately distinguish a disputed domain name from a mark under a Policy ¶ 4(a)(i) analysis, leading to a finding of confusing similarity. See Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Respondent’s <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names are confusingly similar to the DELL mark under Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent has no rights or legitimate interests in the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names. Respondent is not the owner or beneficiary of a trademark that is identical to any of the three disputed domain names. The evidence in the record does not even show Respondent owns any substantially similar trademark to any of the disputed domain names.

 

Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information regarding the <dell-datasafe.us> and <dell-service.us> domain names list “Bhuwaneshwar KC” as registrant.  The WHOIS information regarding the <support-dell.us> domain name lists “mmm bbb” as registrant. Complainant has not given Respondent permission to use its DELL mark. Respondent has failed to submit a response in this proceeding. In light of the available evidence, there is no factual basis to find Respondent is commonly known by any of the disputed domain names under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant claims Respondent is neither making (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use through the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names. Each of the domain names promotes Respondent’s competing computer support services. Respondent attempts to pass itself off as Complainant by using similar color schemes, layouts, and language, as well including links to Complainant’s legitimate Facebook and Twitter pages. A respondent’s use of a complainant’s mark to offer competing services (or to pass itself off as complainant) does not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 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).”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Respondent’s <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names constitute neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) and (iv).

 

Particularly in light of Dell Inc. v. BHUWANESHWAR KC / A A / WW WW / AA AA / MA BN / ABC CBA / ASD AA / SS SS / SS S / HH HHH / AAA CCC / AAA SSS / acb nnn / abc abc / ABC VVCX / ZZZ ZZZ / ABC BBB, FA1605001675101 (6/17/2016), this Panel find Respondent has not acquired any rights by registering the disputed domain names because Respondent concealed its true identity by providing false WHOIS information.

 

The Panel finds Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent has a pattern of domain name misuse as evidenced by the registration of multiple domain names containing Complainant’s DELL trademark in the present case. There is no doubt Respondent has done this in other cases, Dell Inc. v. BHUWANESHWAR KC / A A / WW WW / AA AA / MA BN / ABC CBA / ASD AA / SS SS / SS S / HH HHH / AAA CCC / AAA SSS / acb nnn / abc abc / ABC VVCX / ZZZ ZZZ / ABC BBB, FA1605001675101 (6/17/2016).  No one has suggested a reason for Respondent’s actions.  However, Policy ¶ 4(b)(ii) provides, “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added]  Complainant reflects its mark in the Dell.com domain name.  Therefore, this Panel declines to find bad faith under Policy ¶ 4(b)(ii).

 

Complainant claims under Policy ¶ 4(b)(iii) Respondent’s registration and use of the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names disrupt Complainant’s legitimate business because each website offers competing services.  A respondent’s use of a disputed domain name to divert Internet users to its own competing services constitutes bad faith disruption under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s registration and use of the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names constitutes bad faith under Policy ¶ 4(b)(iii).

 

Complainant claims Respondent deliberately attracts Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent registered the domain names to create a likelihood of confusion with Complainant and Complainant’s computer support services. Respondent adds to the confusion by using similar color schemes, layouts, and language in an attempt to pass itself off as Complainant. This seems evident from the screenshots provided.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum February 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); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

Complainant claims Respondent had actual knowledge of Complainant's rights in the DELL mark. Leaving aside the notoriety of the DELL mark, Respondent displayed Complainant’s marks in context with Complainant’s business and links to Complainant’s social media pages.  There is no other rational explanation: Respondent had actual knowledge of Complainant's mark and rights.  This Panel finds Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant further argues Respondent’s use of incorrect WHOIS information is additional evidence of bad faith. Various panels have found evidence of misleading WHOIS information to constitute bad faith under Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). This Panel agrees with the logic of those cases.  Failing to provide correct WHOIS contact information in a commercial context creates a rebuttable presumption of bad faith registration and use.  Respondent has done nothing to rebut that presumption.  Therefore, this Panel is willing to find bad faith registration and use on this basis alone.

 

The Panel finds Policy ¶ 4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <dell-datasafe.us>, <dell-service.us>, and <support-dell.us> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, June 23, 2016