Dell Inc. v. Patricia Gil
Claim Number: FA1109001407789
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Patricia Gil (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellcomputercloud.com>, registered with GoDaddy.com, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received payment on September 19, 2011.
On September 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellcomputercloud.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 disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@dellcomputercloud.com. Also on September 21, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers and computer-related products and services. Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. Dell has used television, radio, magazines, newspapers, and the Internet as marketing media. Dell has been, and continues to be, extremely successful. Dell sells its products and services in over 80 countries. For several years, Dell has been the world’s largest direct seller of computer systems. As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and in many other countries.
A significant aspect of Dell’s business involves the concept of “cloud computing.” Cloud computing delivers information technology as a service, and may involve a private cloud for Dell’s customers accessible only within their organization, or the public cloud of an external provider, or both. Cloud computing features virtually unlimited processing and storage capacity, pooled resources, elasticity (the ability to scale up or down easily), on-demand, self-service provisioning, high level of automation, and consumption-based billing. For more information about “cloud computing” and related offerings by Dell, see www.dellcloud.com or http://content.dell.com/us/en/enterprise/cloud-computing.aspx?c=us&cs=555&l=en&s=biz#!.
ii. Dell’s Marks and Registrations
Complainant has used the famous mark DELL, as well as various other marks that include the word DELL (the “DELL Marks”), for many years for computers, and computer-related products and services, among other things. Dell owns a number of trademark registrations for the DELL Marks, including U.S. Reg. Nos. 2,236,785, 2,794,705, 2,817,366, and 2,808,852.
This Complaint is based on the following factual and legal grounds:
a. The disputed domain name is identical or confusingly similar to the DELL Marks. Indeed, the domain name dellcomputercloud.com incorporates Complainant’s famous DELL mark in its entirety, merely tacking on the terms “computer” and “cloud,” which consumers are highly likely to associate with Dell and its products and services. Moreover, Dell is the owner of the very similar domain names dell.com and dellcloud.com.
b. Respondent has no rights or legitimate interests in the domain name.
i. Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Rather, the domain name is used in connection with a website which states, “Dell Computer Cloud: where information flies free…” and provides a contact email address.
Dell’s attorneys sent Respondent a cease-and-desist letter on August 12, 2011. A man named Asher Gil, identifying himself as the Respondent’s husband, left a voicemail for Dell’s attorneys, and also sent an email on August 16, 2011, stating “We fully understand your position and are willing to relinquish our rights to the domain name dellcomputercloud.com for a reasonable compensation.” On August 19, 2011, Complainant’s attorneys responded by email and agreed to pay the Respondent’s out-of-pocket registration expenses. August 21, 2011, Respondent sent a further email to Complaint’s attorney stating in part, “WHEN WE TALK ABOUT REASONABLE COMPENSATION WE MEAN REASONABLE. THE VALUE TO DELL AT THIS POINT OF TIME WHEN DELL IS BECOMING HEAVILY INVOLVED IN ‘CLOUD’ CONCEPT IS MORE THAN JUST A HANDLING FEE” and demanded compensation of $2,500 for the domain name.
ii. Respondent is not commonly known by the domain name at issue.
iii. Respondent is not making a legitimate noncommercial or fair use of the domain name.
c. Respondent registered and is using the domain name in bad faith.
i. Respondent’s offer to sell the domain name to Dell in an amount in excess of its out-of-pocket expenses supports a finding of bad faith under the Policy. UDRP Policy ¶4(b)(i).
ii. Respondent’s August 21 email acknowledges that Respondent intended the domain name to be a reference to Dell and its services, and understood that the domain name would have value to Dell given the importance of cloud computing to its business.
iii. Respondent’s bad faith is also evidenced by the fact that it owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates nearly exactly the famous DELL mark. See 15 U.S.C. §1125(d)(1)(B)(i).
B. Respondent failed to submit a Response in this proceeding.
Complainant Dell Inc. designs, produces, markets, and sells computers and computer-related products and services under its DELL mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its DELL mark (e.g., Reg. No. 2,236,785 registered April 6, 1999).
Respondent Patricia Gil registered the <dellcomputercloud.com> domain name on May 8, 2011. The disputed domain name resolves to a picture of clouds, the heading “Dell Computer Cloud,” and a hyperlink to an e-mail address entitled “Info.” Respondent has offered to sell the disputed domain name to Complainant for $2,500.
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 Complainant must prove each of the following three elements to obtain an order a domain name 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 Complainant has established Policy ¶4(a)(i) rights in the mark because Complainant owns multiple trademark registrations with the USPTO for its DELL mark (e.g., Reg. No. 2,236,785 registered April 6, 1999). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also 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).
Respondent’s <dellcomputercloud.com> domain name only combines Complainant’s DELL mark with two descriptive terms “computer” and “cloud” and the generic top-level domain (“gTLD”) “.com”. The Panel finds Respondent’s <dellcomputercloud.com> domain name is confusingly similar to Complainant’s DELL mark under Policy ¶4(a)(i), especially since the descriptive words relate to Complainant’s business. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶4(a)(i) is satisfied); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel holds Policy ¶4(a)(i) is satisfied.
Complainant claims Respondent lacks rights and legitimate interests in the <dellcomputercloud.com> domain name. Previous panels have found when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove it has rights or legitimate interests in the domain name pursuant to Policy ¶4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the <dellcomputercloud.com> domain name. Out of an abundance of caution, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The WHOIS information identifies the registrant of <dellcomputercloud.com> as “Patricia Gil” and the Panel finds no evidence in the record Respondent is commonly known by the disputed domain name. The Panel concludes Respondent is not commonly known by the <dellcomputercloud.com> domain name pursuant to Policy ¶4(c)(ii). See 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.”); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant sent Respondent a cease-and-desist letter on August 12, 2011 and a man (identified as Respondent’s husband) left a message with Complainant and sent an e-mail to Complainant stating, “We fully understand your position and are willing to relinquish our rights to the domain name [<dellcomputercloud.com>] for a reasonable compensation.” Complainant responded by e-mail and agreed to pay Respondent the out-of-pocket registration expenses. Respondent sent an e-mail to Complainant in response on August 21, 2011 stating, “WHEN WE TALK ABOUT REASONABLE COMPENSATION WE MEAN REASONABLE. THE VALUE TO DELL AT THIS POINT OF TIME WHEN DELL IS BECOMING HEAVILY INVOLVED IN ‘CLOUD’ CONCEPT IS MORE THAN JUST A HANDLING FEE” and Respondent asked for $2,500 for the disputed domain name. The Panel determines that, based on this e-mail chain, Respondent has attempted to sell the disputed domain name for more than Respondent’s out-of-pocket costs. As Respondent has attempted to sell the disputed domain name for such an amount, the Panel holds Respondent is not making a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel holds Policy ¶4(a)(ii) is satisfied.
The Panel concludes Respondent registered and uses the <dellcomputercloud.com> domain name in bad faith pursuant to Policy ¶4(b)(i) because Respondent has attempted to sell the disputed domain name to Complainant for more than Respondent’s out-of-pocket costs,. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
The Panel holds Policy ¶4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <dellcomputercloud.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 25, 2011
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