Dell Inc. v. Mahmoud Dehghan
Claim Number: FA0612000870419
Complainant is Dell Inc. (“Complainant”), represented by Daniel
D. D. Frohling, of Loeb & Loeb LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <dell-iran.com> and <dell-iran.net>, registered with Onlinenic, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2007 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@dell-iran.com and postmaster@dell-iran.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dell-iran.com> and <dell-iran.net> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dell-iran.com> and <dell-iran.net> domain names.
3. Respondent registered and used the <dell-iran.com> and <dell-iran.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., has used the DELL mark since 1987 to promote and sell computer systems and related products and services. Complainant holds numerous trademarks in multiple jurisdictions for its DELL mark, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,498,470 issued August 2, 1988). Complainant has registered the domain name <dell.com> to market and sell its products and services online, and has registered over seventy-five other domain names that combine its DELL mark with a country code.
Complainant marketed and sold its products and services in
Respondent, Mahmoud Dehghan,
registered both the <dell-iran.com> and <dell-iran.net> domain names on
In 2005, a company called “Delliran Co.” operated the domain
name <delliran.com> which also contained Complainant’s mark and logo, and
promoted its products. Complainant
subsequently filed a complaint with the National Arbitration Forum, which
awarded a transfer of the disputed domain name from Delliran Co. to Complainant
on
Complainant has alleged in this case that Respondent is acting as a surrogate for Delliran Co. Respondent’s <dell-iran.com> and <dell-iran.net> domain names, which lead to the same website, have the same web designer as the prior <delliran.com> website, and display the same copyright notice: “Copyright © 2005DELLIRAN.” Respondent’s current website is also identical in appearance to the previous <delliran.com> website.
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."
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. 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.”).
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.
Complainant’s registration of the DELL mark with the USPTO
predates Respondent’s registration of its <dell-iran.com>
and <dell-iran.net>
domain names. Under the Policy,
registration of a mark with an appropriate governmental authority confers
rights in that mark to Complainant.
Thus, the Panel finds that Complainant has established rights in the
DELL mark pursuant to Policy ¶ 4(a)(i). Ameerica
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO
Respondent’s <dell-iran.com>
and <dell-iran.net>
domain names contain Complainant’s DELL mark in its entirety and add a hyphen followed
by the geographic identifier “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <dell-iran.com> and <dell-iran.net> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of the Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The Panel finds no evidence in the record to suggest that
Respondent is commonly known by the <dell-iran.com>
and <dell-iran.net>
domain names. The WHOIS information
identifies Respondent as “Mahmoud Dehghan.” The Panel finds it possible that Respondent
is a surrogate of Delliran Co., but there is no evidence that Delliran Co. is
commonly known by the domain names.
Therefore, the Panel concludes that Respondent is not commonly known by
the <dell-iran.com> and <dell-iran.net>
domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum
Respondent is using the <dell-iran.com> and <dell-iran.net> domain names as an attempt to pass itself off as Complainant and sell Complainant’s products and services. Furthermore, Respondent is doing this in a market in which Complainant no longer sells its products. Respondent is attempting to profit from the goodwill associated with Complainant’s DELL mark, and such use constitutes neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <dell-iran.com>
and <dell-iran.net>
domain names to sell Complainant’s products without Complainant’s
authorization. Such use constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA
124508 (Nat. Arb. Forum
Respondent’s <dell-iran.com>
and <dell-iran.net>
domain names, which are confusingly similar to Complainant’s DELL mark, are
likely to create confusion among Internet users seeking Complainant’s products
and services. Specifically, customers might
believe that Complainant is selling its products on Respondent’s website, or
that Complainant is somehow affiliated with Respondent. However, Complainant does not sell its
products and services in
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dell-iran.com> and <dell-iran.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 2, 2007
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