WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. aka Dell Computer Corporation v. Asia Ventures, Inc.
Case No. D2004-0452
1. The Parties
The Complainant is Dell Inc. aka Dell Computer Corporation of Round Rock, Texas, United�States�of�America, represented by Jones Day of Columbus, Ohio, United�States�of�America.
The Respondent is Asia Ventures, Inc. of Hong Kong, SAR�of�China.
2. The Domain Name and Registrar
The disputed domain name is registered with The Registry at Info Avenue d/b/a IA Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on June�17,�2004. On June�18,�2004, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On June�18,�2004, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative 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 the Respondent of the Complaint, and the proceedings commenced on June�23,�2004. In accordance with the Rules, paragraph�5(a), the due date for Response was July�13,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July�15,�2004.
The Center appointed David Levin QC as the sole panelist in this matter on July�26,�2004. 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.
4. Factual Background
Dell owns more than thirty United�States trademark registrations and applications containing the term DELL, including the following:
Registration No.: 1,498,470
Mark: DELL (Stylized)
Registration Date: August�2,�1988
Goods: Computers in Class�9.
Date of first use: November�1987
Registration No.: 1,616,571 Mark: DELL
Registration Date: October�9,�1990
Goods: Computers and computer peripherals, namely, monitors, keyboards, printers, mice, co-processors, modems, hard and floppy disk drives, cards and memory add-ons, memory boards and chips, cables and connectors, operating software and instruction manuals, sold together as a unit in Class�9.
Date of first use: November�1987
Registration No.: 1,860,272
Mark: DELL (Stylized)
Registration Date: October�25,�1994
Goods: Computers and parts therefor in Class 9.
Date of first use: July�31,�1992
Registration No.: 2,236,785
Mark: DELL
Registration Date: April�6,�1999
Services: Custom manufacture of computers for others in Class�40.
Date of first use: November�1987
Registration No.: 2,390,851
Mark:
Registration Date: October�3,�2000
Goods: Computers, computer peripheral devices, namely, monitors, keyboards, printers, mouses, co-processors, modems, hard and floppy disk drives, tape drives, CD-ROMS 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 Class�9.
Date of First Use: December�1997
Copies of the Certificates of Registration for these marks have been produced to the Panel.
Dell also 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 and DELL FINANCIAL SERVICES. The Complainant has produced to the Panel copies of the U.S. Certificates of Registration for these registered marks.
The mark DELL and variations are also registered by the Complainant in more than 130 countries around the world. The Respondent has registered its contact details as an address in Hong Kong. Dell currently operates in Hong Kong and owns more than forty (40) trademark registrations in Hong Kong, including the following:
Mark
Registration No.
DELL
3861/1991
DELL
63672000
DELL
3862/91
DELL (STYLIZED E)
00379/95
DELL AXIM
6871/2003
DELL com>PLETECARE
13490/2001
DELL com>PLETE COVER logo
B11889/2002
DELL DIMENSION
A04826/96
DELL E com> (stylized)
6923/2000
DELL PRECISION
34022000
DELL PREMIUMCARE
11221/2002
DELL SMARTPC
6468/2003
DELL4ME
B3912/2002
DELLHOST
13491/2001
DELLNET
02910/2002
DELLWARE
6080
DELLWARE
06079
A Whois.Net search records that the domain name under challenge in this proceeding was created by its Registrar on March�19,�2003.
5. Parties’ Contentions
A. Complainan
The Complainant, Dell Inc., (“Dell”) claims to be the world’s largest direct seller of computer systems. 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, it has made extensive and prominent use of its DELL mark in connection with a wide range of computer related goods and services, including offering its goods and services online through such websites as “.”
Dell claims to spend millions of dollars each year in advertising and promoting its trademarks, products, services and image. As a result of these efforts it maintains that it has created substantial goodwill around the world and that the DELL mark has become an asset of incalculable value to it.
Dell conducts business on the Internet through numerous “DELL” domain names, including , , , , >, , , , , , , , , , , , , , , and others. The earliest domain name, , was registered on November�22,�1988. Dell has established to the satisfaction of the Panel that its online Internet presence is a matter of considerable commercial importance. It has initiated many proceedings pursuant to its entitlement under the UDRP to enforce its rights in this regard.
Dell offers a wide variety of rebates on products it sells. Consumers are sometimes interested in tracking the status of their rebate submissions. Accordingly, Dell has set up a website called “” that allows its customers to do just that.
In May of 2004, Dell became aware that Asia Ventures, Inc. (“Asia Ventures” or “Respondent”) had registered the domain .
Asia Ventures’ illegitimate registration and use of domain names has been documented in the past. Asia Ventures registers websites and links them to a search engine, Rocket Search, which Asia Ventures owns and operates. The search engine, however, is claimed by Dell to be nothing more than a front for the search engine of a third party that enables Asia Ventures to make money every time an Internet surfer clicks on a sponsored link. This activity was discussed in The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116.
If an Internet user reaches and performs a search using the search box in the middle of the page, Dell claims, and it has not been contested, that the user is taken to search results produced on the servers of O. O is said to be the home page of Applied Semantics, a subsidiary of Google, Inc., in whose name O is registered. Google/AdSense is a “Domain Park” service which the Registrant is utilizing. The Domain Park service “delivers targeted, conceptually related keywords and advertisements to parked domain pages by using Google’s semantic technology to ‘understanding’ the intent/purpose of each domain name.”
By ‘understanding’ what confused consumers will be looking for when they type in , the Domain Park service created a webpage full of sponsored links to companies offering unrelated rebates, or selling competitive products, and even links to some Dell authorized sites. Asia Ventures then makes more money every time someone follows those links.
