WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. v. DellD
Case No. D2003-0854
1. The Parties
The Complainant is Dell Inc. ("Complainant"), a Delaware corporation with its principal place of business in Round Rock, Texas, United States of America, represented by Jones Day, C/O Joseph R. Dreitler and Brian J. Downey, Jones Day, Columbus, Ohio, United States of America.
The Respondent is DellD ("Respondent"), C/O Sean Kelly, of Attleboro, Massachusetts, United States of America.
2. The Domain Name and Registrar
The domain name at issue is ("Domain Name").
The Registrar with which the Domain Name is registered is Wild West Domains ("Registrar"), Scottsdale, Arizona, United States of America.
3. Procedural History
The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 28, 2003. On October 29, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name at issue. On October 30, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 3, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 23, 2003. The Response was filed with the Center on November 21, 2003.
The Center appointed Carol Anne Been as the sole panelist in this matter on December 18, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
The Transmission of Case File to Administrative Panel was dated December 18, 2003. English is the language of the proceeding. In the Notification of Appointment of Administrative Panel, the Projected Decision Date for the Administrative Panel to forward the decision to the Center was set for January 2, 2004. An extension of the Decision Date to January 9, 2004 was granted on December 31, 2003.
4. Factual Background
a. The following facts are asserted by Complainant in the Complaint and are not disputed.
Complainant
Complainant is a Delaware corporation with its principal place of business in Round Rock, Texas, United States of America. Complainant provides computers and computer related goods and services, including offering its goods and services online through such websites as .
Complainant has been selling its goods and services under its Dell trademarks since at least as early as 1987. Complainant has spent millions of dollars throughout the United States and the world promoting its extensive offering of goods and services under the Dell trademarks.
Complainant owns more than thirty United States trademark registrations and applications containing the term "Dell" in International Class 9 for, among other goods, computers and computer peripherals, and in International Class 40 for, among other services, custom manufacture of computers for others. See United States Trademark Registration Nos. 1,498,470, 1,616,571, 1,860,272, 2,390,851, among others. Copies of the certificates of registration for the foregoing registrations were attached to the Complaint. The first three listed registrations have reached incontestable status under United States law pursuant to 15 U.S.C. � 1065. All of the listed registrations are in full force and effect and the marks are still owned and used by Complainant. In addition, Complainant has registered the mark DELL and its variations in more than 130 countries around the world.
In addition to its registered trademarks, Complainant also conducts business on the Internet through numerous "Dell" domain names, including, but not limited to , , , , , , , and .
The Complainant�s earliest domain name, , was registered on November 22, 1988. Complainant�s online internet sales to its customers reached nearly 50 percent of Complainant�s revenue in fiscal year 2000.
Complainant has teamed up with Sprint Communications Company to offer domain registration and web-hosting services under the DELLHOST mark at www.. Complainant�s U.S. service mark registration of DELLHOST, for "computer services, namely, designing and implementing websites for others; hosting the websites of others on a computer server for a global computer network," claims first use of the mark for such services in 2000.
Respondent
Respondent registered the Domain Name on or about April 1, 2003. The Domain Name includes the word "Dell," which is contained in many of Complainant�s registered trademarks and domain names.
At one time, the Domain Name led to a website that offered web-hosting services, website creation services and registration of domain name services. See screen shot of Respondent�s website provided by WIPO, dated October 30, 2003. The services offered at the website then found at the Domain Name were the same type of services and competed with the services then and now offered by Complainant at its website www..
The Domain Name currently leads the viewer to a screen that displays the following message: "Delld coming soon! This site is currently parked FREE at !"
b. The following facts are asserted by Respondent in the Response submitted by Sean Kelly on behalf of Respondent.
Mr. Kelly was a resident of Massachusetts who, as of August 20, 2003, moved to Southeast Asia and is presently traveling in Southeast Asia. Respondent or Mr. Kelly operates a business teaching adults and children English and computer skills, and may base operations in Laos or Vietnam in the future. Respondent claims to have named its website after a homeless woman named Dell to whom Respondent or Mr. Kelly first taught computer skills.
In addition, Respondent claims that it or Mr. Kelly did not register the Domain Name using a fake business address, as Complainant alleges, but instead, that the address given to the Registrar was correct until Mr. Kelly moved to Southeast Asia on August 20, 2003. Respondent also claims that it or Mr. Kelly will update the business address given to the Registrar, but that in the meantime it or Mr. Kelly can still be reached at the given e-mail address.
5. Parties� Contentions
A. Complainant�s Contentions
i. Domain Name Identical or Confusingly Similar
Complainant alleges that the Domain Name is confusingly similar to Complainant�s registered trademark DELL and its variations, as well as Complainant�s DELL domain names. Complainant contends that the Domain Name enables Respondent to capitalize on internet users who use the Domain Name to go to Respondent�s website when searching for Complainant or for Complainant�s domain registration/hosting service. Complainant further alleges that internet users will be attracted to Respondent�s website located at the Domain Name, and will be confused as to the source, sponsorship, affiliation or endorsement of Respondent�s website, or of the products or services offered on Respondent�s website.
ii. Respondent�s Rights or Legitimate Interests in the Domain Name
Complainant alleges that Respondent has no rights or legitimate interest in the Domain Name.
Complainant contends that Respondent is not a licensee of, or otherwise affiliated with, Complainant. Complainant alleges that Respondent is not registered to do business in Massachusetts, the state in the address it provided to the Registrar. Complainant asserts that Respondent has no interest in the "Dell" name other than to profit from the inclusion of Complainant�s well-known trademark DELL in the Domain Name, and to capitalize on the resulting confused internet traffic misdirected to the Domain Name.
iii. Domain Name Registered or Used in Bad Faith
Complainant alleges that Respondent registered and is using the Domain Name in bad faith.
