Dell, Inc. v. Dell Inc. / Dell Domain Administrative Contact
Claim Number: FA1108001404052
Complainant is Dell, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Dell Inc. / Dell Domain Administrative Contact (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dell-computers.net> and <dell-shop.net>, registered with Internet.bs Corp.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 23, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <dell-computers.net> and <dell-shop.net> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2011 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@dell-computers.net and postmaster@dell-shop.net. Also on August 29, 2011, 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 September 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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-computers.net> and <dell-shop.net> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dell-computers.net> and <dell-shop.net> domain names.
3. Respondent registered and used the <dell-computers.net> and <dell-shop.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell, Inc., uses its DELL mark in connection with the production, sale, and distribution of personal computers, laptops, monitors, carrying cases, software, and other accessories and supplies. Complainant owns multiple trademark registrations for the DELL mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,616,571 registered October 9, 1990;
Reg. No. 1,860,272 registered October 25, 1994;
Reg. No. 2,236,785 registered April 6, 1999;
Reg. No. 2,806,769 registered January 20, 2004;
Reg. No. 2,806,770 registered January 20, 2004; &
Reg. No. 3,215,023 registered March 6, 2007.
Respondent, Dell Inc. / Dell Domain Administrative Contract, registered the <dell-computers.net> and <dell-shop.net> domain names on June 10, 2011. The disputed domain names host a pay-per-click directory with links to various competing and unrelated websites.
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 owns multiple trademark registrations for the DELL mark with the USPTO:
Reg. No. 1,616,571 registered October 9, 1990;
Reg. No. 1,860,272 registered October 25, 1994;
Reg. No. 2,236,785 registered April 6, 1999;
Reg. No. 2,806,769 registered January 20, 2004;
Reg. No. 2,806,770 registered January 20, 2004; &
Reg. No. 3,215,023 registered March 6, 2007.
Panels, in cases such as Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), have consistently held that USPTO trademark registration indicates that a complainant has rights in a mark. In line with this precedent, the Panel here concludes that Complainant has demonstrated rights in the DELL mark sufficient to satisfy Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <dell-computers.net> and <dell-shop.net> domain names are confusingly similar to Complainant’s mark. After starting with Complainant’s mark, both disputed domain names add a hyphen, either the term “computers” or “shop” and the generic top-level domain (“gTLD”) “.net.” In Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), the panel found that the addition of a generic word like “buy” did not affect the confusingly similar nature of the disputed domain name. Similarly, in Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel held that added descriptive words did not distinguish a disputed domain name. Hyphens and gTLDs have also repeatedly been found insignificant and irrelevant to a Policy ¶ 4(a)(i) confusingly similar analysis, as seen in Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), and InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000). Accordingly, the Panel determines that Respondent’s <dell-computers.net> and <dell-shop.net> domain names are confusingly similar to Complainant’s DELL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to make a full determination whether Respondent owns any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names and does not operate a business or other organization under the DELL mark or disputed domain name. Although the WHOIS information seems to indicate that Respondent is commonly known by the disputed domain names by listing the registrant as “Dell Inc.,” there is no other evidence in the record supporting any nominal association between Respondent and the disputed domain names. The Panel determines that the WHOIS information alone, without other corroborating evidence, is insufficient to prove that Respondent is commonly known by the disputed domain names. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). As a result, the Panel holds that Respondent is not commonly known by the <dell-computers.net> and <dell-shop.net> domain names and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii).
Complainant contends that the disputed domain names resolve to directory websites featuring a collection of pay-per-click links, some of them advertising computer-related items that compete with Complainant and some of them advertising unrelated websites and goods. The Panel finds that Respondent’s use of the disputed domain names to host such pay-per-click links is not 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). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
Complainant does not allege competition or Policy ¶ 4(b)(iii) disruption of business, but it does argue that some of the links advertised on the resolving websites refer to Complainant’s competitors in the computer industry. The Panel finds that advertising competitors via pay-per-click links at the disputed domain names disrupts Complainant’s business and reveals bad faith registration and use 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent registered the <dell-computers.net> and <dell-shop.net> domain names to attract Internet users to the resolving website by capitalizing on the fame of Complainant’s mark. Complainant contends that the links featured on the resolving websites are pay-per-click links that generate revenue for Respondent. As increased traffic to the site correlates with increased revenue from the links, Respondent profits by using Complainant’s mark to attract Internet users and create a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s resolving website. The Panel finds these actions demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Complainant has proven 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 <dell-computers.net> and <dell-shop.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.) Panelist
Dated: September 22, 2011
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