The Complainant is Dell Inc., United States of America, represented by Baker & McKenzie, Russian Federation.
The Respondent is Ivan Petrov, Private Person, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 14, 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 April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021. The Center appointed Ganna Prokhorova as the sole panelist in this matter on May 21, 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., manufactures and sells computer hardware, electronic devices and equipment, and provides accompanying services, including repair services. The Complainant is the owner of several trademarks, at least, protected in the Russian Federation: - DELL (figurative), International registration No. 1005367, registered back in 2009 for goods and services of classes 9, 16, 25, 35-38, 40-42 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (“ICGS”), including but not limited to repair; installation services; installation, maintenance and repair of computer hardware, computer peripherals and advisory and consulting services relating thereto; - DELL, Reg. No. 197490 in the Russian Federation, registered back in 2000 for goods and services of classes 16, 35-37, 40 of the ICGS, including but not limited to installation, maintenance and repair of computer hardware; - DELL, Reg. No. 260295 in the Russian Federation, registered back in 2003 for services of class 37 of the ICGS, including but not limited to installation, maintenance and repair of computer hardware. The disputed domain name was registered on May 21, 2019, and at the moment of this decision it redirects to a parking page stating that the page is not working. At the time of the Complaint was filed, the disputed domain name was used in connection with offering services in connection with the DELL trademarks. 5. Parties’ Contentions A. Complainant The Complainant contends as follows: (1) The disputed domain name is confusingly similar to DELL trademark. The additional word “service” in the disputed domain name makes no difference as it is a general term used by different service centers. (2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted permission to use its DELL trademark to the service center, and/or to the website’s operator, and/or to the owner of the disputed domain name. (3) The Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent uses the disputed domain name The Complainant seeks a decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities. To succeed in a UDRP complaint, the Complainant has to demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, namely: (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. The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. For the purpose of these proceedings, the Panel also draws attention of the Complainant that according to WIPO Overview 3.0, section 3.1, since the UDRP normally provides for a single round of pleadings without opportunity for discovery, panels expect that a complainant should anticipate and address likely plausible respondent defenses with supporting arguments and evidence in its complaint. Since the Policy defines the limits of administrative proceedings and contains a non-exclusive list of factors by which the parties can justify their legal position in the case, the complainants are advised to prepare a strong complaint, predicting possible arguments of the respondent in their favor in order to provide all possible arguments and evidence on the basis of which the panel can conclude which circumstance, that is the subject of evidence in the case, is recognized by the panel established or refuted in view of the balance of probabilities or preponderance of the evidence, being the applicable standard of proof in UDRP cases. The Panel also notes that it has undertaken limited independent research because of the limited information provided by the Complainant about the Respondent, in particular to investigate information on its identity and its legitimate interests in registering the disputed domain name. The Panel has made its investigation in accordance with paragraph 10 of the Rules. Such an approach is consistent with a majority of panel views about the capacity of a panel to undertake independent research (see WIPO Overview 3.0, section 4.8). The Panel has undertaken this research only to the extent necessary to clarify matters of public record on which both the Complainant and the Respondent were silent. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. The Complainant has demonstrated ownership of its DELL trademarks, at least in the Russian Federation. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the DELL mark. The disputed domain name As an addition of the suffixes such as “.center” being the generic Top-Level Domain (the “gTLD”) is generally disregarded under the first element, the Panel accordingly holds the disputed domain name is confusingly similar to the Complainant’s trademark DELL. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has used the disputed domain name for the purpose of a website, which offered services expressly related to the Complainant’s own products and services. As stated by the Complainant, it has not granted permission to use its DELL trademark to the Respondent. According to the consensus view in UDRP panel decisions (WIPO Overview 3.0, section 2.8), a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods or services, and the site’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such so-called Oki Data principles (cf., e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481; Red Pocket Inc. v. American Wireless LLC,WIPO Case No. D2013-0318). Nonetheless, the Oki Data test can provide certain guidance for the case at hand. While it was developed in connection with an authorized reseller, the test is regularly also applied in cases of unauthorized resellers (cf., e.g., Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, supra). Under the Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, - a respondent must actually be offering the goods or services at issue; Applying the Oki Data principles to the fact pattern of the present case, it should be noted that: - the Respondent is actually offering services