WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Computer Corporation v. Logo Excellence
Case No. D2001-0361
1. The Parties
The Complainant is Dell Computer Corporation, a Corporation of the State of Delaware, having a principal place of business at One Dell Way, Round Rock, Texas 78682, USA.
The Respondent is Logo Excellence, 1211 Eddington, Houston, Texas 77023, USA.
2. The Domain Names and Registrar
The contested Domain Names, ten in number, are , , , , , , , , and .
The Registrar is Domains Direct, Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada M6K 3M1.
3. Procedural History
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy"), which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved on October 24, 1999 and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") as approved on October 24, 1999 and supplemented by the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("Supplemental Rules").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on March 13, 2001, and in hard copy, with Annexes A-Q, as well as the appropriate payment on March 20, 2001. The Complainant's attorneys, stated that they separately served a copy of the Complaint, by courier, on the Respondent and, by email, on the Registrar.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, determined whether the Complaint fully complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on March 16, 2001, the Center requested confirmation from the Registrar of information set forth in the Complaint relative to each of the contested domain names; specifically, contact and registrant information for each such domain name, as well as whether the Registrar received a copy of the Complaint from the Complainant. The Center also requested the Registrar to specify: (a) whether the ICANN Policy applies to the contested domain names, and (b) the current status of each such domain name. In its original verification request, the Center inadvertently omitted one of the contested domain names, specifically . As such, by email dated May 2, 2001, to the Registrar, the Center also requested the Registrar to specify the same information for the missing domain name . On March 21, 2001 and
May 2, 2001, the Registrar provided its responses to the Center through which the Registrar collectively provided contact information pertinent to each of the ten contested domain names from its WHOIS database, confirmed that Tucows, Inc. is the registrar of each of the contested domain names, stated that the Policy is in effect for each of the contested domain names, and each such name was then in a "hold" status. In its March 21, 2001 response, the Registrar indicated that it had not received a copy of the Complaint.
On March 26, 2001, the Center notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint, both in email and hard copy form, to the Respondent (with the latter method forwarding a copy of all the annexes as well). The Complaint, and its accompanying documents, and all subsequent communications associated therewith were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on March 26, 2001 under paragraph 4(c) of the ICANN Policy, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and succeeding correspondence between the Center and the Registrar, in detail, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20-calendar day period, expiring on April 14, 2001 to file its response with the Center and serve a copy of the response on the Complainant.
As of March 27, 2001, the Center received an email message, apparently in the context of a Response, from the Respondent through which the Respondent contested the Complaint. On March 28, 2001, the Center issued, by email, a Response Deficiency Notification to the Respondent through which the Center indicated that the Response, specifically the email received on March 27, 2001, was deficient as a response because it was not compliant with the Rules and Supplemental Rules. In particular, the Center specified that the Response was not submitted in one original and four copies, did not specify either a preferred address or preferred method for communications to the Respondent or its authorized representative, did not state that a copy of the Response was sent to the Complainant, did not contain the full statement required by paragraph 5(b)(viii) of the Rules, and was not signed by the Respondent or its representative. Through a series of email correspondence between the Respondent and the Center, the Respondent submitted its Response, that cured the noted defects, on April 2, 2001, which was also received by the Center in signed hard-copy form on April 9, 2001.
Accordingly, pursuant to the Rules and Supplemental Rules, on April 10, 2001, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as a sole panelist for this dispute. On the same day, Mr. Michaelson accepted and returned, by facsimile to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated April 18, 2001, notified the parties of the appointment of Mr. Michaelson as the panelist.
Based on deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before May 1, 2001.
Subsequent to the Panel's appointment and between April 18-20, the Respondent sent further email communications, evidently supplementing its Response, to the Center, the Panel and the Complainant.
On April 30, 2001, the Panel, in view of a time conflict it was experiencing, extended the due date of its decision by one-week to May 8, 2001.
This dispute concerns ten domain names, specifically , , , , , , , , and .
The language of this proceeding is English.
4. Factual Background
A copy of the WHOIS registration record for each of the contested domain names appears in Annex A to the Complaint.
