Dell Inc. v. Private Whois delldesktopdeals.com c/o delldesktopdeals.com
Claim Number: FA1203001437046
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Private Whois delldesktopdeals.com c/o delldesktopdeals.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delldesktopdeals.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2012; the National Arbitration Forum received payment on March 29, 2012.
On March 30, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <delldesktopdeals.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. 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 April 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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@delldesktopdeals.com. Also on April 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 April 30, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant sells computers and computer-related products and services under its DELL service mark.
Complainant owns registrations of the DELL service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,236,785, registered April 6, 1999).
The <delldesktopdeals.com> domain name is confusingly similar to Complain-ant’s DELL mark.
Respondent uses the disputed domain name to resolve to a website that con-tains news articles provided automatically by an RSS feed based on Complain-ant’s DELL mark.
Respondent is presumably paid a fee or commission when Internet users access the resolving website.
Respondent has not been commonly known by the <delldesktopdeals.com> domain name.
Respondent owns no trademark or other property rights in the domain name.
Respondent has not used, nor made any demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent attempts in bad faith to attract Internet users to the resolving web-site, for its commercial gain, by creating a likelihood of confusion among such users with respect to Complainant’s mark and the possibility of Complainant’s association with the disputed domain name and the resolving website.
Respondent registered and uses the <delldesktopdeals.com> domain name as part of a pattern of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in its DELL trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), both panels con-cluding that, for purposes of Policy ¶ 4(a)(i), a USPTO trademark registration sufficiently demonstrates a complainant’s rights in a mark.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent re-sides or does business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a complainant has registered its trademark in the country of a respondent’s res-idence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter, for purposes of the Policy, whether a complainant has registered its trademark in a country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s <delldesktopdeals.com> domain name is confusingly similar to Complainant’s DELL service mark. The domain name merely adds the generic terms “desktop” and “deals” to Complainant’s mark (which terms relate to an aspect of Complainant’s business, the marketing of desktop computers), and the generic top-level domain (“gTLD”) “.com.” These alterations of the DELL mark, made in forming the disputed domain name, are not sufficient to distinguish the domain name from the mark under the standards of the Policy. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), and Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), both panels concluding that the addition of a generic or descriptive term to the mark of another in creating a domain name failed to distinguish the domain name from a complainant’s mark.
Similarly, the addition of the generic top-level domain (“gTLD”) “.com.” is of no consequence to a Policy ¶ 4(a)(i) analysis because a gTLD is required of every domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), both panels determining that the addition of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis because top-level domains are a required element in all domain names.
Therefore, the Panel finds that Respondent’s <delldesktopdeals.com> domain name is confusingly similar to Complainant’s DELL service mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it has such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the <delldesktopdeals.com> domain name, and that Respondent owns no trademark or other property rights in the domain name. Moreover, although the pertinent WHOIS information ident-ifies the registrant of the <delldesktopdeals.com> domain name as “Private Whois delldesktopdeals.com c/o delldesktopdeals.com,” there is no evidence in the record to indicate that Respondent was commonly known by the domain name prior to the registration of the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name prior to the registration of the domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the meaning of Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), and City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004), each of the panels concluding that the relevant WHOIS information alone was not sufficient to demonstrate that a respondent was commonly known by a disputed domain name for purposes of Policy ¶ 4(c)(ii), it being necessary that a respondent present evidence of being commonly known by the disputed domain name prior to a domain name’s registration.
We next observe that Complainant contends, without objection from Respondent, that Respondent uses the website resolving from the <delldesktopdeals.com> domain name to host news stories from an RSS feed based on the terms “Dell” and “Deal,” and that Respondent benefits commercially from the operation of that website. This is not a use in connection with a bona fide offering of goods or ser-vices under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the dis-puted domain name pursuant to Policy ¶ 4(c)(iii). See Monografias.com SA v. Lozikov, D2008-0140 (WIPO May 28, 2008), the panel there determining that a respondent lacked rights to and legitimate interests in a disputed domain name because that respondent used the domain name to operate an RSS aggregation website. Similarly, in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), a panel held that the hosting of pay-per-click hyperlinks is not evidence of a bona fide offering of goods or services or a legitimate noncom-mercial or fair use of a domain name which is confusingly similar to the mark of another.
We conclude therefore, that Respondent has not shown that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) in that Respondent’s use of the <delldesktopdeals.com> domain name, as alleged in the Complaint, does not constitute either 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).
It is evident from the record that Respondent attempts to attract Internet users, for its commercial gain, to the website resolving from the contested domain name <delldesktopdeals.com> by creating confusion among such users as to the pos-sibility of Complainant’s association with that resolving website. This stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Skechers U.S.A., Inc. v. Lyttle, FA 1311146 (Nat. Arb. Forum Apr. 20, 2010), the panel there finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv), where a respondent employed a website resolving from a domain name which was confusingly similar to the mark of another, to host articles from an RSS feed.
For this reason, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <delldesktopdeals.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 3, 2012
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