The Complainant is Dell Inc. of Texas, United States of America (“United States”), represented by AZB & Partners, India.
The Respondent is Raj Kumar, Itel Computer Solutions of Chennai, India. 2. The Domain Name and Registrar
The disputed domain name 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 September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and confirming the contact details;
(c) the Respondent registered the disputed domain name on August 18, 2016;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Complainant filed an amended Complaint on September 19, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 September 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 26, 2018. 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 in the United States. It has since grown to be one of the world’s leading direct seller of computer systems. Its product range has expanded to include software, peripherals and a wide range of computer related services. According to the Complaint, the Complainant sells more than 100,000 systems each day around the world in 180 countries, including India. It has a “team” of 100,000 “members” around the world and “caters to” more than 5.4 million customers each day.
According to the Complaint, it began using its trademark DELL in 1988.
The Complainant commenced selling its products by reference to DELL through its subsidiaries in India in 1993. In India at least, its sales and services are provided through exclusive “Dell” stores and via its interactive website at “”. It also has a country specific domain name and numerous other domain names which include the word “Dell”.
The Complainant has numerous registered trademarks. These include in India Registered Trademark No. 575115, DELL, in respect of goods in International Class 9 which has been registered since June 15, 1992. Amongst other things, it subsequently secured registered trademarks in India for DELL in International Classes 2, 9, 36, 37 and 42 for a range of goods and services.
As noted above, the Respondent registered the disputed domain name on August 18, 2016.
The disputed domain name resolves to a website which appears to be a “Dell Laptop repair service centre, Chennai” in India. It features prominently the Complainant’s “logo” comprising the word “Dell” (with a “slanted e”) inside a circle. The colour scheme of the website also closely resembles the blue colour scheme of the Complainant’s website.
The Complainant and the Respondent have had numerous disputes over domain names based on the word “Dell”. The earliest of these in evidence dates back to July and August 2013 in which the Respondent was ordered to transfer to the Complainant the domain names and .
In May 2018, a further dispute was resolved with the Respondent as the owner/director of the Laptop Store signing undertakings to the Complainant.
Three of the numerous domain names included in that dispute were , and . There were at least 24 other domain names based on “Dell”. The undertakings included a representation that, apart from the listed domain names (none of which included the disputed domain name), the Respondent had not registered in his own or any other name any other domain names bearing the trademark DELL. The Respondent also undertook not in future to adopt or register any domain names which had the trademark DELL in it. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for, amongst other things, DELL, in India. The Panel also accepts that the trademark DELL is very well-known around the world.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the “.com” gTLD, the disputed domain name differs from the Complainant’s trademark only by the addition of the descriptive terms “service” and “India”. The Complainant’s trademark is clearly visible within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
As will be apparent from the outline of the history between the parties recited in Section 4 above, the Respondent is not licensed by the Complainant or associated with the Complainant in any way. The disputed domain name is not derived from the Respondent’s name or his apparent trading name “Itel Computer Solutions”.
It may be that the Respondent only provides repair services in respect of the Complainant’s own branded computers and associated products. The Panel notes, however, that the Complainant’s registered trademarks in India include a registration for DELL in respect of computer repair and maintenance services in International Class 37: Trademark Number 1239350, which was registered on September 24, 2003, long before the Respondent registered the disputed domain name. Further, to all intents and purposes, the website to which the disputed domain name resolves presents as if it is the, or one of, the Complainant’s authorised outlets. There is no prominent, or sufficiently prominent, disclosure on the landing page for the website of the nature of the relationship between the Respondent and the Complainant. Thus, there can be no question of reliance on the so-called “Oki-Data” factors. See WIPO Overview 3.0, section 2.8.
The Panel also notes the nature of the disputed domain name consisting of the trademark DELL and the additional terms “service” and “India”. The nature of the disputed domain name may carry a risk of implied affiliation, sponsorship or endorsement. See WIPO Overview 3.0, section 2.5.
Moreover, by the May 2018 undertakings, the Respondent has purported to have disclosed and agreed to transfer to the Complainant all “Dell” domain names he had registered in his own, or any other, name and, further, undertaken not to use in future domain names which bear the DELL trademark. The name of the store promoted by the website to which the disputed domain name resolves appears to be the same or very close to the “.in” domain names listed above which the Respondent agreed to transfer to the Complainant. The disputed domain name itself closely resembles those three “.in” domain names.
All of these matters make a compelling case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut the Complainant’s allegations or otherwise justify his registration of the disputed domain name.
In these circumstances, the Complainant has established (at least) a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Even without regard to the fame of the Complainant’s trademark, it is clear from the domain name disputes between the Complainant and the Respondent dating from at least 2013 (at least one of which involved the Respondent specifically in his role as “Itel Computer Solutions” (as in this proceeding) that the Respondent was very well aware of the Complainant and its trademark when he registered the disputed domain name in 2016.
Given those disputes, the range of goods and services for which the Complainant has obtained registration in India of DELL including in particular repair and maintenance services and the way the Respondent has used the disputed domain name, the strong inference is that the Respondent registered the disputed domain name to take advantage of the Complainant’s trademark and has done so in circumstances where the Respondent has been found to have no rights or legitimate interests in the disputed domain name.
Accordingly, on the record in this administrative proceeding, the Panel finds the Complainant has established that the disputed domain name has been registered and used in bad faith under the Policy. 6. Decision
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 be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 8, 2018
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