Dell Inc. v. varun Kumar
Claim Number: FA1606001680607
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is varun Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <delllaptopcare.com>, registered with GoDaddy.com, LLC; and <delllaptopservicecenteringurgaon.com>, registered with Wild West 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <delllaptopcare.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 June 23, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <delllaptopservicecenteringurgaon.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On June 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@delllaptopcare.com, and postmaster@delllaptopservicecenteringurgaon.com. Also on June 24, 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the DELL mark through its trademark registrations concerning such mark with the United States Patent and Trademark Office (“USPTO”) (e.g., U.S. Reg. Nos. 1,616,571, 1,860,272, 2,236,785, 2,794,705, 2,806,769, 2,806,770, 2,808,852, and 3,215,023.).
Complainant uses the DELL mark in connection with its business in computers, computer parts, and other computer-related products and services.
Respondent has not used, nor made any demonstrable preparations to use, the domain names or names 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.
Respondent’s website at <delllaptopcare.com> uses a blue header and footer, similar to that at dell.com, and promotes its computer repair and support services with devices such as banners referring to its services as “Dell Care Pack Services” and copying the colors, stylization, and logo of Complainant. Users who click on the “Warrenty [sic] Renew” link provided at this website are directed to Complainant’s official website, dell.com.
Respondent’s website at <delllaptopservicecenteringurgaon.com> refers to respondent by names such as “Dell Support Center” or “Dell Laptop Service Center” while promoting Respondent’s competing computer repair services.
Respondent attempts to gather internet users’ personal information through the “Enquiry” page associated with <delllaptopservicecenteringurgaon.com>. This webpage asks visitors to provide their “Name,” “Company Name,” “Phone,” and “Email.” Respondent may then commercially benefit by abusing personal information gathered from users and/or by selling that information to third parties.
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.
Respondent is not commonly known by the domain names at issue. Respondent is not making a legitimate noncommercial or fair use of the domain names. Respondent’s inclusion of DELL in the domain names is not a nominative fair use.
The use of domain names that are confusingly similar to Complainant’s famous DELL mark is evidence of bad faith. Respondent knew of Complainant’s famous DELL mark and rights based on Respondent’s use of the disputed domain names to host websites which copy the colors and design elements of Complainant’s official website.
Respondent’s bad faith is demonstrated because 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.
By using the disputed domain names for websites displaying the DELL mark and images of Complaint’s products, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
Respondent’s use of confusingly similar domain names to promote services that compete with those of Complainant, namely computer repair services, is further evidence of Respondent’s bad faith.
Respondent’s use of the domain names to gather internet users’ personal information after falsely creating an association with Complainant shows bad faith registration and use of the at-issue domain names.
Respondent’s incomplete contact information in the WHOIS record associated with <delllaptopcare.com> is additional evidence of bad faith.
Respondent’s inclusion of an inconspicuous “disclaimer” on the webpages, does not mitigate against a finding of bad faith
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 mark in a site accessible under the domain names; and Respondent’s domain names incorporate exactly the famous mark DELL.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DELL mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain names to attempt to pass itself off as Complainant or indicate Complainant’s sponsorship regarding Respondent’s computer repair business.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the DELL trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <delllaptopcare.com> and <delllaptopservicecenteringurgaon.com>
domain names each incorporates the DELL mark in full, add the generic words “laptop care,” or the generic words “laptop service center” and the geographic descriptor “in gurgaon,” and conclude with the top-level domain name “.com.” Notwithstanding the resulting differences between the domain names and Complainant’s mark, each domain name is nevertheless confusingly similar to Complainant’s DELL trademark under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also, Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain names.
WHOIS information for the at-issue domain names lists “varun Kumar” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by either the <delllaptopcare.com> or the <delllaptopservicecenteringurgaon.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by either at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s relevant websites attempt to pass themselves off as being supported or endorsed by Complainant. Both the <delllaptopcare.com> website and the <delllaptopservicecenteringurgaon.com> website display Complainant’s logo and have the look and feel of Complainant’s official website. Using the domain names in a manner designed to allow Respondent to pass itself off as Complainant 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name.
Respondent registered and used each domain name in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy as to each at-issue domain name.
First, Respondent’s use of its confusingly similar domain names to support Respondent’s business interests suggests that Complainant is the domain names’ source, sponsor, or is otherwise affiliated with the domain names and their associated websites. Moreover, Respondent intends to profit from visits to its websites by confused internet users who believe that the services found there are endorsed by Complainant. Respondent thereby inappropriately capitalizes on Complainant’s DELL trademark. The foregoing circumstances constitute bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(a)(iv). See, Homer TLC, Inc. v. Above.com Domain Privacy, Case No. FA 1579386 (NAF October 13, 2014) (finding that registration of a domain name that featured Complainant’s well-known mark “together with the use of the domain name to promote competing goods or services in a manner designed to exploit confusion with Complainant and its mark, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy”).
Next, Respondent uses the “Enquiry” webpage associated with <delllaptopservicecenteringurgaon.com> to collect information about the website’s visitors. It is reasonable to conclude that Respondent profits by doing so either directly or by selling such information. Respondent’s phishing for personal information additionally demonstrates Respondent’s bad faith registration and use of <delllaptopservicecenteringurgaon.com>. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Finally, Respondent registered the <delllaptopcare.com> and <delllaptopservicecenteringurgaon.com> domain names knowing that Complainant had trademark rights in the DELL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the confusingly similar domain names in a scheme to impersonate Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <delllaptopcare.com> and <delllaptopservicecenteringurgaon.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delllaptopcare.com> and <delllaptopservicecenteringurgaon.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 21, 2016
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