national arbitration forum

 

DECISION

 

Dell, Inc. v. N/A and Carl Lindberg

Claim Number: FA0910001290040

 

PARTIES

Complainant is Dell, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is N/A and Carl Lindberg (“Respondent”), Sweden.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwdell.com>, registered with Godaddy.com, Inc.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 21, 2009.

 

On October 19, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwdell.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  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 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2009 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 postmaster@wwdell.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 18, 2009, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant has used the DELL mark since at least as early as 1987 in connection with its computer hardware and accessories business. 

 

On October 9, 1990, the United States Patent and Trademark Office (“USPTO”) issued to Complainant a registration of the DELL trademark (Reg. No. 1,616,571).

 

Respondent has no license from or other agreement with Complainant authorizing Respondent to use the DELL mark

 

Respondent registered the <wwdell.com> domain name on December 24, 2001. 

 

The disputed domain name redirects Internet users to Complainant’s official website resolving from the <dell.com> domain name.

 

Complainant operates an affiliate program which compensates other domain name holders who direct Internet users to Complainant’s official website. 

 

Respondent’s <wwdell.com> domain name is confusingly similar to Complainant’s DELL mark.

 

Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, and is thus attempting illicitly to profit from Complainant’s affiliate program.

 

Respondent does not have any rights to or legitimate interests in the <wwdell.com> domain name.

 

Respondent registered and uses the <wwdell.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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

(2)   Respondent has no rights to 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.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the DELL mark under Policy ¶ 4(a)(i) via its registration with the USPTO, and registration of the mark in the country of Respondent’s residence is unnecessary to establish such rights.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).

 

The <wwdell.com> domain name contains Complainant’s DELL mark in its entirety, preceded only by the letters “ww” and followed by the generic top-level domain (gTLD) “.com.”  It is well established that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

The <wwdell.com> domain name mimics Complainant’s <dell.com> domain name, merely adding “ww” at the beginning.  The addition of “ww” to the front of the disputed domain name takes advantage of Internet users’ typographical errors in forming the typical “www” prefix while typing a domain name, resulting in confusing similarity.  See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding that confusing similarity was established where the prefix “www” does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from a complainant's NEIMAN-MARCUS mark);  see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s <wwwbankofamerica.com> domain name was confusingly similar to a complainant’s registered BANK OF AMERICA trademark because it takes advantage of a typing error (in that instance, eliminating the period between the www and the domain name).). 

 

The Panel therefore finds that <wwdell.com> domain name is confusingly similar to the DELL mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the <wwdell.com> domain name.  The burden then shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Because no response was submitted in this case, we may presume that Respondent has no rights to or legitimate interests in the disputed domain name.  See 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). 

 

We will nonetheless examine the record in consideration of the factors listed in Policy ¶ 4(c) to determine if there is in it any basis for concluding that Respondent has any such rights or interests. 

 

We begin by noting that there is no evidence in the record suggesting that Respondent is commonly known by the <wwdell.com> domain name. Moreover, Complainant asserts, and Respondent does not deny, that Respondent has no license from or other agreement with Complainant authorizing Respondent to use the DELL mark, while the pertinent WHOIS information identifies the registrant only as “N/A and Carl Lindberg.”  Thus we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”.

 

We also observe that Complainant asserts, without contradiction from Respondent, that Respondent’s <wwdell.com> domain name redirects Internet users to Complainant’s official website, which resolves from Complainant’s <dell.com> domain name, and that  Complainant’s affiliate program compensates other domain name holders who direct Internet users to Complainant’s website.  Complainant further contends, again without contradiction from Respondent, that Respondent is using the contested domain name to redirect Internet users to Complainant’s website and is thus attempting illicitly to profit from Complainant’s affiliate program.  This use of the contested domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) respectively.  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding that a the respondent had no rights to or legitimate interests in a domain name under Policy  4(a)(ii) where it used the domain to redirect users to a complainant’s <deluxeforms.com> domain name and to receive a commission from that complainant through its affiliate program); see also Sports Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003) (finding that registering a domain name which differs by one letter from a complainant’s commercial website, and using that domain name to redirect Internet consumers to that complainant’s website as a part of that complainant’s affiliate program is not a bona fide offering of goods or services or a noncommercial use of the domain name).

 

Additionally, typo-squatting occurs where a respondent purposefully includes common typographical errors in a domain name to divert Internet users who make those errors.  The <wwdell.com> domain name takes advantage of Internet users who omit the usual final “w” and the period after the “www” prefix at the beginning of a domain name.  Respondent is thus engaged in typo-squatting, which is further evidence that Respondent does not have rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where a respondent used the typo-squatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to a complaint); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that a respondent’s <wwwdinersclub.com> domain name, a typo-squatted version of a complainant’s DINERS CLUB mark, was evidence that that respondent lacked rights to or legitimate interests in a disputed domain name).

 

The Panel thus finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is attempting to profit by using a domain name that is confusingly similar to Complainant’s DELL mark, and that the disputed domain name resolves to Complainant’s website.  Respondent does not dispute any of these allegations.  Because Internet users could easily be confused as to the possibility of Complainant’s control of or affiliation with the disputed domain name, we conclude that  Respondent is attempting to profit from this likely confusion by leading Internet users to Complainant’s legitimate website and collecting referral fees in the process.  This is evidence of bad faith registration and use of the contested domain under Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding that a respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting Internet users to a complainant’s <deluxeforms.com> domain name, thus illicitly receiving a commission from that complainant through its affiliate program); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):

 

the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).

 

In addition, Respondent’s typo-squatting, as above-described, is evidence that Respondent registered and is using the <wwdell.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):

 

Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.

 

See also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).

 

For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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 <wwdell.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  December 7, 2009

 

 

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