The Complainant currently owns more than thirty U.S. trademark registrations and pending applications for marks that contain the word "DELL". These marks include the following four registrations, on which this dispute is based. A copy of each of the registrations, as issued by the United States Patent and Trademark Office (PTO), appears in Annex C to the Complaint. For ease of reference, the Panel will collectively refer to these registered marks as the "DELL" marks. The earliest three marks (labeled (c)-(e) below) have each become incontestable under the Lanham Act as a result of the registrant having filed, and the PTO having accepted, suitable declarations of continued use and incontestability under �� 8, 15 of the Lanham Act (15 USC �� 1058, 1065).
a) WWW. DELL.COM
US registration 2,390,851; registered October 3, 2000
This trademark was registered, for use in connection with: "Computers, computer peripheral devices, namely, monitors, keyboards, printers, mouses, co-processors, modems, hard and floppy disk drives, dvd drives, electronic or magnetic cards for memory add-on and memory boards and chips, data storage units, namely, fibre channel drives and SCSI (small computer system interface) drives, cables and connectors, parts and fittings for all of the above, all for use with computers; computer operating software and instruction manuals (all sold together as a unit)" in international class 9. This mark claims first use and first use in inter-state commerce of December 31, 1997.
b) DELL (block letters)
US registration 2,236,785; registered April 6, 1999
This service mark was registered, for use in connection with: "Custom manufacture of computers for others", in international class 40. This mark claims first use and first use in inter-state commerce of November 1, 1987.
c) DELL (stylized)
US registration 1,860,272; registered October 25, 1994
This trademark was registered, for use in connection with: "Computers and parts therefor", in international class 9. This mark claims first use and first use in inter-state commerce of July 31, 1992.
d) DELL (block letters)
US registration 1,616,571; registered October 9, 1990
This trademark was registered, for use in connection with: "Computers and computer peripherals, namely monitors, keyboards, printers, mice, co-processors, modems, hard and floppy disk drives, tape drives, cards and memory add-ons, memory boards and chips, cables and connectors, operating software and instruction manuals sold together as a unit", in international class 9. This mark claims, for both classes, first use and first use in inter-state commerce of November 31, 1987.
e) DELL (stylized)
US registration 1,498,470; registered August 2, 1988
This trademark was registered, for use in connection with: "Computers", in international class 9. This mark claims first use and first use in inter-state commerce of November 31, 1987.
The Complainant is the world�s largest direct seller of computer systems, with revenues of approximately $25.3 billion in its 2000 fiscal year (February 1, 1999 to
January 31, 2000). Founded in 1984, the Complainant began using the name and mark "DELL" as a trade name, trademark and service mark in 1987. Since that time, the Complainant has made extensive and prominent use of its "DELL" marks in connection with a wide range of computer related goods and services, including offering its goods and services online through such web sites as .
The Complainant spends millions of dollars each year in advertising and promoting its trademarks, products, services and image, thereby creating substantial goodwill in its marketplace. During the 2000 fiscal year, the Complainant spent over US $300 million in advertising and promotion. As a result of these efforts, the mark "DELL" has become an asset of incalculable value to the Complainant.
In addition to the "DELL" marks, Complainant uses a family of marks consisting of the term "DELL" combined with another term. These include, but are not limited to, the registered marks "DELL DIMENSION", "DELL PRECISION", "DELLWARE", "DELL TALK", "DELL DOLLARS", "DELLWARE FACTS LINE" and "DELL FINANCIAL SERVICES", as well as marks for which trademark/service mark applications are currently pending, such as "DELL4ME", "DELL E COM", "DELL HOST", and "DELL WEBPC". Annex D to the Complaint contains a copy of the registration for each of those marks that have been registered and, for each of the pending applications, either a corresponding official filing receipt or information accessed from the PTO web site.
The mark "DELL" and variations are also registered by the Complainant in more than 130 countries around the world.
The Complainant conducts business on the Internet through numerous "DELL" domain names, including , , , , , , , and others. The earliest domain name, , was registered on November 22, 1988. The Complainant's online Internet presence is extremely important to its business. In that regard, by the end of fiscal year 2000, online Internet sales to the Complainant's customers reached nearly 50 percent of its revenue and averaged approximately US $ 40 Million per day.
In August of 2000, the Complainant became aware that the Respondent had registered all the contested domain names.
On December 27, 2000, the Complainant, through its attorneys, contacted the Respondent by way of letter sent via email and overnight courier. This letter, a copy of which appears in Annex E to the Complaint, informed the Respondent that the contested domain names infringed the Complainant's trademark rights. Through that letter, the Complainant requested that the Respondent transfer all the domain names to the Complainant.
