Dell Inc. v. David Wong
Claim Number: FA0511000593328
PARTIES
Complainant is Dell Inc. (“Complainant”),
represented by Nathan J Hole, of Loeb & Loeb LLP,
321 North Clark St., Suite 2300, Chicago, IL 60610. Respondent is David Wong (“Respondent”),
67 Sandstone Way NW, Calgary AB T3K2Z3, CA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dellwork.com>
and <dellworks.com>, registered with Network Solutions, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 8, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 9, 2005.
On November 10, 2005, Network
Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellwork.com>
and <dellworks.com> domain names are registered with Network
Solutions, Inc. and that Respondent is the current registrant of the
names. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On November 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dellwork.com and postmaster@dellworks.com by e-mail.
Complainant submitted a timely Additional Submission on December 7,
2005.
The National Arbitration Forum has not received a Response from Respondent. However, Complainant did receive a Response and forwarded it to the National Arbitration Forum on December 8, 2005. The due date for Respondent to submit its Response to the National Arbitration Forum was December 2, 2005. No Response was received by the deadline, but the National Arbitration Forum received an Additional Submission from Complainant on December 7, 2005, which referred to a Response. The National Arbitration Forum informed the parties that no Response had been received, and Complainant forwarded an electronic copy of the Response to the National Arbitration Forum on December 8, 2005. Thus, the Response was not in compliance with ICANN Rule 5, because it was received after the due date, was not submitted in both hard copy and electronic format and was not submitted to the National Arbitration Forum by Respondent. Thus, the Panel has discretion whether to consider Respondent’s deficient Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (without an adequate timely filed response, all reasonable inferences of fact in the allegations of the complaint will be taken as true). But see Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum Apr. 2, 2004) (“Although Respondent provided no explanation with regards to its failure to timely send an electronic copy of its Response, Panel notes that Complainant suffered no damage from this procedural deficiency . . . . [G]iven the insignificant impact it has on the proceedings . . . the Panel allows Respondent to make its case before this Panel.”); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."). In the exercise of its discretion, the Panel will consider the Response.
On December 9, 2005, 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant, Dell, Inc., makes the following assertions:
1. Respondent’s <dellwork.com> and <dellworks.com> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellwork.com> and <dellworks.com> domain names.
3. Respondent registered and used the <dellwork.com> and <dellworks.com> domain names in bad faith.
B. Respondent
Respondent, David Wong, consents to
the transfer of the <dellworks.com> domain name. He agrees that <dellworks.com> is confusingly similar to the DELL mark. Respondent argues that Complainant formerly
had control of the <dellwork.com> domain name, made no use of it,
and, therefore has no legitimate interest in this domain name.
C.
Complainant’s Additional Submission
Respondent implicitly admits that <dellwork.com> is confusingly similar to Complainant’s DELL mark. Respondent admits that he used the <dellwork.com> domain name in connection with a website featuring pornographic images and to “create revenue as a re-director for other websites” which is bad faith. Respondent does not have rights or legitimate interests in the domain name.
FINDINGS
Dell has registered its trademark DELL and variations of
this mark in more than 180 countries worldwide, and DELL owns more than thirty
United States federal trademark registrations containing the term DELL.
For over 20 years, Complainant Dell Inc. (“Dell”) has marketed and sold computer systems and related products and services. In 1987, Dell began using its DELL trademark. Over the years, Dell has invested heavily in marketing under its DELL Marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. The media Dell has used include, but are not limited to, television, radio, magazines, newspapers and the Internet. Dell has been, and continues to be, extremely successful. Dell sells its DELL products and services directly in over 80 countries. For the last fiscal year Dell had revenue of almost $50 billion and, for several years, it has been the world’s largest direct seller of computer systems. BusinessWeek Magazine recently published its BusinessWeek/Interbrand annual report which ranked the DELL brand as the 21st most valuable global brand. Robert Berner and David Kiley, Global Brands, BusinessWeek, August 1, 2005, at 86.
Dell’s DELL mark has been registered in the United States Patent and Trademark Office since 1990; its WWW.DELL.COM mark has been registered since 2000. The disputed domain names were registered in January of 2004.
In August 2005, Dell became aware of Respondent’s registration and use of the <dellwork.com> and <dellworks.com> domain names. Respondent has used <dellwork.com> in connection with a website featuring explicit and adult-themed photographs, pornographic images and screenshots from video games.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 the Response, Respondent agreed to transfer the <dellworks.com> domain name to Complainant in satisfaction of Complainant’s requested remedy. Therefore, the Panel will forego the traditional UDRP analysis as to this domain name and order the transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where Respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names”).
Due to Respondent’s willingness to transfer the <dellworks.com> domain name to Complainant, the remainder of this decision pertains to an analysis of only the <dellwork.com> domain name under the Policy.
Complainant has established rights
in the DELL mark through registration of the mark with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The <dellwork.com>
domain name incorporates Complainant’s entire DELL mark, differing only with
the additions of the term “work” and the generic top-level domain (“gTLD”)
“.com.” Such additions to Complainant’s
registered mark render the disputed domain name confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to the complainant’s mark); see also
Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to the complainant’s THE BODY SHOP trademark); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (
“[I]t is a well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
While the initial burden lies with Complainant to show that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent once Complainant has made a prima facie case. Respondent must then provide evidence of its rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence, including the WHOIS information, to suggest that Respondent has ever been commonly known by the <dellwork.com> domain name or any variation thereof. Furthermore, Complainant contends that it would be difficult for Respondent to claim that it is commonly known by the DELL mark due to the fame of Complainant’s mark. Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Respondent has used
the <dellwork.com> domain name to display adult-oriented
photographs, pornographic images and screenshots from video games. Respondent’s use of Complainant’s well-known
DELL mark to divert Internet users to a website displaying adult-oriented
material and pornographic images is not a use in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the
respondent’s use of its domain name to link unsuspecting Internet traffic
to an adult orientated website, containing images of scantily clad women in
provocative poses, did not constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also Paws,
Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that
the use of a domain name that is confusingly similar to an established mark to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use of the domain name by a
respondent”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of Complainant’s
well-known mark to lead Internet users to a website that prominently displays
adult-oriented photographs and pornographic images is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z.
Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith); see also Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation
of Respondent, the diversion of the domain name to a pornographic site is
itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith.”); see also Wells Fargo
& Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003)
(finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith).
Respondent
asserts that it is using the <dellwork.com> domain name “to create
revenue as a re-director for other websites . . . .” Such use is indicative of bad faith registration and use pursuant
to Policy ¶ 4(b)(iv), as Respondent is taking advantage of the likelihood of
confusion between Complainant’s DELL mark and its <dellwork.com>
domain name to profit commercially. See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where the respondent registered the domain name <bigtex.net> to
infringe on the complainant’s goodwill and attract Internet users to the
respondent’s website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Accordingly, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellwork.com> and <dellworks.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 27, 2005
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