Dell Inc. v. liu wei
Claim Number: FA1304001495189
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is liu wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptopcharger.com>, registered with GoDaddy.com, LLC.
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 April 17, 2013; the National Arbitration Forum received payment on April 17, 2013.
On April 18, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <delllaptopcharger.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@delllaptopcharger.com. Also on April 19, 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 20, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not, and never has been, authorized by Complainant to use its DELL marks or to offer its products or services.
ii. Respondent’s domain name is used for a website that displays the DELL mark and purports to sell DELL computer products to consumers, but the prices for such goods reflect that the products are counterfeit. Respondent is attempting to gather Internet users’ personal information at the “Contact Us” and “Checkout” sections of Respondent’s website.
i. Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names.
ii. By using the domain name for a website displaying the DELL marks and images of Complainant’s products, and claiming to offer DELL products when it is not, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a world leader in computers, computer parts, and other computer-related products and services. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DELL mark (e.g., Reg. No. 1,860,272, registered October 25, 1994).
Respondent, liu wei, registered the <delllaptopcharger.com> domain name on January 22, 2013. Respondent’s domain name is used for a website that displays the DELL mark and purports to sell DELL computer products to consumers, but the products appear to be counterfeit.
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 Panel finds that Complainant’s registration of the DELL mark with the USPTO sufficiently shows its rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s DELL mark as the domain name incorporates the famous mark DELL in its entirety, and merely tacks on the generic words “laptop” and “charger.” Respondent’s addition of generic terms does not eliminate confusing similarity pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Respondent’s addition of a gTLD is irrelevant to a confusingly similar Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <delllaptopcharger.com> domain name is confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i).
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).
Complainant contends that Respondent is not, and never has been, authorized by Complainant to use its DELL marks or to offer its products or services. The WHOIS information for the disputed domain name identifies “liu wei” as the registrant. As there is no evidence that Respondent is known by the disputed domain name, the Panel finds that Respondent is not commonly known by the disputed 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).
Complainant argues that Respondent’s domain name is used for a website that displays the DELL mark and purports to sell DELL computer products to consumers, but the prices for such goods reflect that the products are counterfeit. Complainant further asserts that Respondent is attempting to gather Internet users’ personal information at the “Contact Us” and “Checkout” sections of Respondent’s website. Complainant contends Respondent may commercially benefit by selling Internet users’ information to third parties. The Panel finds that Respondent’s use of the <delllaptopcharger.com> domain name to offer counterfeit products and attempt to gather users’ personal information 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 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).”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks in domain names. Complainant argues that this pattern is evidenced by at least one WIPO UDRP case brought against Respondent. See Calvin Klien Trademark Trust, Warnaco Inc., v. Liu Wei, Case No. D2010-1397. The Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrate bad faith use and registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant argues that by using the domain name for a website displaying the DELL marks and images of Complainant’s products, and claiming to offer DELL products when it is not, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. Complainant argues that Respondent used the domain name to sell DELL computer products to consumers. Complainant asserts that the prices for such goods reflect that the products are counterfeit. Thus, the Panel finds that Respondent’s use of the disputed domain name to offer counterfeit products attracts Internet users away from Complainant’s website to Respondent’s for its own commercial gain, showing bad faith use and registration pursuant to 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delllaptopcharger.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 3, 2013
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