WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. v. IceBlue Bilisim Teknoloijleri and Mushtariy Maksadkulova
Case No. D2021-1770
1. The Parties
The Complainant is Dell Inc., United States of America (“US”), represented by Dundar Law Firm, Turkey.
The Respondents are IceBlue Bilisim Teknoloijleri, Turkey and Mushtariy Maksadkulova, Turkey.
2. The Domain Names and Registrars
The disputed domain name <dellservismerkezi.com> is registered with Isimtescil Bilişim A.Ş.
The disputed domain name <turkeydellservis.com> is registered with Aerotek Bilisim Taahut Sanayi Ve Ticaret Ltd Sti.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2021. On June 4, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On June 7 and 14, 2021, respectively, the Registrars Isimtescil Bilisim A.S. and Aerotek Bilisim Taahut Sanayi Ve Ticaret Ltd Sti. transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 15, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on June 17, 2021 and on June 22, 2021.
The Center sent an email communication to the parties on June 15, 2021, regarding the language of the proceeding, as the Complaint has been submitted in Turkish and the language of the registration agreement for the disputed domain name <turkeydellservis.com> is English. The Complainant submitted a request for Turkish to be the language of the proceeding on June 17, 2021. The Respondents did not submit any communication regarding the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 9, 2021.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on August 17, 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, Dell Inc., is a computer hardware and computer accessory company that offers products and services related to technology, software, security, and other products.
The Complainant sells its products and services in 180 countries, including Turkey. The Complainant refers to its official US website “www.dell.com” and its official Turkish website “www.dell.com.tr”.
The Complainant owns several trademark registrations for DELL all over the world, including the following:
- Turkish Registration No. 2019 65390 for the word mark DELL, registered on November 26, 2019, covering computer hardware and software products and services in 09, 36, 37, 40, 41, and 42; and,
- Turkish Registration No. 2017 72227 for the figurative mark DELL, registered on November 4, 2018, covering computer hardware and software products and services in 09, 36, 37, 40, 41, and 42.
The disputed domain names <turkeydellservis.com> and <dellservismerkezi.com> were respectively registered on February 01, 2021, and April 22, 2017. The disputed domain names both resolved to active websites in Turkish, offering spare parts and repair services for the Complainant’s products before the commencement of the proceedings. At the time of the decision, the disputed domain names still resolve to active websites.
5. Parties’ Contentions
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark DELL and that the addition of the geographical term “turkey” and the descriptive terms “servis” and “servis merkezi” (which respectively refer to the term “service” and “service center”) reinforce the association between the disputed domain names and the Complainant’s trademark as Internet users will likely assume that the disputed domain names are used for the official DELL repair services and sales of spare parts.
The Complainant considers that the Respondents have no rights or legitimate interests in respect of the disputed domain names, mainly because the Complainant has neither licensed nor otherwise authorized the Respondents to use its marks or to apply for or use any domain name incorporating the trademark DELL. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondents are well aware of the Complainant’s trademark considering that the Respondents are using the Complainant’s marketing material and that the Respondents’ websites clearly suggest that the websites belong to the Complainant or are an official affiliated dealer endorsed by the Complainant. In this regard, the Respondents have used privacy shield in order hide their identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Matter – Consolidation of Multiple Respondents
There are two Respondents, one for the disputed domain name <dellservismerkezi.com> and one for the disputed domain name <turkeydellservis.com>. The Complainant requests the consolidation of the Respondents into one case. Having reviewed the circumstances of the case, the Panel grants the request for consolidation.
According to Paragraph 10(e) of the Rules it is within the Panel’s power to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
The Panel grants the request for consolidation for the below reasons:
- each of the disputed domain names incorporate the DELL trademarks in their entirety with similar descriptive additions “servis” and “servismerkezi”;
- both of the disputed domain names resolve to websites that offer repair services and sell spare parts exclusively for the Complainant’s products;
- both of the disputed domain names point to websites in which the stylized version and the logo of the DELL figurative trademark are used;
- the Respondents have the same street address according to the Registrars’ verifications.
In light of the above and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.11.2, the Panel finds that the Parties are most likely subject to common control and that consolidation would be fair and equitable, and further that consolidation would be in the interest of the efficiency of the proceedings.
6.2 Procedural Matter – Language of the Proceedings
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. The Registration Agreements for the disputed domain names <turkeydellservis.com> and <dellservismerkezi.com> are English and Turkish, respectively. The Complaint was filed in Turkish.
The Complainant submitted a reply to the Center, requesting the language of the proceedings being Turkish noting a) the disputed domain names contain Turkish terms, b) the website at the disputed domain names are directed to the Turkish-speaking public, and c) the Respondents are located in Turkey.
The Center has throughout the proceedings issued its case-related communications, including the Center’s Complaint notification documents, in both Turkish and English. The Respondents did not participate in the proceedings and have been notified of their default.
The Panel notes the following from the Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004, “The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case”.
In this respect, the Respondents have been given an opportunity to comment on the language of the proceedings but have chosen not to respond.
Although, the Panel accepts the Complainants’ submission in Turkish and arguments as to the language of the proceedings, and would have accepted a response in either Turkish or English, the Panel decides that language of the proceedings being in English in accordance with the Registration agreement for the disputed domain name <turkeydellservis.com>.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Parties for the decision to be rendered in English. Accordingly, the Panel determined that the language of these administrative proceedings be English.
6.3 Substantive Matters
Paragraph 4(a) of the Policy sets forth the following three elements, which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
As indicated above, the Complainant holds several trademark registrations for the DELL trademark. The disputed domain names integrate the Complainant’s DELL trademark in its entirety. The disputed domain names differ from the registered DELL trademark by the addition of the geographical term “turkey” and the descriptive words “servis” and “servis merkezi” which refer to “service” and “service center” in the Turkish language, and which do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. See WIPO Overview 3.0 at section 1.8.
As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and it is then for the Respondent to rebut this case.
Although the Respondents did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview 3.0, section 4.3 and the cases cited therein.
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences, as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondents to submit a Response, the Panel infers that the Respondents do not deny the facts asserted and contentions made by the Complainant. See, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
Several UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data Americas, Inc. v. ASD, Inc., supra. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name incorporated the complainant’s trademark in full. The panel in Oki Data Americas, Inc. v. ASD, Inc., supra, concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:
“- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website to sell only the trademarked goods, otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods;
- the site itself must accurately disclose the respondent’s relationship with the trademark owner, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to ‘corner the market’ in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.”
In this case, it appears from the websites, that the Respondents have been operating their business of offering repair services and selling spare parts exclusively for the Complainant’s products under the disputed domain names.
That being said, the Respondents are using the stylized version and the logo of the DELL figurative trademark. Moreover, the websites include the photos of the Complainant’s DELL branded products and uses the marketing material of the Complainant. More importantly, the websites under the disputed domain names do not contain any disclaimer as to the relation with the Complainant. On the contrary, the Respondents are using “DELL PartnerDirect” and “DELL Registered Partner” logos on their websites. All these circumstances give the impression that the Respondents are affiliated with the Complainant, or they are an authorized dealer of the Complainant.
For these reasons, the Panel concludes that the Respondents are not making use of the disputed domain names in connection with a bona fide offering of goods or services.
Furthermore, the nature of the disputed domain names, comprising the Complainant’s well-known DELL trademark with related descriptive terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0 at section 2.5.1.
In the Panel’s view, the Complainant has made out its prima facie case under this element of the Policy and the Respondents have failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain names fall under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 names <dellservismerkezi.com> and <turkeydellservis.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: September 6, 2021