Dell Inc. v. SZK.com
Claim
Number: FA0509000555545
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 SZK.com (“Respondent”),
Via Trulessa 11, Pineto, TE 64025 IT.
The
domain names at issue are <dellcustomersupport.com> and <wwwdellcomputer.com>,
registered with Dotster.
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 September
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 9, 2005.
On
September 9, 2005, Dotster confirmed by e-mail to the National Arbitration
Forum that the <dellcustomersupport.com> and <wwwdellcomputer.com>
domain names are registered with Dotster and that Respondent is the current
registrant of the names. Dotster has
verified that Respondent is bound by the Dotster 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
September 12, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 3, 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@dellcustomersupport.com
and postmaster@wwwdellcomputer.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 10, 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.
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 <dellcustomersupport.com>
and <wwwdellcomputer.com> domain names are confusingly similar to
Complainant’s DELL mark.
2. Respondent does not have any rights or
legitimate interests in the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names.
3. Respondent registered and used the <dellcustomersupport.com>
and
<wwwdellcomputer.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Dell, Inc., f/k/a Dell Computer Corporation (“DELL”), has for over twenty years
marketed and sold computer systems and related products and services. Over the years, Complainant has invested
heavily in marketing under its DELL marks, devoting hundreds of millions of
dollars to advertising and promoting its products and services in over eighty
countries. For the last fiscal year,
Complainant generated revenues close to $50 billion and for several years
Complainant has been the world’s largest direct seller of computer systems.
As a
consequence of Complainant’s marketing and sales success, Complainant’s marks
have become famous in the United States and many other countries around the
world. Complainant generates almost
half of its revenue from sales over the Internet. To support its online marketing and sales efforts Complainant
owns hundreds of domain names which contain Complainant’s famous DELL mark,
e.g. <dellcomputer.com>, <dellcomputers.com>, <dellsupport.com>
and <dellcustomercare.com>.
Complainant owns
numerous trademark registrations for its DELL mark. Complainant has registered the DELL mark with the United States
Patent and Trademark Office
(“USPTO”) (Reg. No. 1,616,571 issued October 9, 1990).
Respondent
registered the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names on July 12, 2003 and May 11, 2003,
respectively. Respondent’s domain names
resolve to websites featuring links to third-party commercial websites that
directly compete with Complainant’s business.
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. 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.”).
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 has
established rights in the DELL mark through registration 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.”).
Additionally, Respondent’s <dellcustomersupport.com> and <wwwdellcomputer.com> domain names are confusingly similar to
Complainant’s mark, as the domain names fully incorporate Complainant’s DELL
mark in its entirety and add the generic term “customer support;” and the
descriptive term “computer,” which have an obvious connection to Complainant’s
business. Further, Respondent’s <wwwdellcomputer.com>
domain name adds the prefix “www” to Complainant’s DELL mark. Such changes are not enough to overcome a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Magnum Piering, Inc. v. Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not
change the confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd.,
D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word
“net” to the complainant’s ICQ mark, makes the <neticq.com> domain name
confusingly similar to the complainant’s mark); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from the complainant's NEIMAN-MARCUS mark); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <dellcustomersupport.com> and <wwwdellcomputer.com> domain
names are confusingly similar to Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <dellcustomersupport.com>
and <wwwdellcomputer.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
names. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); 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 rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, the respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Moreover,
Respondent is not commonly known by the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names.
Thus, the Panel concludes that Respondent has not established rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where respondent was not commonly known by the mark and
never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names to redirect consumers to
third-party commercial websites that feature goods and services that compete
with Complainant. The Panel finds that
Respondent’s use of domain names that are confusingly similar to Complainant’s
mark to divert Internet users to Respondent’s website for Respondent’s own
commercial gain does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to 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).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
own commercial website. Respondent
registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv),
as Respondent is using the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names to intentionally attract, for
commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See H-D
Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and
likeness); see also 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).
Furthermore,
Respondent has used the <dellcustomersupport.com> and
<wwwdellcomputer.com> domain names, which contain Complainant’s DELL
mark, to redirect Internet users to third-party websites which feature products
and services that directly compete with Complainant’s goods and services. This suggests that Respondent had actual
knowledge of Complainant’s rights in the mark when it registered the domain
name and chose the disputed domain name based on the goodwill Complainant has
acquired in its DELL mark. Furthermore,
Complainant’s registration of the DELL mark with the USPTO bestows upon
Respondent constructive notice of Complainant’s rights in the mark. Respondent’s registration of a domain name
containing Complainant’s mark in spite of Respondent’s actual or constructive
knowledge of Complainant’s rights in the mark is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”).
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 <dellcustomersupport.com> and <wwwdellcomputer.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 21, 2005
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