Complainant contends that Respondent�s actions in registering and using the Domain Name were a concerted attempt to withhold the Domain Name from Complainant and subsequently to seek to profit from confused customers of Complainant looking for Complainant or Complainant�s domain registration/hosting services.
Complainant alleges that Respondent registered the Domain Name long after DELL had become a famous trademark of Complainant.
Complainant further contends that Respondent acted in bad faith by registering the Domain Name because Respondent gave a fake address and phony contact information. When Complainant�s attorneys sent a letter to Respondent on September 4, 2003, requesting that Respondent turn over the Domain Name to Complainant, the letter was returned as undeliverable.
B. Respondent�s Contentions
i. Domain Name Identical or Confusingly Similar
Respondent does not acknowledge nor deny that the Domain Name is similar to Complainant�s registered trademarks and domain names.
ii. Respondent�s Rights or Legitimate Interests in the Domain Name
Respondent claims that it has a legitimate interest in the Domain Name because it was named after a homeless person named Dell.
iii. Domain Name Registered or Used in Bad Faith
Respondent appears to argue a lack of bad faith by claiming that it plans to use the profits from the website found at the Domain Name for charitable purposes, and that it did not intend to mislead anyone.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove that:
(i) the Domain Name is identical or confusingly similar to a service mark in which Complainant has rights;
(ii) Respondent has no legitimate interest in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. The Domain Name is identical or confusingly similar to a service mark in which Complainant has rights
Complainant has alleged that it has rights in the mark DELL, and in other DELL-related marks and domain names, including DELLHOST. Complainant has widely used the DELL mark to identify its goods and services since at least as early as 1987. Complainant has registered its DELL marks for computers and computer-related services in the United States as well as in other countries. Complainant has registered the mark DELLHOST and used the domain name for domain name registration and hosting services since 2000.
Respondent registered the Domain Name in 2003. The Domain Name includes the word DELL, which is identical to the distinctive component of Complainant�s registered marks and similar in structure to Complainant�s marks and domain names that use DELL together with another word. Minor differences do not eliminate the confusion that results from the remaining similarities. Many decisions have found confusing similarity despite analogous differences between a disputed domain name and a trademark. See, e.g., Lammot Copeland, Jr. v. Computer Product Introductions, WIPO Case No. D2003-0823 (November 28, 2003); Six Continents Hotels, Inc. v. Amjad Kausar a/k/a InterMos, WIPO Case No. D2003-0663 (November 5, 2003).
Thus, the Administrative Panel holds that the Domain Name is confusingly similar to Complainant�s mark, DELL, and its other DELL-related marks and domain names.
B. Respondent has no legitimate interest in respect of the Domain Name
Respondent has not set forth any evidence of circumstances of the type described in Paragraph 4(c) of the Policy, or of any other circumstances indicating a right or legitimate interest in the Domain Name. Respondent has provided no evidence of announcements or other publicity concerning its business. Respondent does not appear to be commonly known by the Domain Name.
Though the Response does address how Respondent allegedly conceived of the name "DellD," Respondent�s justification strains belief. Respondent claims that the Domain Name was based on the name of a homeless woman to whom Mr. Kelly taught computer skills. Yet, Complainant�s products and services under its registered marks were widely known and advertised at the time the Domain Name was first registered. Respondent�s initial use of the Domain Name was for services directly competing with Complainant�s services previously offered under its mark DELLHOST.
Respondent�s planned use of the profits from the Domain Name does not create a right or legitimate interest in the Domain Name. Thus, the Administrative Panel holds that Respondent has no rights or legitimate interests in the Domain Name.
C. The Domain Name has been registered and is being used in bad faith
Respondent registered the Domain Name well after the first use and federal registration of Complainant�s mark, DELL, and the other DELL-related marks mentioned above. Since Respondent gave the Registrar an address in the United States, under the notice provisions of the Lanham Act, Respondent is deemed to have had constructive notice of Complainant�s trademark registrations at the time of its registration of the Domain Name. See, e.g., RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001). In addition, registration of the Domain Name was made after Complainant�s rights in the DELL-related marks and domain names were widely known.
Respondent�s competing website at the Domain Name provided services related to web- hosting and domain name registration, which was significantly similar to, and in competition with, the services offered by Complainant at its website www.. The Domain Name enables Respondent to benefit from any misdirected or confused consumers looking for Complainant and Complainant�s services.
These facts indicate bad faith under Section 4(b)(iii) and (iv) of the Policy, absent any contrary indication from Respondent. See, e.g., E, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 (February 1, 2002). Respondent�s planned charitable use of the profits from the Domain Name does not show good faith registration or use of the Domain Name. Respondent�s Response has failed to present sufficient contrary evidence.
Respondent�s provision of false or incomplete contact information to the Registrar and/or its failure to update such information is further evidence of bad faith. See, e.g., Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000). Under the terms of Respondent�s agreement with the Registrar, Respondent must notify the Registrar within five (5) business days of a change of address. Currently, the WHOIS database still contains the same contact information that Respondent provided upon registration.
Thus, the Administrative Panel finds that Respondent had at least constructive notice of Complainant�s mark when it registered the Domain Name, posted a website offering similar and competing services to that which are offered by Complainant, and failed to provide a legitimate and current contact information to the Registrar, which together provide evidence of bad faith registration and use of the Domain Name.
Therefore, the Administrative Panel concludes that Respondent registered and used the Domain Name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 5 of the Rules, the Administrative Panel orders that the Domain Name registered by Respondent DellD be transferred to Complainant Dell Inc.
(i) The Domain Name is confusingly similar to a service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith by Respondent.
Carol Anne Been
Sole Panelist
Dated: January 9, 2004
Full & Egal Universal Law Academy