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#Dell Repair San Diego .com : Small biz owner beats PC giant in #UDRP

ZFBot

Mr. Rod Perry is the owner of a small business in San Diego, where he operates the web site DellRepairSanDiego.com.

The web site states that Rod is an electronic engineer with a specialty in Dell PCs and laptops, and states the “DELL” mark belongs to Dell.

Dell filed a UDRP to force the domain name’s transfer, as they’ve done more than 200 times before, in order to protect their famous mark.

Despite the Respondent’s lack of response, the sole panelist at the National Arbitration Forum denied the domain’s transfer to the Complainant:

“In the present case, it is apparent that Respondent is offering Dell repair services in San Diego, and has done so for some time, the Domain Name having been registered on April 28, 2009.  While Respondent does (through links) indicate that it also repairs other computer products, this is not a case where the Domain Name is used for a “bait and switch” exercise.”

A very interesting decision that will most likely give basis to other similar cases in the future.

Full details on the decision follow:

The domain transfer was denied.

Dell Inc. v. Rod Perry

Claim Number: FA1908001855533

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Rod Perry (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dellrepairsandiego.com> (“Domain Name”), registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 2, 2019; the Forum received payment on August 2, 2019.

On August 5, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dellrepairsandiego.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dellrepairsandiego.com. Also on August 7, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On August 28, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant has rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Respondent’s <dellrepairsandiego.com> domain name is confusingly similar to Complainant’s DELL mark as Respondent incorporates Complainant’s mark and adds the generic term “repair” and geographic descriptor “San Diego” along with the generic top-level domain (“gTLD”) “.com.”

Respondent has no right or legitimate interests in the <dellrepairsandiego.com> domain name as Respondent is not commonly known by the Domain Name. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent offers and promotes computer repair services that are in direct competition with services offered by Complainant. Respondent attempts to gather Internet user’s personal information such as name, phone number, and email address.

Respondent registered and is using the <dellrepairsandiego.com> domain name in bad faith by offering competing repair and maintenance services. Respondent attempts to create a likelihood of confusion with Complainant to confuse Internet users into thinking Respondent is affiliated with Complainant in some way. Respondent also attempt to obtain users’ personal information through a phishing scheme. Finally, Respondent had knowledge of Complainant’s rights in the DELL mark prior to registering the Domain Name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the domain name <dellrepairsandiego.com> , has not established all required elements of its claim, and thus its complaint must be denied.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant has rights in the DELL mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 1,860,272, registered Oct. 25, 1994). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).

The Panel finds that the <dellrepairsandiego.com> Domain Name is confusingly similar to the DELL mark as it fully incorporates the DELL mark and adds the generic or descriptive term “repairs” and geographic term “san diego” and the “.com” gTLD. The addition of a generic term and geographic descriptor to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”).see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has not made out such a prima facie case and that Respondent is making a bona fide offering of goods and services at the Doman Name.

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because Respondent offers and promotes computer repair services that are in direct competition with services offered by Complainant and, at the website accessed through the Domain Name(“Respondent’s Website”), Respondent attempts to gather Internet users’ personal information such as name, phone number, and email address.

The Domain Name was registered on April 28, 2009. The Respondent’s Website has the title “Independent Dell Repair in San Diego”. It begins with the statement “My name is Rod and I run a small local business working for your convenience” and at the top of the page, includes the statement “Dell Trademark belong to Dell Inc.” The website appears to offer computer repair services for Dell computer products, but clearly identifies itself as independent to the Complainant and provides a business address where customers can drop off their products. Under the “contact” tab it provides a contact form for customers to describe their IT problems and provide their contact details.

There is no evidence to suggest that Respondent does not actually supply repair services for Complainant’s products. There is no evidence before me to suggest that Respondent has registered other Domain Names incorporating Complainant’s Mark. The assertions in the Complaint that Respondent is attempting to “phish” or sell users’ information to third parties is conclusory and entirely unsubstantiated; the fact that Respondent’s Website has a contact form is entirely consistent with a business inviting potential customers to contact them if they are interested in their services and is not a proper basis to conclude that a party is engaging in phishing or other illegal behavior.

This doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.

These principles have been applied by UDRP panels. The leading decision is Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001), in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:

 The respondent must actually be offering the goods or services at issue,

 The respondent must use the site 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, and

 The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012).

In the present case, it is apparent that Respondent is offering Dell repair services in San Diego, and has done so for some time, the Domain Name having been registered on April 28, 2009. While Respondent does (through links) indicate that it also repairs other computer products, this is not a case where the Domain Name is used for a “bait and switch” exercise. The Respondent’s use of the Domain Name for the Respondent’s Website is consistent with the stated purpose offering repair services in San Diego for Dell computers see ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc. D2008-0936 (WIPO November 7, 2008).

The Respondent’s Website clearly discloses Respondent’s (lack of) relationship with Complainant and nothing on the website suggests an affiliation. The record does not indicate that Respondent has sought to register any other domain names incorporating the DELL mark. In summary, it appears that Respondent operates a legitimate business repairing Dell computers and there is no evidence that that Respondent is seeking to take advantage of any similarity between the Domain Name and DELL Mark beyond that which arises from a truthful use of the DELL Mark to describe the services that Respondent’s business provides.

The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable). The Respondent here meets the Oki Data criteria and Complainant has failed to demonstrate that Respondent lacks rights or a legitimate interest in the Domain Name.

Registration and Use in Bad Faith

In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <dellrepairsandiego.com> domain name REMAIN WITH Respondent.

Nicholas J.T. Smith, Panelist

Dated: August 31, 2019


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