According to Dell’s unchallenged contentions, in order to join the Domain Park network, a domain must receive over 750,000 page views per month. To generate that volume of traffic without offering any legitimate service, the domain parker must choose a domain name that, in and of itself, will generate traffic. , by combining Dell’s famous trademark with the name of a popular service offered by Dell to its customers, may be able to generate that volume of traffic.
Dell further contends that bad faith is established by the flagrant violation of the Google/AdSense’s terms which state that the parked domain name may not contain any violation of “trademark (and related rights).”
As in the The Sportsman’s Guide case (supra), the Complainant contends that Asia Ventures has registered the domain to make money out of Dell’s customers’ interest in tracking the status of their rebate submissions. This is neither legitimate, nor good faith, use. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, paragraph�4(b)(iv). See also Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
Moreover, this is not the first time Asia Ventures has improperly registered domain names that use Dell’s famous trademarks, a matter which, so it is claimed, can be used to support the finding of bad faith registration. In October 2003, Dell filed the UDRP proceeding Dell Inc. v. Asia Ventures, Inc., WIPO Case No. D2003-0853, with the Center over the improper registration of the domain name . Asia Ventures subsequently transferred the domain name to Dell in November�of�2003 thereby bringing the proceeding to an end before any decision was delivered.
On May�28,�2004, attorneys for Dell sent Asia Ventures a letter requesting that Asia Ventures immediately turn the domain over to Dell. See�Annex�I. The letter was returned as undeliverable as Asia Ventures has apparently used a non-existent address in its WHOIS information — another indication of bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003.
Asia Ventures has no legitimate interest in the domain. Asia Ventures is not a licensee of, or otherwise affiliated with, Dell. “Dell” is not a part of Asia Ventures’ name, and Asia Ventures has absolutely no connection with the processing of Dell rebate submissions. Rather, Asia Ventures capitalizes on the trademarks of others by registering domains that include well-known trademarks and then profiting from the resulting confused traffic that gets misdirected to those domains.
The Complainant contends that Asia Ventures’ activities have already been deemed illegitimate and in bad faith by UDRP panels. See The Sportsman’s Guide, supra.
The Respondent’s use of is likely to be confused with Dell’s family of DELL marks and domain names. Given the strength and fame of the DELL marks and the fact that Dell processes hundreds of rebate submissions every year, the Respondent’s use of will confuse consumers into believing that domain name is associated with Dell.
The Respondent has no rights or legitimate interests in respect to his use of . The Respondent’s use of this domain, operating a pass-through search engine to profit from confusion and misdirected domain traffic, is not a legitimate use. In short, the Respondent is not using in connection with a bona fide offering of goods or services. Rather, this domain was registered and is being used in bad faith, with a clear intent by the Respondent to profit from its actions.
The Respondent registered long after DELL had become a famous trademark of Dell Inc., and long after Dell began offering and processing rebates, with full and complete knowledge of Dell’s superior and prior rights.
In all of the above circumstances Dell maintains that the domain name in question should be transferred to it by reason of the fact that:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; an
(c) The domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response subsequently. Accordingly, all assertions in the Complaint are uncontested and, under paragraph�5(e) of the Rules, the Panel is required to decide the dispute based on the Complaint. The Panel nevertheless needs to be independently satisfied that the three elements set out in paragraph�4(a) of the Policy have been made out on the evidence available to it.
The Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name registered by the Respondent is confusingly similar to the domain name for the website established by Dell for the benefit of its customers named , contrary to the Policy, paragraph�4(a)(i). The omission of the full stop ‘.’ between ‘dell’ and ‘rebatestatus’ does not render the Respondent’s domain name distinctive from the one used by the Complainant. In Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, the domain name under challenge was . The Panel found that the addition of dashes between the letters of a single word did not alter the way the domain name was pronounced and could not, in context, differentiate it from the same word absent the dashes. Likewise no substantive distinction is created by the removal of the full stop in the present case. The Panel also finds the domain name confusingly similar to the Complainant’s DELL trademark since it incorporates the Complainant’s trademark and two generic non-distinctive words.
B. Rights or Legitimate Interests
None of the contentions advanced by Dell have been contradicted by the Respondent, notwithstanding that it has had the opportunity to do so. The Panel finds that the Respondent has no rights or legitimate interests in the domain name , and it thereby is in breach of the Policy, paragraph�4(a)(ii).
C. Registered and Used in Bad Faith
Contrary to the Policy, paragraph�4(a)(iii), the Respondent has registered and has and is using the domain name in bad faith. The conduct of the Respondent falls squarely within that proscribed by paragraph�4(b)(iv) of the Policy, namely that by using the domain name, it intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel accepts the uncontraverted evidence that the Respondent registered long after DELL had become a famous trademark of Dell Inc., and long after Dell began offering and processing rebates. Moreover Asia Ventures has on a previous occasion registered a domain name that use Dell’s famous trademark. In October�2003, Dell filed the UDRP proceeding Dell Inc. v. Asia Ventures, Inc., WIPO Case No. D2003-0853, with the Center in relation to what was alleged to be the improper registration of the domain name . Asia Ventures subsequently transferred the domain name to Dell in November�of�2003, prior to any Panel determination.
The use of an address in its registered particulars which is non-existent is also supportive of the conclusion that it is using the domain name in bad faith.
However the Panel does not accept that the alleged violation of the Google/AdSense’s contractual terms (which require that a parked domain name may not contain any violation of “trademark (and related rights)” is itself evidence of use of the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Levin Q.C.
Sole Panelist
Dated: July�30,�2004
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