On January 3, 2001, Mr. Byron Hoffman replied to the Complainant's attorney via email. In the response, a copy of which appears in Annex F, Mr. Hoffman requested additional time to respond in order to seek counsel. On that same day, January 3, 2001, counsel for the Complainant sent an email reply to Mr. Hoffman, a copy of which appears in Annex G, through which counsel agreed to provide additional time.
On January 9, 2001, Mr. Hoffman responded to the request of the Complainant's counsel. Through his response, a copy of which appears in Annex H to the Complaint, Mr. Hoffman stated that he had purchased the names for his own use, claimed that he was known by his middle name "Dell" and had never been addressed by or gone by any other name, including his given first name.
The Respondent and Mr. Hoffman had been previously found to have registered a domain name which was confusingly similar to another party's trademark in bad faith with no legitimate rights to use that name. See Businessway Computer Centers Inc. v. Logo Excellence AF-0217 (e-Resolution July 18, 2000) wherein the panel there found the Respondent and Mr. Hoffman to have engaged in a practice of registering and using domain names confusingly similar to tradenames of others in bad faith with no legitimate rights therein. The decision notes that Mr. Hoffman registers domains as a "hobby." In that case the panel found:
"On April 14, 2000 Mr. Hoffman agreed to transfer the said domain name to the Complainant in return for a payment of $500 USD. The Respondent had paid only $70 USD to register the said domain name.
Mr. Heddo agreed to this payment because he thought it would be the quickest way to resolve this ongoing issue. Subsequently the Respondent did not fulfill its obligations under the agreement. Mr. Heddo was contacted by Mr. Hoffman and directed to a www site on which the said domain name was being offered for auction with an asking price of $100,000 USD.
Mr. Heddo called Mr. Hoffman to get clarification concerning this turn of events. Mr. Hoffman's response was that he had changed his mind and that now he desired to sell the domain name for $100,000 USD or best offer."
The Respondent holds more than 800 top-level domain name registrations, which it markets on the web site . Annex J to the Complaint contains a copy of this web site which lists those marketed domain names. Annex K to the Complaint contains a copy of a WHOIS record showing that the Respondent is the owner of the web site (domain name).
The WHOIS database for certain of the Respondent's domain name registrations, accessed through Network S, specifically , , , and , all list the Administrative Contact, under two different handles, as Byron Hoffman, not "Dell". Copies of the WHOIS information for these particular domain names have been provided in Annex L to the Complaint.
Various domain names that include Mr. Hoffman's name are available for registration, to wit: , , , , , , , and . Printouts from Network Solutions Inc. (NSI) registration services web site showing these names and their availability are provided in Annex M to the Complaint.
The Respondent has registered, and is currently offering for sale, numerous domain names that consist of a term followed by the suffix "might", such as the contested domain name . The Respondent owns nearly 100 domain names containing this suffix including, e.g.: "etrademight", "e-trademight", "dellmight" and "intelmight".
As indicated by copies of WHOIS registration records provided in Annex P to the Complaint, the Respondent has also registered domain names that encompass well-known trademarks or names of third parties such as E-Trade and Intel. In that regard, the Respondent owns over 20 domains beginning with or encompassing "etrade" or "e-trade." In addition, the Respondent also owns domain names containing the names of well-known individuals such as , and well-known cities such as and .
In the Respondent's email of April 20, 2001 to the Center, the Panel and the Complainant, the Respondent acknowledged that his purpose in buying all the domain names he markets on his site was "clearly for the purpose of resale".
5. Parties� Contentions
A. Complainant
Similarity
The Complainant takes the position that each of the ten contested domain names is confusingly similar to its "DELL" marks.
Specifically, the Complainant contends that each of the contested domain names contains the term "DELL" combined with generic terms, or the well-known trademark of others such as E-TRADE. Given the strength and fame of the "DELL" marks standing alone, and since the Complainant uses many composite word marks in which the mark "DELL" is combined with other terms relating to computers, e-commerce, the Internet and other services, the Complainant asserts that the contested domain names will confuse consumers into believing that those domain names are associated with the Complainant, when, in fact, they are not.
Further, the Complainant contends that in view of the Respondent's other registrations of well-known trademarks in the technology business, including and , the Respondent intentionally chose to register domain names incorporating well-known mark
