Dell Inc. v. duanxiangwang
Claim Number: FA1306001503692
Complainant is Dell Inc. (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is duanxiangwang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delllaptops.com> registered with ENAME TECHNOLOGY CO., LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013. The Complaint was submitted in both English and Chinese.
On June 7, 2013, ENAME TECHNOLOGY CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <delllaptops.com> domain name is registered with ENAME TECHNOLOGY CO., LTD. and that Respondent is the current registrant of the name. ENAME TECHNOLOGY CO., LTD. has verified that Respondent is bound by the ENAME TECHNOLOGY CO., LTD. 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 June 13, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 3, 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@delllaptops.com. Also on June 13, 2013, the Chinese language 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 July 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, 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. Dell has used television, radio, magazines, newspapers, and the Internet as marketing media. Dell has been, and continues to be, extremely successful. Dell sells its products and services in over 180 countries, including China. For several years, Dell has been the world’s largest direct seller of computer systems. As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and in many other countries. More information about Dell can be found at www.dell.com.
ii. Dell’s Marks and Registrations
Complainant has used the famous mark DELL, as well as various other marks that incorporate the word DELL (the “Dell Marks”), for many years for computers (including laptop computers), computer service and support, and other computer-related products and services. Dell also prominently uses its famous mark DELL in the logo form displayed below:
[image redacted]
Dell owns a number of U.S. trademark registrations for the Dell Marks, a number of which are incontestable, as well as trademark registrations in numerous jurisdictions around the world, including China. See, e.g., U.S. Reg. Nos. 1,860,272; 2,236,785; 2,794,705; 2,808,852; and 3,215,023.
iii. Dell’s E-commerce Services
As noted above, Dell’s primary website is located at the domain name dell.com. Dell’s products and services, including laptops and laptop computer services and support, may be ordered or obtained online by consumers, and Dell’s products are shipped all around the world, including China. Dell does a significant volume of its business online.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
a. The disputed domain name is identical or confusingly similar to Complainant’s Dell Marks. Specifically, the domain name delllaptops.com simply incorporates the famous mark DELL in its entirety, merely tacking on the word “laptops,” a term highly likely to be associated with Dell and its goods and services. The presence of a generic top-level domain (“.com”) in this domain name is irrelevant in a UDRP 4(a)(i) analysis.[1]
b. Respondent has no rights or legitimate interests in the domain names.
i. Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Rather, the domain name is used to redirect to a website with a narrative supposedly about Complainant, and the rest of the site is simply used for advertising unrelated to Dell, and includes links to other advertising sites of Respondent.
Specifically, the domain name redirects to http://www.lvse.com/site/dell-com-6200.html, and the top of that site displays Dell’s famous logo. The top right-hand side of the page displays a box containing monetized links unrelated to Dell. The bottom right-hand side of the page contains links numerous links that look like they lead to Dell’s competitors (e.g., entitled “Lenovo’s official website,” “HP’s official website”) and lead to additional pages apparently associated with Respondent, and displaying additional advertising. Links entitled “Dell’s official website” and “Dell Japan” do not lead to Dell’s websites at all, but connect to more webpages apparently associated with Respondent and displaying additional monetized links.
ii. Respondent is not commonly known by the domain name at issue. In addition, Complainant has not licensed or otherwise permitted Respondent to use its Dell Marks, or any other mark owned by Complainant.
iii. Respondent is not making a legitimate noncommercial or fair use of the domain names.
c. Respondent registered and is using the domain name in bad faith.
i. Respondent presumably is paid a fee or commission when Internet users visit the website, click on the various links and are diverted to third-party websites. Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Baylor’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.[2]
ii. Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks in domain names. This pattern is evidenced by at least four UDRP decisions against Respondent.
iii. Moreover, Respondent’s pattern of bad-faith registration and use of others’ trademarks in domain names is evidenced by Respondent’s ownership and use of domain names that incorporate others’ marks (or typographical variants thereof). The following list represents a very small sample of such names:
Domain names Includes another’s mark (or typo thereof) Used for:
7-eleve.com 7-ELEVEN Monetized parking page
7-elevn.com
cirtcuitcity.com CIRCUIT CITY Monetized parking page
citicard.cm CITI CARD Monetized parking page
citicardds.com
craigslistsystem.com CRAIGSLIST Monetized parking page or crieglists.com other commercial site
dishney.com DISNEY No content
disnenychannel.com
disneycanal.com
disneychael.com
disnnychanel.com
ebayyy.com EBAY Redirects to commercial eby.com.cn site, and monetized parking page
facccebook.com FACEBOOK Monetized parking pages facceboo.com and “LVSE” site, like the
faceaabook.com one at issue.
