Dell Inc. v. zhu honglin
Claim Number: FA1606001679635
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, United States. Respondent is zhu honglin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dell-drivers-download.com>, registered with NameSilo, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2016; the Forum received payment on June 15, 2016.
On June 16, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <dell-drivers-download.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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-drivers-download.com. Also on June 20, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant uses the DELL mark in connection with its business of marketing computers, computer accessories and related products and services.
Complainant holds a registration for the DELL trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,616,571, registered October 9, 1990).
Respondent registered the domain name <dell-drivers-download.com> on October 19, 2014.
The domain name is confusingly similar to Complainant’s DELL mark.
Respondent has not been commonly known by the domain name.
Respondent is not an authorized distributor of Complainant’s products.
Respondent has not been licensed or otherwise authorized to use Complainant’s DELL mark.
Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
The domain name resolves to a website prominently displaying the DELL mark and offering Complainant’s products for sale without Complainant’s consent.
Respondent seeks to profit from this use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent attempts to attract Internet users to its resolving website, for its commercial gain, by creating confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name.
Respondent uses a privacy service to disguise its identity as registrant of the domain name.
Respondent knew of Complainant and its rights in the DELL mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 rights in the DELL trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <dell-drivers-download.com> domain name is confusingly similar to Complainant’s DELL trademark. The domain name incorporates the mark in its entirety, merely adding hyphenation and the generic terms “drivers” and “download,” which relate to aspects of complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (finding confusing similarity where a domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic phrase and a top-level domain, the differences between the domain name and its captured trademark being insufficient to differentiate one from the other for purposes of the Policy.)
See also, for example, Allstate Insurance Company v. Brian McFedries, FA 1601235 (Forum Feb. 25, 2015), the panel there finding that:
[A]dding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <dell-drivers-download.com>, that Respondent is not an authorized distributor of Complainant’s products, and that Respondent has not been licensed or otherwise authorized to use Complainant’s DELL trademark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “zhu honglin,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (finding that a respondent was not commonly known by a disputed domain name, and so lacked rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and the undenied assertion of a UDRP complainant that it had not licensed or otherwise authorized that respondent’s use of its mark in a domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent’s <dell-drivers-download.com> domain name resolves to a website displaying the DELL mark, and, for Respondent’s commercial gain, offering Complainant’s products for sale without its consent. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See The Lincoln Electric Company v. Privacy protection service, FA 1651493 (Forum Jan. 13, 2016) (finding that, where a Respondent used a contested domain name to sell a UDRP complainant’s goods without license to do so, that Respondent did not demonstrate either a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that the <dell-drivers-download.com> domain name, which we have found is confusingly similar to Complainant’s DELL trademark, is employed by Respondent to attract Internet users to its resolving website for its commercial gain by creating confusion among such users as to the possibility of Complainant’s sponsorship of or affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See Sydney Markets Ltd. v. Rakis, D2001-0932 (WIPO October 8, 2001).
We are also convinced by the evidence that Respondent knew of Complainant and of its rights in the DELL mark when it registered the contested <dell-drivers-download.com> domain name. This too demonstrates Respondent’s bad faith in registering the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware of” a UDRP complainant's mark at the time of that registration).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dell-drivers-download.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 21, 2016
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