Dell, Inc. v. lenawoo
Claim Number: FA0910001290067
Complainant is Dell, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is lenawoo (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAM
The domain name at issue is <dellstudent.com>, registered with Onlinenic, 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.
Sandra J. Franklin as Panelist.
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 20, 2009.
On October 21, 2009, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellstudent.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 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@dellstudent.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 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dellstudent.com> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellstudent.com> domain name.
3. Respondent registered and used the <dellstudent.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell, Inc., is a manufacturer of personal computers and computer equipment and accessories. Complainant promotes its products under the DELL mark, which Complainant first registered with the Unites States Patent and Trademark Office (“USPTO”) on October 9, 1990 (Reg. No. 1,616,571) for use in selling computers and computer peripherals, and has since registered for other uses as well. Complainant has used the DELL mark continuously in commerce since at least as early as 1987, and now sells its products in over 80 countries and has over ten billion dollars in revenue every year.
Respondent, lenawoo, registered the <dellstudent.com> domain name February 27, 2008. The disputed domain name does not resolve to an active website, but only returns an error message.
Respondent has been named as the respondent in three previous UDRP disputes, all of which resulted in the transferral of the disputed domain names. See Chocoladefabriken Lindt & Sprüngli AG v. Lenawoo, D2009-0382 (WIPO May 14, 2009); Lacoste S.A. v. Lenawoo, FA 1249698 (Nat. Arb. Forum Apr. 21, 2009); and Carnegie Hall Corp. v. lenawoo, FA 1244117 (Nat. Arb. Forum Apr. 6, 2009).
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.
The Panel finds that Complainant has established rights in the DELL mark under Policy ¶ 4(a)(i) through its numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571 issued October 9, 1990). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s <dellstudent.com> domain name is confusingly similar to Complainant’s DELL mark. The disputed domain name differs from the DELL mark in two ways: (1) the generic term “student” has been added to the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added to the mark. The Panel finds that the addition of a generic term to a complainant’s mark fails to adequately distinguish the disputed domain name from a complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). The Panel also finds that the addition of a gTLD fails to sufficiently distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel determines Respondent’s <dellstudent.com> domain name is confusingly similar to Complainant’s DELL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <dellstudent.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that, in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights 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.”); 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”). Nonetheless, the Panel will examine the record for compliance with the Policy.
Complainant contends that Respondent is not commonly known by the <dellstudent.com> domain name, nor has it ever been the owner or licensee of the DELL mark. The WHOIS information for the disputed domain name lists Respondent as “lenawoo.” Respondent fails to offer evidence showing Respondent is commonly known by the <dellstudent.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <dellstudent.com> domain name and therefore has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <dellstudent.com> domain name resolves to a website which merely features an error message. Complainant contends, and the Panel agrees, that Respondent has failed to make an active use of the disputed domain name. The Panel therefore finds that Respondent’s failure to make an active use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent frequently engages in cybersquatting, as shown by other UDRP proceedings wherein the disputed domain names were transferred from Respondent to the respective complainants in those cases. See Chocoladefabriken Lindt & Sprüngli AG v. Lenawoo, D2009-0382 (WIPO May 14, 2009); Lacoste S.A. v. Lenawoo, FA 1249698 (Nat. Arb. Forum Apr. 21, 2009); and Carnegie Hall Corp. v. lenawoo, FA 1244117 (Nat. Arb. Forum Apr. 6, 2009). The Panel consequently finds the Respondent to be engaged in a pattern of bad faith registration and use, and that the Respondent registered and is using the <dellstudent.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent’s disputed domain name resolves to a website which only lists an error message. Complainant contends that Respondent registered the disputed domain name on February 27, 2008 and has since failed to make an active use of the disputed domain name. The Panel finds that Respondent’s failure to make an active use constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that failure to make active use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds 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 <dellstudent.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 8, 2009
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