WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. v. James Jeni, Laptap Shoppe / Synergy Systems and Peripherals
Case No. D2021-0133
1. The Parties
The Complainant is Dell Inc., United States of America, represented by AZB & Partners, India.
The Respondent is James Jeni, Laptap Shoppe, India / Synergy Systems and Peripherals, India.
2. The Domain Name and Registrar
The disputed domain name <dellshowroomchennai.com> is registered with Good Domain Registry Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2021. On January 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 26, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on February 25, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant was established in 1984 and is a substantial global seller of computer systems, computer peripherals, and other computer-orientated products. It sells over 100,000 computer systems every day to customers in over 100 countries. The Complainant’s products have been available in India since 1993.
The Complainant first used the trading style Dell in 1988 and it has registered numerous trade marks in many countries to protect its brand. These include, by way of example only, Indian trade mark, registration number 575115, for DELL, in class 9, registered on June 15, 1992. In addition, the Complainant uses various trade marks, which include the word “Dell”, such as DELLPRECISION and DELL PROSUPPORT. The Complainant also owns many domain names, which comprise or include the word “Dell”. These include <dell.com>, which resolves to the Complainant’s principal website, as well as country-specific domain names, such as <dell.co.in>, which is used by the Complainant to provide details of products, stores and authorized service centres for its customers in India.
The disputed domain name was registered on May 17, 2014. As at the date of the filing of the Complaint, the disputed domain name did not resolve to an active website, although it has previously resolved to a website, which offered for sale a wide variety of the Complainant’s laptop computers. Screen prints of the Respondent’s website provided by the Complainant show that at least one of the pages is prominently headed with the Complainant’s DELL mark and its strapline. The website provides telephone numbers for the Complainant’s Consumer and Corporate Divisions as well as the addresses for the Complainant’s Corporate Office in Chennai, India and the locations of the Complainant’s showrooms in Chennai and Hyderabad. The web pages do not contain any disclaimer to the effect that the Respondent’s business is not connected with, or authorized by, the Complainant.
As part of their brand protection activities for the Complainant, the Complainant’s representatives found another domain name, <dellshowroomchennai.co.in>, which directs to a website the form and content of which was very similar to that to which the disputed domain name previously directed. Subsequently a further domain name, <delllaptopshowrooominchennai.in>, was found which also purported to relate to the Complainant’s Dell showroom in Chennai. The corresponding WhoIs records suggest that the first-named Respondent has a connection with both of these domain names. The Complainant is presently seeking to recover <delllaptopshowrooominchennai.in> through the .IN Domain Name Dispute Resolution Policy.
The Complainant has included the second-named Respondent as a party to the Complaint because the Complainant believes it to have some connection with the <delllaptopshowrooominchennai.in> domain name. However, as there is no need for the Panel to distinguish between the Respondents to these proceedings, they are referred to in the remainder of this decision as “the Respondent”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its many registered trade marks for DELL, including the mark in respect of which full details are set out above, and says that the disputed domain name enables the Respondent to present itself as the Complainant’s Dell showroom in Chennai in violation of its trade mark rights.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no right to use the Complainant’s DELL mark and the adoption and use of its mark by the Respondent has not been licensed or permitted by it. The Respondent is taking advantage of innocent customers who may or may not enquire about the authenticity of the Respondent or its relationship with the Complainant. But, even if the Respondent informs the purchasing customer that it is not related to the Complainant, that does not entitle it to use the Complainant’s DELL trade mark.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name is worded in such a manner as to suggest that it relates to the Complainant’s showroom in Chennai. The disputed domain name has been registered in order dishonestly to mislead the public. The Complainant’s mark is being used in the disputed domain name without due cause and in order to gain illegal benefit from the goodwill the Complainant has in its mark. The fact that the Respondent has used the Complainant’s trade mark without license or other authority is, in itself, evidence of bad faith. Moreover, the Respondent’s deactivation of its website after the Complainant initiated proceedings in respect of the Respondent’s <delllaptopshowrooominchennai.in> domain name is an additional indicator of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The information provided by the Complainant in relation to its trade mark registrations for DELL, including the mark in respect of which full details are provided above, establishes its rights in this trade mark.
For the purpose of determining whether the disputed domain name is identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”), that is “.com”, is disregarded as this is a technical requirement of registration.
The disputed domain name comprises the Complainant’s DELL trade mark in full, followed by the words “showroom” and “chennai”. The addition of these words does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The disputed domain name includes the Complainant’s DELL mark in its entirety and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate non-commercial or fair use of the domain name.
The currently inactive status of the disputed domain name self-evidently does not comprise use in connection with a bona fide offering of goods and services. Moreover there is no evidence that the Respondent has been commonly known by the disputed domain name, nor does its inactive status comprise legitimate non-commercial or fair use, not least when the composition of the disputed domain name is such that Internet users will be prone to assume that it is closely connected with the Complainant and its activities in Chennai. Accordingly, the present status of the disputed domain name is not such as to give the Respondent any rights or legitimate interests in it.
As the Complainant has contended, there is at least a possibility that the website to which the disputed domain name previously resolved might reappear. For this reason, the Panel additionally considers whether the Respondent’s website, if reactivated, would amount to a bona fide offering of goods and services. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel set out a number of cumulative criteria, widely followed by subsequent UDRP panels, which need to be satisfied if a distributor or reseller is to be found to be providing a bona fide online offering of a complainant’s goods or services. One of those criteria is that the respondent’s website must accurately and prominently disclose its relationship with the trade mark owner. The Respondents’ website does not do this. Indeed, Internet users visiting the website and noting the various features of the website described earlier, in particular the wealth of information provided about the Complainant and its other branches in this region of India would, in the absence of reasonably prominent wording disclaiming a commercial relationship with the Complainant, be apt to assume that they had reached the website of the Complainant’s branch in Chennai. The Respondent’s website, would not therefore fall within the Oki Data criteria and it therefore comprises neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of it.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s DELL trade mark is inherently distinctive. The composition of the disputed domain name, being the Complainant’s distinctive DELL mark coupled with the words “showroom” and “Chennai” is clearly intended to be perceived by Internet users as a reference to the Complainant’s showroom in Chennai. This, in itself, establishes both an awareness by the Respondent of the Complainant’s rights as at the date of registration of the disputed domain name and an intention on its part to take unfair advantage of those rights in some manner. Moreover, as explained at section 3.1.4 of the WIPO Overview 3.0 “[UDRP panels] have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”.
The fact that the disputed domain name is currently inactive does not preclude a finding of bad faith use under the doctrine of passive holding. As first considered in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”), factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
Three of these factors are applicable to the current circumstances. First, the Complainant’s mark is distinctive and well-known. Second, the Respondent has not submitted a response or provided any evidence of good faith use. Third, having regard to the characteristics of the disputed domain name, as outlined earlier, it is impossible to think of any good faith use to which it could be put. As for the fourth factor, whilst the Respondent’s details appear to have been accurately recorded in the WhoIs record, the Panel is required to consider all the circumstances of the case in order to determine whether the Respondent is in bad faith; see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. The factors applied in Telstra (supra) are not necessarily cumulative, nor exhaustive and the mere fact that the Respondent appears to have disclosed accurate address details does not, in the circumstances of this case, prevent the inactive status of the disputed domain name from comprising bad faith use under the doctrine of passive holding.
Finally, the Panel considers the previous use of the Respondent’s website at the disputed domain name. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv) of the Policy, in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The form and content of the Respondent’s website would suggest to many Internet users that it was operated by the Complainant. The belief of Internet users that the Respondent’s website was operated by, or on behalf of, the Complainant will have been reinforced because the components of the disputed domain name will lead Internet users to believe that any website to which it resolved related to the Complainant’s showroom in Chennai, thereby accentuating the false impression of a connection with the Complainant’s business and increasing the likelihood of confusion to Internet users. Finally, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. All these factors in combination point to bad faith registration and use of the type envisaged by paragraph 4(b)(iv) of the Policy; see, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
The Panel therefore finds that the disputed domain name was both registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <dellshowroomchennai.com> be transferred to the Complainant.
Date: March 10, 2021