Dell, Inc. v. Patrick McDonough
Claim Number: FA0910001291218
Complainant is Dell, Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com>, registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2009.
On October 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain names are 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 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@dellgaming.com, postmaster@dellvideogames.com, postmaster@dellvideogaming.com, and postmaster@dellconsole.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 James A. Carmody, Esq., 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 <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain names.
3. Respondent registered and used the <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain names 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, for which Complainant has multiple registrations with the Unites States Patent and Trademark Office (“USPTO”) (first registered on October 9, 1990, Reg. No. 1,616,571). 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, Patrick McDonough, registered the <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain names on February 14, 2007. The disputed domain names resolve to a website that features links to third-party websites, some of which belong to Complainant’s competitors.
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 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); 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).”).
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s DELL mark. Each disputed domain name differs from the DELL mark in two ways: (1) a generic term (“gaming,” “videogames,” “videogaming,” or “console”) 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 a disputed domain name from that mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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 a complainant’s mark. 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). Thus, the Panel determines that Respondent’s disputed domain names are 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 disputed domain names. 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 names. 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 disputed domain names, nor has it ever been the owner or licensee of the DELL mark. The WHOIS information for the disputed domain names lists Respondent as “Patrick McDonough.” Respondent fails to offer evidence showing Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and therefore has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); 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.”).
Complainant contends that Respondent is using the disputed domain names to operate a website that contains links to Complainant’s competitors in the computer business. The Panel finds that using a domain name incorporating a mark to promote the businesses of competitors of the mark’s owner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). The Panel therefore finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the disputed domain
names (initial registration for each domain name: February 14, 2007) to host a website advertising competitors of Complainant,
and that this diversion of Internet users to competing businesses is an
intentional disruption of Complainant’s business by Respondent. Consequently, Complainant contends that
Respondent’s actions are evidence of Respondent’s registration and use
of the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel
agrees with Complainant’s contentions and finds that Respondent’s competitive
use of the disputed domain names indicates that Respondent registered and is using
the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v.
Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the
respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also
Complainant also contends that Respondent is collecting
“click-through” fees from the companies to which Respondent is diverting
Internet users, and that these fees constitute commercial gain which is
evidence of Respondent bad faith registration and use of the disputed domain names pursuant
to Policy ¶ 4(b)(iv). The Panel agrees
and finds that Respondent’s commercial gain from its use of the disputed domain names is
evidence of its bad faith registration and use of the disputed domain names pursuant
to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA
536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel
infers that Respondent receives click-through fees for diverting Internet users
to a competing website. Because
Respondent’s domain name is identical to Complainant’s
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 <dellgaming.com>, <dellvideogames.com>, <dellvideogaming.com>, and <dellconsole.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 8, 2009
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