WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. v. Rajesh T.S., Computershoppe / Synergy Peripherals and Systems
Case No. D2021-0134
1. The Parties
The Complainant is Dell Inc., United States of America, represented by AZB & Partners, India.
The Respondent is Rajesh T.S., Computershoppe, India / Synergy Peripherals and Systems, India.
2. The Domain Name and Registrar
The disputed domain name <dellservers.info> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 Rajesh T.S., Computershoppe is listed as the registrant and providing the contact details.
The Center verified that the 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 more than 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 9, 2014. It resolves to a website, the top line of which contains, in small type, the words “Dell Storages dealers” which are used several times in conjunction with a list of locations in India as well as in combination with the words “price”, “pricelist” and “models”. Beneath the menu bar is a photograph of a number of the Complainant’s servers, each featuring a DELL badge, which includes the claim “Business Servers. Range of perfect solutions for your IT infrastructures”. The products offered for sale on subsequent pages include both the Complainant’s products and those of third parties.
The first-named Respondent is the registrant of the disputed domain name. The Complainant established that this Respondent had previously registered the domain name <dellservicecenterinchennai.in> and it has successfully recovered this domain name through proceedings under the .IN Domain Name Dispute Resolute Policy. The second-named Respondent operates a business and website, one of the physical addresses for which matches the address for the first-named Respondent as shown on the WhoIs record for the disputed domain name. For that reason the Complainant has made it a Respondent to these proceedings. The Respondents have not rebutted this contention regarding their connection to each other. It is not necessary for the Panel to distinguish between the Respondents in this decision and they are referred to below 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. The Complainant’s DELL marks have been registered in classes 9, 42 and 37 for manufacturing computer and related accessories as well as the provision of services for such products, including maintenance and repair. The Respondent has adopted the Complainant’s well-known DELL trade mark without any consent, whether express or implied. Not only is the Respondent’s adoption of the mark an infringement of the Complainant’s rights, but it is being used for goods and services identical to those of the Complainant.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is taking advantage of innocent customers who may or may not enquire about the authenticity of the Respondent. Even if the Respondent informs a purchasing customer that it is not related to the Complainant, this does not bestow any right on the Respondent to use the Complainant’s trade mark in the disputed domain name as it is the sole property of the Complainant. The Respondent has not been licensed to use the mark DELL and it has developed the disputed domain name only so that it can benefit illegally from the goodwill and reputation the Complainant has in its mark. Its use is not for noncommercial purposes and would not fall under the ambit of “fair use”.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in bad faith with the dishonest intent of misleading the public into believing that it is an authorized service centre of the Complainant. The Respondent’s adoption of the Complainant’s mark is intended to confuse the public into thinking that the disputed domain name resolves to a website of the Complainant, which is not the case. The disputed domain name has been registered in order to lure Internet users to the Respondent’s website and thereby enable it to make an illegal profit from its misrepresentations.
The Respondent’s adoption of the Complainant’s trade mark without license or other authority is evidence of bad faith in itself. The nature of the disputed domain name is such that it gives the impression that it relates to a website of the Complainant at which its servers are available for purchase. Bad faith is also evident from the fact that the Respondent is a habitual offender and the Respondent is thereby eroding the distinctive character of the Complainant’s mark.
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, 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 “.info”, 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 word “servers”. The addition of this word 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 it 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, summarised 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 noncommercial or fair use of the domain name.
The position of resellers and distributors of a complainant’s product who incorporate its trade mark into a domain name is considered at section 2.8 of the WIPO Overview 3.0 and in a number of decisions of earlier UDRP panels including Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This decision set out a number of cumulative requirements to be fulfilled if a respondent’s use of the domain name were to be considered as comprising a bona fide offering of goods and services and fair use of it. Those requirements and the Panel’s assessment as to whether they have been satisfied by the Respondent, are as follows;
(i) the respondent must actually be offering the goods or services at issue. This requirement is met.
(ii) the respondent must use the site to sell only the trademarked goods or services. This requirement is not fulfilled in that, in addition to the Complainant’s products, the Respondent is selling a wide range of third party products from its website. Use of the disputed domain to sell competing goods and services does not, in any event, amount to a bona fide offering of goods and services; see Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery, WIPO Case No. D2004-1060.
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder or lack thereof. The Panel notes that there is a disclaimer on the website indicating that “The information in this website is provided for promotional activities only. All trademarks, Brand logos, Product figures, price structures are the property of their respective owners.” The Respondent does not meet this requirement in that this disclaimer on the Respondent’s website is not sufficient to the effect of disclosing that the Respondent has no formal connection with the Complainant, nor the identity of the entity operating the website. Whilst some Internet users who visit the Complainant’s site might infer from the offer of third party products that the Respondent’s website is not owned and operated by the Complainant, the onus is firmly on the Respondent to provide absolute clarity in this respect.
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The Respondent has evidently registered at least one other domain name, <dellservicecenterinchennai.in>, which reflects the Complainant’s trade mark.
The Respondent’s use of the disputed domain name therefore falls well short of meeting the Oki Data criteria and it accordingly amounts to neither a bona fide offering of goods and services, nor a noncommercial or fair use of it. Furthermore, there is nothing in the evidence available to the Panel to suggest that the Respondent might be able to establish rights or legitimate interests on any other basis and, indeed, it has not attempted to do so.
In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation, irrespective of the existence of the abovementioned disclaimer, see WIPO Overview 3.0, section 2.5.1, and Facebook, Inc. & Libra Association v. Registration Private, Domains By Proxy, LLC / Kevin Mehrabi, WIPO Case No. D2020-0530.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s first DELL trade mark in India was registered in June 1992, many years prior to the Respondent’s registration of the disputed domain name in May 2014, by which point the Complainant’s repute in its mark was well established. The fact that the disputed domain name combines the Complainant’s distinctive DELL mark with the word “servers”, which is descriptive of one of the product lines sold by the Complainant, establishes an awareness by the Respondent of the Complainant’s rights as at the date of registration of the disputed domain name and points to an intention on its part to take unfair advantage of those rights in some manner. As explained at section 3.1.4 of the WIPO Overview 3.0 “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”.
Considering next the question of bad faith use, 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 composition of the disputed domain name will suggest to Internet users that any website to which it resolves is likely to be owned and operated by the Complainant and to offer its products for sale. While it seems that purchases may not be performed through the website itself, there are several circumstances pointing towards the commercial nature of the website, for example the big message of the home page showing “Best price guarantee”, and the enquiry form with the possibility to enquire about the “price” and “product quotation”. When Internet users visit the Respondent’s website, it will become apparent that it offers both the Complainant’s products and those of its competitors. However, the Respondent has nonetheless unfairly used the disputed domain name and the Complainant’s repute in its brand as bait to lure prospective customers to its website by creating the false impression of a connection with the Complainant’s business. Moreover, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions. These factors 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 <dellservers.info> be transferred to the Complainant.
Date: March 11, 2021