Dell Inc. v. Cinquemille Corp.
Claim Number: FA0801001140142
Complainant is Dell Inc. (“Complainant”), represented by Nathan
J. Hole, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellyoursishere.com>, registered with Moniker Online Services, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 25, 2008.
On January 25, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellyoursishere.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 February 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 2008 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 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 February 27, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a global leader in computers and computer related products and services.
Complainant has invested heavily in marketing the DELL mark, and on June 26, 2007, publicly announced a new marketing campaign using the YOURS IS HERE mark.
Complainant has a number of trademark registrations for the DELL mark issued by the United States Patent and Trademark Office (“USPTO”) (e.g: registry no. 1,616,571, issued October 9, 1990).
In addition, Complainant filed for trademark registration with the USPTO for its YOURS IS HERE mark on June 21, 2007.
Respondent is neither commonly known by the <dellyoursishere.com> domain name nor licensed to register domain names using the DELL or YOURS IS HERE marks.
Respondent registered the <dellyoursishere.com> domain name on July 23, 2007.
Respondent’s domain name resolves to a website containing links to Complainant’s website and also to websites in direct competition with the business of Complainant.
Respondent’s <dellyoursishere.com> domain name is confusingly similar to Complainant’s DELL and YOURS IS HERE marks.
Respondent does not have any rights or legitimate interests in the domain name <dellyoursishere.com>.
Respondent registered and uses the <dellyoursishere.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to trademarks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Registration with the USPTO establishes Complainant’s rights in the DELL trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
As to the claimed YOURS IS HERE mark, as to which Respondent does not deny Complainant’s assertion of its rights in that mark, we agree with the analysis of the Panel in Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, where it reasoned as follows:
Complainant has filed an application
for registration of the trademark “ACROBAT READER” on the Principal Register at
Therefore, taking the pair of marks in combination, it is clear that Respondent’s domain name <dellyoursishere.com> is substantively identical to Complainant’s DELL and YOURS IS HERE marks. The addition of the generic top-level domain (“gTLD”) “.com” does not change this conclusion, because the addition of a gTLD is irrelevant when distinguishing a mark from a disputed domain name. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002): “Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’” See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, we find the <dellyoursishere.com> domain name identical to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the <dellyoursishere.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it nonetheless has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In this case Complainant has established a prima facie case under Policy ¶ 4(a)(ii). And, because of the failure of Respondent to respond to the Complaint, we are entitled to assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.
However, we will nevertheless examine the available evidence against the applicable Policy ¶ 4(c) elements to determine if there is any basis for concluding that Respondent has rights or legitimate interests sufficient for purposes of the Policy.
In this connection, we first observe that Complainant contends that Respondent is neither commonly known by the <dellyoursishere.com> domain name nor licensed to register domain names using the DELL mark. Respondent does not deny these allegations. Moreover, Respondent’s WHOIS information indentifies Respondent as “Cinquemille Corp.,” which lacks any apparent connection to the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the disputed name pursuant to Policy ¶ 4(c)(ii). See 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark in question).
Complainant also asserts, and Respondent does not deny, that Respondent uses the <dellyoursishere.com> domain name to attract Internet users to an associated website containing links to websites offering products and services in competition with the business of Complainant. This is 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that a respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <dellyoursishere.com> domain name to attract Internet users to its website in the circumstances alleged creates a strong possiblity of confusion with Complainant’s DELL and YOURS IS HERE marks. We presume that Respondent receives click-through fees for diverting Internet users to its website. Therefore, we conclude that such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith use and registration of domain names by using domain names that were identical or confusingly similar to a complainant’s mark to direct users to a website that offered services similar to those offered by that complainant); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003):
As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dellyoursishere.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 6, 2008
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