The Complainant is Dell Inc., United States of America (“United States”), represented by AZB & Partners, India.
The Respondent is Wix.com Ltd., United States / mandi ghosh, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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 November 2, 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 November 3, 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 November 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on November 30, 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 BackgroundThe Complainant, which was established in 1984, supplies computer-related goods and services worldwide under the mark DELL. The Complainant sells more than 100,000 computer systems every day to customers in 180 countries, including India.
The Complainant operates a website at “www.dell.com”.
The Complainant owns many trade marks for DELL including Indian trade mark no. 575115, registered on June 15, 1992, in class 9.
The disputed domain name was registered on August 4, 2021.
The disputed domain name has been used for a website headed with the Complainant’s logo plus the title “DELL LAPTOP SERVICE CENTER IN SALT LAKE KOLKATA”, and which claimed to offer repair services and genuine Dell spare parts for Dell laptops.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
The disputed domain name is confusingly similar to the Complainant’s trade mark in that it includes the Complainant’s well-known trade mark in addition to words referable to the supply of services relating to the Complainant’s products.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to use its mark.
The Respondent has no right to use the Complainant’s mark, which is the sole property of the Complainant.
The Respondent has not made fair use of the disputed domain name for a noncommercial purpose.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered and used the disputed domain name to mislead the public into thinking that it operates an officially authorised service centre for the Complainant’s products in Salt Lake, Kolkata, and to make an illegal profit as a result of such misrepresentation.
The Respondent’s activities are eroding the distinctive character of, and diluting, the Complainant’s well-known trade mark.
The veracity of the Respondent’s claims to provide genuine spare parts for the Complainant’s product remains unverified. Use of faulty and sub-standard parts can be dangerous for customers as laptops can catch fire or even burst.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
The Complainant has established rights in the mark DELL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive and longstanding use.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the phrase “laptop service center in Salt Lake” does not prevent a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the Complainant has therefore established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the Respondent’s website purports to offer repairs and spare parts for the Complainant’s products. In the Panel’s view, it is appropriate to approach this as a reseller/distributor case. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, a respondent must comply with certain conditions (known as the “Oki Data test”).
In this case, the Panel considers that the Respondent has failed to comply with the Oki Data requirement to accurately and prominently disclose the Respondent’s relationship with the trade mark holder. On the contrary, the Respondent has branded its website with the Complainant’s logo, thereby giving the impression that the site is officially connected with the Complainant.
Furthermore, the Respondent has not appeared in the proceeding to contest the suggestion by the Complainant that, despite the Respondent’s website claiming otherwise, the Respondent may not be supplying genuine Dell spare parts. If so, the Respondent would have failed to comply with the requirement to use the site to sell only trademarked goods or services.
Accordingly, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithEven if the Respondent is in fact offering a Dell repairs and spare parts service, the Respondent has used the website at the disputed domain name to promote this service in an illicit manner, namely by branding its website with the Complainant’s logo to falsely imply that the Respondent is providing an officially authorised service (and without disclosing the lack of an official relationship with the Complainant).
Furthermore, the Respondent has not appeared in this proceeding to explain and justify its offering, including to respond to the Complainant’s suggestion that it may be supplying non-genuine, and possibly dangerous, spare parts for the Complainant’s products.
In these circumstances, the Panel finds that, on the balance of probabilities, the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has therefore established the third element of paragraph 4(a) of the Policy.
7. DecisionFor 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,
Adam Taylor
Sole Panelist
Date: December 14, 2021