Dell Inc. v. Oguz Ozdemir
Claim Number: FA0612000873741
Complainant is Dell Inc. (“Complainant”), represented by Nathan
J Hole, of Loeb & Loeb LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <dellpc.net>, registered with Wild West Domains.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.
On December 20, 2006, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <dellpc.net> domain name is registered with Wild West Domains and that Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 December 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 10, 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@dellpc.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dellpc.net> domain name is confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <dellpc.net> domain name.
3. Respondent registered and used the <dellpc.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., has marketed and sold computer systems and related products and services for over twenty (20) years. Complainant began using its DELL mark in 1987 and registered this mark, among some thirty others, with the United States Patent and Trademark Office (“USPTO”) in October of 1990 (Reg. No. 1,616,571; issued October 9, 1990). Complainant has also registered its DELL mark and variations thereof in more than 180 countries worldwide. Complainant has registered hundreds of domain names that contain the DELL mark, including <dell.com> and <dellcomputer.com>.
Respondent, Oguz Ozdemir, registered the disputed <dellpc.net> domain name on May 24, 2006. The domain name currently resolves to a website featuring advertisements for and links to commercial websites, including Complainant’s websites and websites related to and competitive with Complainant’s products. Sometime in October of 2006, Respondent indicated that he would be willing to sell the disputed <dellpc.net> domain name registration to Complainant for a sum of $10,000. Complainant rejected this offer.
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 pursuant
to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See 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.”); 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.”).
In registering its <dellpc.net> domain name, Respondent merely added the generic term “pc” to Complainant’s entire DELL mark. Such action is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). This finding is only furthered by the obvious relationship of the abbreviation “pc” (“personal computer”) to Complainant’s well-established line of business. See 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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
In light of the foregoing analysis, the Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed <dellpc.net> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is
presumed that Respondent lacks all rights and legitimate interests in the disputed
domain name.”). However, despite the
presumptive effect of Respondent’s inaction, the Panel chooses to analyze the
relevant factors under Policy ¶ 4(c).
In connection with registering the
disputed <dellpc.net> domain
name, Respondent listed simply listed himself, Oguz Ozdemir, as the registrant.
While the record clearly indicates that Respondent performed this
mandatory and perfunctory task, it is void of any other attempt by Respondent
to establish that he is commonly known by the disputed domain name, or any
variation thereof. Indeed, given the
fame and notoriety of Complainant’s DELL mark, Respondent must put forth strong
evidence to prevail on this argument. See 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).”). This has simply not been done here.
As such, Respondent has no rights or legitimate interests under Policy ¶
4(c)(ii). See 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 Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Similarly, the record is void of any attempt by Respondent to use
the <dellpc.net> domain name
in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii), or in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). Respondent’s domain name does nothing more than
resolve to a page that provides advertisements for and links to commercial
websites, many of which compete with Complainant. Without any evidence to the contrary, it can
be reasonably inferred that Respondent used a confusingly similar variation of
Complainant’s DELL mark in its <dellpc.net>
domain name purely for commercial gain, presumably in the form of click-through
fees. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Wells Fargo & Co. v.
Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user).
The Panel finds that Complainant’s assertion that Respondent
lacks rights or legitimate interests in the disputed domain names constitutes a
prima facie case pursuant to the
Policy. In
light of the foregoing analysis, the Panel finds that Respondent has failed to
show any rights or legitimate interests in the disputed domain names under Policy
¶ 4(c). As such, Complainant has
satisfied policy ¶ 4(a)(ii).
The record indicates that Respondent sought to redirect
consumers who attempted to reach Complainant’s <dell.com> or
<dellcomputer.com> sites by registering the disputed <dellpc.net> domain name and resolving that name to a
site offering advertisements and links to other companies in the computer
industry. These websites presumably
compete with the services offered at Complainant’s <dell.com> and
<dellcomputer.com> domain names.
Respondent’s wholesale incorporation of a name that is confusingly
similar to Complainant’s DELL mark into its <dellpc.net> domain name is indicative of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). The presumed commercial gain, as noted above
in the “rights and legitimate interests” subsection, only furthers this
finding. 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s unequivocal bad faith use and registration is
further exemplified by his offer to sell Complainant the disputed <dellpc.net> domain name registration
for a sum far
in excess of whatever out-of-pocket costs were incurred by Respondent in
connection with the disputed domain name. See
World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14,
2000) (finding that the respondent used the domain name in bad faith because he
offered to sell the domain name for valuable consideration in excess of any
out-of-pocket costs); see also Matmut v.
Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶
4(b)(i) where the respondent stated in communication with the complainant that
it would be ready to sell the <matmut.com> domain name registration for
$10,000). Further, Respondent’s offer to
sell the disputed domain name is in and of itself indicative of bad faith,
irrespective of any quantitative analysis.
See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and has thus satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellpc.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 25, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum