Dell Inc. v. Nathan Kovac
Claim Number: FA0809001226145
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 <dell-update.com> and <dellupdates.net>, registered with eNom, 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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 24, 2008.
On September 24, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <dell-update.com> and <dellupdates.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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 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 October 23, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary 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 <dell-update.com> and <dellupdates.net> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dell-update.com> and <dellupdates.net> domain names.
3. Respondent registered and used the <dell-update.com> and <dellupdates.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., is a producer and marketer of computer systems and related products and services. Complainant has used the DELL mark (Reg. No. 1,498,470 issued Aug. 2, 1988), which was registered with the United States Patent and Trademark Office (“USPTO”). Complainant owns and operates the <dellsupport.com> domain name in connection with its computer maintenance and support website.
Respondent registered the disputed <dell-update.com> and <dellupdates.net> domain names on July 26, 2008 and April 19, 2008, respectively. Respondent is using the disputed domain names to redirect to a website that advertises and promotes software for download onto an Internet user’s computer, which is similar in function to software sold by 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 provided evidence of its registration of the DELL mark with the USPTO. The Panel finds that this evidence adequately confers upon Complainant sufficient rights in the mark for the purposes of UDRP standing pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Respondent’s disputed <dell-update.com> and <dellupdates.net> domain names contain Complainant’s DELL mark, along with a hyphen in one of the domain names, either the singular or plural form of the generic word “update,” and the generic top-level domain “.com” or “.net.” The Panel notes that the hyphen and generic top-level domains are considered irrelevant under Policy ¶ 4(a)(i). Moreover, the generic words “update” or “updates” fail to connote any significant distinction, as Complainant’s mark remains the dominant portion of both disputed domain names. Therefore, the Panel finds that both of the disputed domain names are confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The Panel finds that Complainant has asserted a sufficient prima facie case supporting this allegation, and therefore Respondent receives the task of demonstrating its rights or legitimate interests in the disputed domain name. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s disputed domain names serve only to route Internet users seeking Complainant’s software to Respondent’s corresponding website, wherein competitive products are advertised and promoted. The Panel finds it difficult to discern any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial use under Policy ¶ 4(c)(iii). Respondent presumably profits from the display of such advertisements through “click-through” referral fees, and it is clear that the ad content directly relates to Complainant’s mark and corresponding goodwill. Therefore, the Panel finds that Respondent lacks rights and legitimate interests under both Policy ¶¶ 4(c)(i) and (iii). See 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 Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
Complainant has asserted that Respondent is not commonly known by the disputed domain names. The WHOIS domain name registration information lists the registrant as “Nathan Kovac,” which does not resemble the disputed domain names. Moreover, there is no offered suggestion that Respondent had any license or permission to use Complainant’s mark in any fashion, much less reflect the mark in these disputed domain names. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names are confusingly similar to Complainant’s mark. Given that the third-party advertisements placed on Respondent’s resolving website are directly competitive, the Panel finds that such evidence indicates Respondent’s intent to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its mark. The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).
Respondent’s disputed domain names, confusingly similar to Complainant’s marks, siphon Internet users to its website, wherein Complainant’s competitors have advertisements. Respondent has thereby created a likelihood of confusion as to the source and affiliation of the disputed domain names and corresponding website. Respondent benefits from such a likelihood of confusion, as it receives referral fees for these advertisements that are subjected to the diverted Internet users. The Panel finds this to be clear evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-update.com> and <dellupdates.net> domain names be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: October 27, 2008
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