Dell Inc. v. replacement-batteries c/o nike lucky
Claim Number: FA1304001492613
Complainant is Dell Inc. (“Complainant”), represented by Tyson D. Smith of Pirkey Barber PLLC, Texas, USA. Respondent is replacement-batteries c/o nike lucky (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accessory-dell-laptop.com>, registered with FastDomain Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2013; the National Arbitration Forum received payment on April 2, 2013.
On April 3, 2013, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <accessory-dell-laptop.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the names. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2013 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@accessory-dell-laptop.com. Also on April 3, 2013, 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 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
i. Respondent is not commonly known by the domain name at issue.
ii. Respondent is using the domain name for a website offering and promoting products that Respondent represents are genuine DELL products, but which in fact are not genuine DELL products.
i. The disputed domain name is used for a website offering products that compete directly with products offered by Complainant.
ii. Respondent is using the domain name <accessory-dell-laptop.com> for a website offering non-genuine DELL products that Respondent represents are genuine DELL products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DELL marks.
Complainant is Dell Inc., who list its address as Round Rock, TX, USA. Complainant is known throughout the world for its sale of computer-related products and services. Complainant owns a number of USA trademark registrations for the word DELL and associated marks, as well as trademark registrations in numerous jurisdictions around the world.
Respondent is replacement-batteries c/o nike lucky, who list its address as ShenZhen, China. Respondent’s registrar’s address is listed as Provo, UT, USA. Respondent registered the <accessory-dell-laptop.com> domain name on February 7, 2013.
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.”).
Complainant, Dell Inc., contends that it is a world leader in computers, computer accessories, and other computer-related products and services. Complainant asserts that it has been the world’s largest direct seller of computer systems. Complainant argues that it is the owner of trademark registrations with the USPTO for the DELL mark (e.g., Reg. No. 1,860,272, registered October 25, 1994). See Complainant’s Exhibit B. The Panel notes that although Respondent appears to reside in China, the Panel finds that it is irrelevant whether Complainant has registered its trademark in the country of Respondent’s residence under Policy ¶4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant’s registration of the DELL mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <accessory-dell-laptop.com> domain name is confusingly similar to Complainant’s DELL marks as the domain name incorporates the famous mark DELL in its entirety, merely tacking on the words “accessory” and “laptop.” Complainant asserts that the terms “accessory” and “laptop” are highly likely to be associated with Complainant and its goods and services. The Panel finds that the addition of descriptive terms does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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”). The Panel also notes that Respondent adds hyphens to the disputed domain name. The Panel finds that Respondent’s addition of hyphens to the disputed domain name is irrelevant to a confusingly similar analysis under Policy ¶ 4(a)(i). See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel further notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The Panel finds that the addition of a gTLD does not negate confusing similarity under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s <accessory-dell-laptop.com> domain name is confusingly similar to Complainant’s DELL marks pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the domain name at issue. The Panel notes that the WHOIS information lists “replacement-batteries c/o nike lucky” as the registrant of the disputed domain name. Complainant claims that it has not licensed or otherwise permitted Respondent to use its DELL marks, or any other mark owned by Complainant. The Panel notes that Respondent does not provide additional evidence that it is known by the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant argues that Respondent is using the domain for a website offering and promoting products that Respondent represents are genuine DELL products, but which in fact are not genuine DELL products. Complainant claims that Respondent’s website purports to be a “Dell Laptop Batteries Store.” Complainant asserts that the home page of Respondent’s site features the caption “Dell Laptop NoteBook Batteries” and the top of the page promotes replacement laptop batteries it represents as DELL products. Complainant argues that Respondent claims to be a “distributor specializing in DELL laptop batteries.” Complainant asserts that Respondent’s website offering AC adapters prominently displays the words “Dell Laptop NoteBook AC Adapter,” along with the text “We supply a complete line of Dell AC power adapter for your Dell laptop notebook. All Dell AC adaptors are brand new and high quality, you can feel free to purchase!” Complainant claims that the products offered on Respondent’s website are not genuine DELL products. See Complainant’s Exhibit C. The Panel finds that Respondent’s use of the disputed domain name to sell counterfeit DELL products is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
The Panel finds that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that the disputed domain name is used for a website offering products that compete directly with products offered by Complainant. Complainant asserts that Respondent is using the domain name for a website offering non-genuine DELL products for sale that Respondent represents are genuine DELL products. See Complainant’s Exhibit C. The Panel finds that Respondent’s use of the website to offer counterfeit products disrupts Complainant’s business under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant asserts that Respondent is using the domain name <accessory-dell-laptop.com> for a website offering non-genuine DELL products that Respondent represents are genuine DELL products, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s DELL marks. Complainant claims that the products offered on Respondent’s website are not genuine DELL products. See Complainant’s Exhibit C. The Panel finds that any attempt by Respondent to sell non-genuine or counterfeit products by using the disputed domain name evidences bad faith use and registration under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <accessory-dell-laptop.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 6, 2013
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