Dell Inc. v. Yrok Inc.
Claim Number: FA0710001103423
Complainant is Dell Inc. (“Complainant”), represented by Nathan
J. Hole, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell20.com>, <dell20.net>, <dell20.biz>, <dell20.info>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2007.
On October 26, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names.
3. Respondent registered and used the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., has marketed and sold computer systems and related products and services for over 20 years. For several years Complainant has been the world’s largest direct seller of computer systems, selling its products in over 80 countries. Complainant has registered its trademark DELL and variations of this mark in more than 180 countries worldwide, including more than thirty registrations with the United States Patent and Trademark Office (“USPTO”). Complainant’s marks include USPTO registrations of DELL (Reg. No. 1,616,571, October 9, 1990), and DELL (Stylized Letters) (Reg. No. 1,860,272, October 25, 1994). On September 12, 2006, Complainant publicly announced and launched a business initiative entitled “Dell 2.0.”
Respondent registered the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names on September 13, 2006. Respondent’s <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names currently redirect Internet users to Respondent’s website at <pcdisposal.com>, which offers services in competition with those of Complainant.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the DELL mark. Complainant owns several registrations with
the USPTO. The Panel finds that where
Complainant has submitted evidence of valid trademark registrations, Policy ¶
4(a)(i) has been satisfied. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum
Respondent’s <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names are confusingly similar to Complainant’s mark. Respondent’s domain names comprise Complainant’s entire mark adding a generic top-level domain (“gTLD”), and the generic term “20,” which relate both to the number of years Complainant has been in business and to the title of a new initiative Complainant is undertaking. Complainant contends, and the Panel agrees, that because of the structure required of domain names, the “20” in Respondent’s domain names is identical to the “2.0” used by Complainant in its well publicized “Dell 2.0” initiative. The Panel finds that Respondent’s additions to an otherwise unchanged mark fails to distinguish Respondent’s domain name from Complainant’s mark in any meaningful way for purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden
shifts to Respondent to set forth concrete evidence that it does possess rights
to or legitimate interests in the disputed domain name. The Panel finds
that Complainant has established a prima facie
case in the matter at hand. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
Respondent has failed to submit a response to the Complaint. Thus, the Panel is entitled to presume Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Nonetheless, the Panel will examine the evidence in the record to determine if Respondent has rights or legitimate interests in the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names pursuant to Policy ¶ 4(c).
The disputed domain names, <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info>, currently point to Respondent’s <pcdisposal.com> website, which offers services in competition with those offered by Complainant. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is no evidence in the record to suggest that Respondent is currently known, or has ever been known by the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names. Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the disputed domain names. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the domain name in accordance with Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Respondent currently utilizes the disputed domain names to redirect internet users to its website, which offers services that compete with Complainant. The Panel finds such use to establish that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Moreover, Respondent is likely gaining commercially from the confusion created with Complainant’s well-known mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The Panel finds that the disputed domain name is capable of creating a likelihood of confusion with Complainant’s mark and that this is further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Finally, Complainant contends that Respondent registered the disputed domain names with knowledge of Complainant’s well-known DELL mark and “Dell 2.0” initiative, as evidenced by Respondent’s registering the disputed domain names the day after Complainant publicly announced its “Dell 2.0” initiative. The Panel finds Respondent knew or should have known of Complainant’s well-known marks and that such knowledge is further evidence of Respondent’s bad faith registration of the disputed domain names. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”) see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell20.com>, <dell20.net>, <dell20.biz>, and <dell20.info> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 7, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum