Dell, Inc. v. Registrant Registrant
Claim Number: FA1005001325183
Complainant is Dell, Inc. (“Complainant”), represented
by Steven M. Levy,
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <dellfinacial.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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
17, 2010.
On May
19, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National
Arbitration Forum that the <dellfinacial.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 June 3, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of June 23, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@dellfinacial.com. Also
on June 3, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response, was transmitted to
Respondent via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
Having
received no response from Respondent, the National Arbitration Forum transmitted
to the parties a Notification of Respondent Default.
On June
28, 2010, 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" through
submission of a Written Notice, as defined in Rule 1. 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 <dellfinacial.com>
domain name is confusingly similar to Complainant’s DELL mark.
2.
Respondent does
not have any rights or legitimate interests in the <dellfinacial.com>
domain name.
3.
Respondent
registered and used the <dellfinacial.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Dell, Inc., has registered its DELL mark with the
United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Reg. Date
DELL 1616571 09-Oct-1990
DELL (Logo) 1860272 25-Oct-1994
DELL 2236785 06-Apr-1999
DELL 2806769 20-Jan- 2004
DELL 2806770 20-Jan- 2004
DELL (Logo) 3215023 06-Mar-2007
Complainant uses the mark in
connection with production and sale of personal computers, laptops, and other computer
components and accessories in the
Respondent registered the <dellfinacial.com>
domain name on March 4, 2003. The
disputed domain name resolves to a website displaying hyperlinks to
Complainant’s website and to third-party websites that include 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.
Complainant asserts it has
rights in its DELL mark due to its registration with the USPTO:
Mark Reg. No. Reg. Date
DELL 1616571 09-Oct-1990
DELL (Logo) 1860272 25-Oct-1994
DELL 2236785 06-Apr-1999
DELL 2806769 20-Jan- 2004
DELL 2806770 20-Jan- 2004
DELL (Logo) 3215023 06-Mar-2007
The Panel finds that Complainant’s
registrations of its DELL mark with the USPTO is sufficient to establish
Complainant’s rights in the mark dating back to October 9, 1990 pursuant to
Policy ¶ 4(a)(i). See UnitedHealth Group
Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no
difficulty” in holding that the complainant had established rights in its
asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO); see also Disney
Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding
that the complainant’s registration of the DISNEY trademark with the USPTO
prior to the respondent’s registration of the disputed domain name is
sufficient to prove that the complainant has rights in the mark pursuant to
Policy ¶ 4(a)(i)).
Complainant contends that
Respondent’s <dellfinacial.com> domain name is confusingly similar
to Complainant’s DELL mark and its financing service related to the mark. Complainant argues that the disputed domain
name simply adds a misspelled version of a descriptive term related to
Complainant’s business (“finacial”) and a generic top-level domain (“gTLD”)
(“.com”) to Complainant’s mark. The
Panel finds that the addition of a descriptive term and a gTLD is insufficient
to render the disputed domain name distinguished from the registered
trademark. See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075
(WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly
similar to the complainant's mark since it merely adds the word “auction” used
in its generic sense); see also Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business); see
also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb.
Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and
the gTLD “.com” did not sufficiently alter the disputed domain name to negate a
finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”). Therefore the Panel
finds Respondent’s <dellfinacial.com> domain name is confusingly
similar to Complainant’s DELL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that
Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant alleges that
Respondent has no rights and legitimate interests in the disputed domain name.
The burden to establish that Respondent has rights or legitimate interests in
the disputed domain name shifts to the Respondent once Complainant has made a prima facie case in support of allegations
to the contrary, pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has
established a prima facie case,
shifting the burden to the Respondent. In light of Respondent’s failure to
respond to the proceedings, the Panel will proceed to analyze the record in
light of Policy ¶ 4(c). See Swedish Match
UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007)
(finding that once a prima facie case has been established by the complainant,
the burden then shifts to the respondent to demonstrate its rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
The WHOIS information for the
<dellfinacial.com> domain name does not indicate that Respondent
is commonly known by the disputed domain name.
Complainant asserts that it has not provided license or authorization to
Respondent for use of the mark. The
Panel finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy
¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum
Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s
WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that
Respondent was not ‘commonly known by’ any of the disputed domain names prior
to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”); see also Xerox Corp.
v. Anti-Globalization Domains, FA
210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent
to demonstrate that it had rights or legitimate interests in the domain name
given Complainant's long and substantial use of its unique and famous XEROX
mark.”).
Complainant alleges that
Respondent is not using the disputed domain name for a bona fide offering of goods or services when the website resolving
from the disputed domain name displays links to third-party websites of
Complainant’s competitors. Complainant
further alleges that Respondent is not using the disputed domain name for a
legitimate noncommercial or fair use when Respodent likely recieves referral
fees from the third-parties whose links are displayed on the website resolving
from the disputed domain name. The Panel
finds that Respondent’s use of the disputed domain name to display links to
Complainant, to third-party websites unrelated to Complianant, and to third-party
websites in competition with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Metro.
Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(concluding that using a confusingly similar domain name to divert Internet
users to competing websites does not represent 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 Persohn v.
Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent
was not using a disputed domain name in connection with a bona fide offering of
goods or services or a legitimate noncommercial or fair use by redirecting
Internet users to a commercial search engine website with links to multiple
websites that may be of interest to the complainant’s customers and presumably
earning “click-through fees” in the process).
The Panel finds that
Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Respondent’s disputed domain
name resolves to a website that displays links to third-party competitors of
Complainant. The Panel finds Respondent’s
registration and use of the <dellfinacial.com> domain name to
offer links to third-party websites that compete with Complainant in the
computer services industry constitutes a disruption of Complainant’s business
and qualifies as bad faith registration and use pursuant to Policy ¶
4(b)(iii). See David Hall Rare Coins v.
Complainant asserts that
Internet users, searching for Complainant’s goods and services, will be
confused as to Complainant’s sponsorship or affiliation with the disputed
domain name when it resolves to a website displaying hyperlinks to
Complainant’s website and to third-party websites that include Complainant’s
competitors. Complainant alleges that
Respondent profits from this confusion through its presumed receipt of
click-through fees by linking to third-party websites. The Panel agrees and finds Respondent’s use
of the <dellfinacial.com> domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds that
Complainant has satisfied the elements of 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 <dellfinacial.com> domain name be TRANSFERRED from
Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 1,
2010
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