covered by the DELL trademark of the Complainant; As regards accurate and prominent disclosure of the registrant’s relationship with the Complainant, the Panel draws attention to the following. As it stands from the case file, although the Respondent used a specific disclaimer (that it is not authorized by the Complainant to provide the services), the Panel contends that the disclaimer is not sufficiently prominent and clear to displace the likelihood of confusion caused by the disputed domain name and the contents of the website. The Panel finds that much of the website content, including DELL trademarks of the Complainant used in the figurative form as registered, tends to imply an association with the Complainant and that the disclaimer is neither sufficiently prominent nor clearly worded to make clear that there is no connection between the parties. The disclaimer appears at the very end of the home page and does not expressly say that the Respondent is unconnected with the Complainant. In these circumstances, the Panel finds that the Oki Data test has not been passed by the Respondent (See LEGO Juris A/S v. Andrew Orr,WIPO Case No. D2015-1311; Oath Inc. v. Adit Gupta,WIPO Case No. D2020-2523). Furthermore, where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In this case, the disputed domain name using the term “services” and “center” carry a risk of implied affiliation. Moreover, when the gTLD is descriptive (such as “.center”) or relates to terms associated with the complainant (such as, as the case may be, the center for Dell service), it is generally accepted that the respondent’s selection of such gTLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name (WIPO Overview 3.0, section 2.14). Hence, the Panel believes that the “.center” gTLD of the disputed domain name is particularly likely to support an absence of rights or legitimate interests. Furthermore, the Panel also finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered and is being used in bad faith by the Respondent. As noted above, the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See WIPO Overview 3.0, section 4.2. The Complainant has been benefitting from trademark protection for DELL. Moreover, the Complainant’s DELL trademarks are distinctive and enjoy a substantial reputation in the specialty materials industry. The Panel repeats its findings in respect of rights and legitimate interests above. In the light of the fact that the disputed domain name wholly incorporates the Complainant’s trademark, the contents of the Respondent’s website use the Complainant’s marks heavily in the banner and throughout the page that seems geared to giving the false impression that the Respondent is authorized by or affiliated with the Complainant, and its failure to include a satisfactory disclaimer, the Panel concludes on balance that the Respondent both registered and has used the disputed domain name with the intention of taking unfair advantage of the Complainant’s goodwill in its DELL trademark. Specifically, the Panel finds that, by using the disputed 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 or of services on that website (paragraph 4(b)(iv) of the Policy). The Panel has also considered the fact that, as described above, the Respondent’s website carries a disclaimer. The Panel however does not consider this assists the Respondent. It is not particularly prominent, and a visitor has to scroll down a considerable distance to find it. This issue is discussed in WIPO Overview 3.0, section 3.7: “How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith?” (See relevant findings of the former Panels in AARC Inc. v. Jayashankar Balaraman; WIPO Case No. D2007-0578, Carrefour v. Whois Agent, Whois Privacy Protection Service Inc. / Andres Saavedra, WIPO Case No. D2016-0608). Moreover, the Panel has taken into account that the disputed domain name is currently inactive as it redirects to a parking page stating that the page is not working. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (SeeTelstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574). As indicated earlier, there is no indication that the Respondent uses or intends to use the disputed domain name to any end. In this context, it can be said that any use to which the disputed domain name may be put by the Respondent is likely to be misleading. This is particularly true given the descriptive nature of the “.center” gTLD. As the Respondent is not an authorized service center of Dell, the Panel believes that the use of the disputed domain name is likely to give the false impression that the Respondent is the authorized service center of the Complainant. It is therefore implausible that the disputed domain name could ever be put to good faith use by the Respondent. Moreover, the Panel observes the presence of additional factors that also support the finding of bad faith in relation to the passive holding of the disputed domain name. Such factors relate to the degree of distinctiveness and reputation of the DELL trademarks, and the failure of the Respondent to submit a response (WIPO Overview 3.0, section 3.3). Consequently, the Panel finds that the Respondent has been using the disputed domain name in bad faith. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was registered and is being used in bad faith. In light of the above, the third element under paragraph 4(a)(iii) of the Policy has been established. 7. 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 Ganna Prokhorova
- a respondent must use the website to sell only the trademarked goods or services;
- a respondent must take steps to prevent confusion e.g., by making clear on the corresponding website that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner;
- a respondent does not corner the market in such domain names depriving the trademark owner of reflecting its own mark in a domain name.
- the Respondent is using its website only to sell repair services for Dell products; and
- the Respondent does not appear to be cornering the market in domain names that reflect DELL trademark or depriving the Complainant from reflecting its trademark in such domain names.
Sole Panelist
Date: June 16, 2021
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