googeglass.com GOOGLE Nothing, or “LVSE” sites,
googelfinance.com like the one at issue.
googelglass.com
google-es.com
google-webmaster.com
hhotail.com HOTMAIL Monetized parking pages.
hhotmial.com
hhotmil.com
micosofttranslator.com MICROSOFT Monetized parking pages
microsoftgame.com and “LVSE” sites, like the
microsoftt.com one at issue.
twetterfeed.com TWITTER Monetized parking pages.
twietter.com
twiitercounter.com
iv. Respondent has provided false and misleading contact information when applying to register the domain name or has intentionally failed to maintain accurate contact information. See 15 U.S.C. § 1125(d)(1)(B)(i)(VII). The Whois record is clearly false, as “CN guang dong shen zhen shi longhua renminlu meiliAAAdasha 703ahao 518000” is not a recognizable address.
v. Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and Respondent’s domain name incorporates exactly the famous DELL mark. See 15 U.S.C. §1125(d)(1)(B)(i).
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 or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used 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 Complainant prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(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 owns the DELL mark through its trademark registration with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No, 1,860,272 registered Oct. 25, 1994). Complainant owns the DELL mark though its trademark registrations with many foreign jurisdictions (although copies were not provided with the Complaint). Complainant’s USPTO registrations sufficiently establish Complainant’s right in the DELL mark under Policy ¶4(a)(i) even though Respondent resides outside of the United States. 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)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues the <delllaptops.com> domain name is confusingly similar to the DELL mark, because the domain name uses Complainant’s mark in its entirety with the addition of a top-level domain and the term “laptops,” a term associated with Complainant’s business. The addition of the generic top-level domain (“gTLD”) “.com,” and a descriptive word does not sufficiently differentiate the domain name from the mark at issue for purposes of Policy ¶4(a)(i). Therefore, the <delllaptops.com> domain name is confusingly similar to the DELL mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also 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).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 claims Respondent is not commonly known by the domain name at issue. Further, Complainant has not licensed or otherwise permitted Respondent to use its DELL mark. Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii) as the WHOIS information demonstrates. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims Respondent does not use the disputed domain name in connection a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name resolves to a page that displays Complainant’s logo, provides links both related and unrelated to Complainant, and provides links to Complainant’s competitors. Respondent is paid a fee or commission when users visit the website and click on various links. Respondent’s efforts to divert users to its own website for commercial gain, through advertisements and links, does not constitute 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
Furthermore, Respondent has not acquired any rights to the disputed domain name because it has not provided accurate WHOIS information when it registered the disputed domain name. Since Respondent has fraudulently concealed its identity while using the disputed domain name, it cannot have acquired any rights to it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks in domain names, showing evidence of Respondent’s current bad faith. Complainant cites past UDRP decisions that resulted in findings of bad faith against Respondent to support the claim. See Microsoft Corp. v. Wang, FA 1269201 (Nat. Arb. Forum Aug. 11, 2009); see also Automattic Inc. v. Wang, FA 1355849 (Nat. Arb. Forum Dec. 7, 2010). Complainant argues Respondent’s bad faith is shown by Respondent’s holdings of registrations for other domain names that incorporate others’ marks or typos of other’ marks, such as <disneycanal.com>, <ebayyy.com>, and <facccebook.com>. This Panel disagrees. Complainant was not preventing from acquiring a domain name which reflected its mark. While Respondent may have lost other UDRP cases, this case must be judged on its own merits.
Complainant argues Respondent has intentionally tried to attract users for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and incorporated links. Respondent is paid a fee or commission when users visit the website and click on various links, which constitutes bad faith registration and use. Respondent’s registration and use of a confusingly similar domain name to commercially gain from Complainant’s notoriety is evidence of bad faith under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Furthermore, providing false WHOIS information raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. That alone is sufficient to allow a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <delllaptops.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 29, 2013
[1] Trip Network Inc. v. Alviera, Case No. FA914943 (NAF Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶4(a)(i) analysis).
[2] See, e.g., Baylor Univ. v. Baylor Univ., Case No. FA791433 (NAF October 23, 2006) (finding use of confusingly similar domain names in connection with “click-through” sites did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and constituted bad faith); Baylor Univ. v. SZK.com c/o Michele Dinoia, Case No. FA791668 (NAF October 16, 2006) (same).
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