Dell Inc. v. DomainJet,Inc. a/k/a DomainJet,Inc.
Claim Number: FA1112001419546
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is DomainJet,Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellboomi.com> and <dellpowerconnect.com>, registered with GoDaddy.com, Inc.
The domain name at issue is <delleducationservices.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2011; the National Arbitration Forum received payment on December 13, 2011.
On December 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellboomi.com> and <dellpowerconnect.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 December 13, 2011, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <delleducationservices.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 December 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2012 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@dellboomi.com, postmaster@dellpowerconnect.com, and postmaster@delleducationservices.com. Also on December 19, 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 January 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names.
3. Respondent registered and used the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., designs, markets, and sells computers and computer-related products and services, including education services, under its DELL mark. Complainant holds 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). Complainant acquired Boomi Inc. on November 2, 2010 and offers on-demand integration under its Boomi Inc. subsidiary. Complainant also holds a trademark registration with the USPTO for its POWERCONNECT mark (Reg. No. 2,731,999 registered July 1, 2003), which it uses for a line of network switches.
Respondent, DomainJet,Inc., registered the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names no earlier than August 8, 2010. The disputed domain names resolve to websites that contain hyperlinks labeled with Complainant’s marks that resolve to unrelated third-party websites. Respondent offers the <dellboomi.com> domain name for sale on an auction website.
Respondent was a respondent in previous UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Morgan Stanley v. DomainJet, Inc., FA 1362846 (Nat. Arb. Forum Jan. 10, 2011); see also Missoni S.p.A v. DomainJet, Inc., D2011-1058 (WIPO Aug. 18, 2011); see also Marimekko Oyj v. DomainJet, Inc., D2010-1910 (WIPO Dec. 30, 2010).
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The first requirement for the Panel is to determine if Complainant owns rights in the DELL mark. To prove it owns rights in the mark, Complainant provides a copy of its trademark registrations for the DELL mark with the USPTO (e.g., Reg. No. 2,236,785 registered April 6, 1999). Complainant also includes its USPTO trademark registration certificate for its POWERCONNECT mark (Reg. No. 2,731,999 registered July 1, 2003). Based on this evidence, the Panel concludes that Complainant satisfies this first requirement and owns rights in the DELL and POWERCONNECT marks pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second requirement for the Panel is to analyze whether or not the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names are identical or confusingly similar to Complainant’s DELL mark. The <dellboomi.com> domain name contains Complainant’s entire DELL mark and only adds the descriptive term “boomi” and the generic top-level domain (“gTLD”) “.com.” In the <dellpowerconnect.com> domain name, Respondent combines Complainant’s DELL mark with another of its marks, POWERCONNECT, and adds the gTLD “.com.” Respondent’s <delleducationservices.com> domain name adds the descriptive terms “education” and “services” to Complainant’s DELL mark, as well as the gTLD “.com.” The Panel determines that the addition of descriptive terms fails to adequately distinguish a disputed domain name from a complainant’s mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel also finds that the combination of two of Complainant’s marks does not remove a disputed domain name from the realm of confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Finally, the Panel concludes that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because the a top-level domain is required in a domain name. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds that Respondent’s <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names are confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i).
The Panel determines that the requirements of Policy ¶ 4(a)(i) have been satisfied.
Complainant alleged that Respondent does not have any rights or legitimate interests in any of the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names. The burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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 [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant has made a prima facie case. A respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain names. See 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The Panel must first examine if Respondent is commonly known by the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names. Neither Complainant nor Respondent presents any evidence or arguments as to this element. The Panel examines the record and determines that the WHOIS information, which lists “DomainJet,Inc.” as the registrant of the disputed domain names, shows that Respondent is not commonly known by the disputed domain names. Therefore, the Panel determines that Respondent is not commonly known by the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel next examines whether Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names resolve to websites that host hyperlinks with titles such as “Dell Cloud Computing,” “Dell laptop battery,” and “Dell laptops for $189.” While it may appear that the hyperlinks relate to Complainant, the hyperlinks resolve to unrelated websites. Therefore, the Panel finds that Respondent’s hosting of unrelated hyperlinks is proof that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Additionally, the Panel examines Complainant’s claim that Respondent lists the <dellboomi.com> domain name on an auction website. Complainant provides a copy of the WHOIS record that states, “Dellboomi.com is for sale. The owner of the domain you are researching has it listed for sale.” This general offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the <dellboomi.com> domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Under Policy ¶ 4(b)(i), Complainant only presents arguments relating to the <dellboomi.com> domain name. As noted above, Complainant provides evidence that Respondent lists the disputed domain name for sale on an auction website. The Panel concludes that this general offer to sell the <dellboomi.com> domain name is sufficient evidence that Respondent registered and uses the <dellboomi.com> domain name in bad faith according to Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Under Policy ¶ 4(b)(ii), Complainant claims that Respondent has been a respondent in previous UDRP proceedings in which Respondent was ordered to transfer the disputed domain names to the respective complainants. See Morgan Stanley v. DomainJet, Inc., FA 1362846 (Nat. Arb. Forum Jan. 10, 2011); see also Missoni S.p.A v. DomainJet, Inc., D2011-1058 (WIPO Aug. 18, 2011); see also Marimekko Oyj v. DomainJet, Inc., D2010-1910 (WIPO Dec. 30, 2010). The Panel determines that these prior UDRP proceedings indicate that Respondent registered and uses the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names as a part of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based on the prior UDRP decisions involving Respondent. See 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); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Under Policy ¶ 4(b)(iv), Complainant alleges that Respondent receives a commission or fee each time an Internet user clicks on one of the hyperlinks. The Panel determines that Respondent’s registration and use of the confusingly similar disputed domain names for the purpose of receiving commissions or fees is evidence that Respondent is attempting to create, and profit from, a likelihood of confusion as to Complainant’s affiliation with the disputed domain names. Therefore, the Panel finds that Respondent registered and uses the <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names in bad faith for the purposes of Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (concluding 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); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel determines that 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 <dellboomi.com>, <dellpowerconnect.com>, and <delleducationservices.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 2, 2012
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