Dell Inc. v. None / IS Purchasing
Claim Number: FA1204001438778
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith, Texas, USA. Respondent is None / IS Purchasing (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellpartsnmore.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2012; the National Arbitration Forum received payment on April 11, 2012.
On April 11, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <dellpartsnmore.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 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@dellpartsnmore.com. Also on April 16, 2012, 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 May 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant Dell Inc. is a world leader in computers, computer parts, and other 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.
Complainant has registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272 registered October 25, 1994).
Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s domain name resolves to a website offering DELL parts for sale and at that site Respondent uses sharp practices in dealing with its customers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in its DELL mark at all times relevant to this proceeding. Respondent’s <dellpartsnmore.com> domain name is confusingly similar to Complainant’s trademark.
Respondent registered the at-issue <dellpartsnmore.com> domain name on on March 26, 2011.
Respondent had, and has, no authority to use Complainant’s trademark in any manner whatsoever.
The website referenced by the at-issue domain name resolves to an unauthorized website offering DELL parts for sale.
Respondent is unauthorized to sell parts under the DELL trademark and despicably uses an array of sharp and/or deceptive trade practices in dealing with its customers.
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:
(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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
As evidenced by on the record by multiple DELL related certificates of registration for the DELL mark, Complainant has established its rights in DELL by registering it as a trademark with the USPTO (e.g., Reg. No. 1,860,272 registered October 25, 1994). Therefore, the Panel concludes that Complainant has established its rights in the DELL mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <dellpartsnmore.com> domain name is confusingly similar to Complainant’s DELL mark. The disputed domain name includes the entire mark, while adding the terms “parts,” the letter “n” and the word “more” along with the generic top-level domain (“gTLD”) “.com.” These modifications to Complainant’s trademark are insufficient to distinguish the mark from the at-issue domain name, thus under Policy ¶ 4(a)(i) Respondent’s domain name is confusingly similar to Complainant’s DELL mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also Wells Fargo Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14, 2006) (finding the addition of the term “your” to the WELLS FARGO mark in the <yourwellsfargomortgage.com> domain name to be insufficient to distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”)
Respondent lacks rights or interests in respect of the <dellpartsnmore.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name (or each of them where more than one domain is at‑issue) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
Respondent is not commonly known by the disputed domain name; Respondent has not submitted any evidence or argument to contradict Complainant’s assertion that it is not known by the at-issue domain name. Additionally, WHOIS information identifies the registrant of the disputed domain name as “None / IS Purchasing” which does not reflect the name of the at-issue domain name. Therefore, Respondent lacks rights and interests in respect of the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).
Moreover, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The at-issue domain name resolves to a website offering Complainant’s parts for sale when Respondent is not authorized to use Complainant’s mark or sell its goods. Such a foul use naturally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Therefore the Panel conclude that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Respondent is using the disputed domain name in a manner that likely confuses Internet users into believing Respondent’s website is affiliated with Complainant. The at-issue domain name resolves to a website offering Complainant Dell’s computer parts for sale. There Respondent charges individuals that make purchases from its <dellpartsnmore.com> website exorbitant amounts to ship the goods to the purchaser and uses deceptive trade practices to conceal charges from the purchaser until after he or she has placed his or her order. This type of unfair dealing disparages Complainant’s associated trademark. But even if the Respondent dealt fairly with its customers the fact that it uses Complainant’s well-known mark without permission is sufficient to determine Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellpartsnmore.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 10, 2012
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