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Dell Computer Corporation v. Clinical Evaluations [2002] GENDND 988 (30 June 2002)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Dell Computer Corporation, One Dell Way, Round Rock, Texas 78682, United States of America ("Dell" or "Complainant").

Respondent is Clinical Evaluations, 1525 Broadway, New York, New York 10010, United States of America ("Clinical Evaluations" or "Respondent").

The domain names in issue are <del4me.com> and <dell4e.com> (collectively the "Domain Names").

The registrar is Domain Direct, Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario, Canada, M6K 3M1 ("Domain Direct").

The WIPO Arbitration and Mediation Center ("the Center") received Dell’s Complaint via e-mail on May 2, 2002 and in hard copy on May 7, 2002. The Center acknowledged receipt of the Complaint via e-mail on May 7, 2002. The Center forwarded a copy of the Acknowledgment of Receipt of Complaint to the Respondent, notifying it that there was a Complaint filed against it but that it had no duty to act at that time. The Acknowledgment further stated that after the Center verified that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), and the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Center would send Respondent an official copy of the Complaint after which Respondent would have 20 days to respond. The letter further directed Respondent to the Web sites containing the Rules, Supplemental Rules, and Policy.

The Center sent e-mail to Domain Direct on May 7, 2002 requesting verification of the registration of the Domain Names. On May 8, 2002 the Center received confirmation from Domain Direct via e-mail that:

1) Complainant had sent it a copy of the Complaint; 2) the Domain Names were registered with Domain Direct; 3) Respondent was the current registrant; 4) the Policy applies to the Domain Names; and 5) the current status of the Domain Names was Registrar Lock (preventing changes from occurring to registration information during the administrative proceeding). Domain Direct also confirmed the contact names, postal addresses, e-mail addresses, and phone and facsimile numbers for the organization, administrative, and technical contacts for the Domain Names.

On May 10, 2002, the Center requested that Complainant amend the Complaint based on the requested remedy transferring "all of the Dell Domains" to Complainant. (emphasis in original) The Center noted that paragraph 4(i) of the Policy allows transfer or cancellation only of the disputed domain names as a remedy. Complainant clarified via e-mail on May 22, 2002 that the term "Dell Domains" applied only to the disputed domains <del4me.com> and <dell4e.com>. The Center accepted this clarification in lieu of amendment on May 23, 2002.

After verifying that the Complaint complied with the formal requirements of the Rules, Supplemental Rules, and Policy, the Center notified the registrant, the administrative, billing and technical contacts of the Domain Names, by mail and e-mail on May 23, 2002, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a Complaint as described above. The notification also stated that the Complaint satisfied the formal requirements of the Policy, Rules, and Supplemental Rules and that Complainant had made the appropriate payment. Accordingly, the administrative proceeding commenced on May 23, 2002. The notification invited Respondent to reply by June 12, 2002 in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default: a Panel would still decide the case and, in accordance with Paragraph 14 of the Rules, the Panel could draw any appropriate inferences from the default. The notification also informed Respondent that Complainant elected a single panelist who would be appointed within five days after the Response was due. If Respondent preferred a three-member panel, Respondent could so designate, with the required payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondent was notified of the identity and contact information of the Case Manager. The Center sent a copy of the notification via e-mail to Complainant.

Having received no response to the notification by the June 12, 2002 deadline, the Center notified Complainant and Respondent via e-mail on June 14, 2002 of Respondent’s default. The notice stated that the Center would appoint a single panelist to comprise the Panel, the Panel would be informed of Respondent’s default, and it would be up to the Panel’s discretion whether to consider any late-filed Response. Finally, the notice stated that the Center would continue to send case-related materials to Respondent, as it deemed appropriate.

On June 17, 2002 the Center advised Complainant and Respondent by e-mail of the identity of the undersigned sole panelist, Michael A. Albert. In addition, the Center notified Complainant and Respondent that the Panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

Pursuant to Paragraph 11(a) of the Rules, the language of this proceeding is English, which is the language of the Domain Names’ Registration Agreements.

Dell's Complaint alleges that its DELL mark is a distinctive trademark federally registered in the United States and used in over 130 countries. Dell began using the DELL mark in 1987 as a trade name, trademark, and service mark. Since then, Dell has used the trademark DELL and variants thereof to identify itself, its goods, and its services. (See Annex C and Annex E of the Complaint for copies of the Certificates of Registration for some of the relevant marks.) Dell has registered more than 30 trademarks and applications involving DELL in the United States alone. (See Annex C of the Complaint.) Dell has been using the DELL4ME mark since 1999 and registered it in 2001. (See Annex D for a copy of the Certificate of Registration for this mark.) Dell has invested substantial resources to promote its mark worldwide.

Dell conducts business on the Internet at various domains that contain DELL or DELL4ME as part of the domain name (for example, <dell.com>, <e-dell.com>, <dell4me.com>, and <delldimension.com>).

Domain Direct verified that the Policy applies to the Domain Names. Therefore, the Policy governs this proceeding and in accordance with it, the Rules, and the Supplemental Rules, the Panel has jurisdiction to decide this dispute.

Dell asserts as follows:

▪ The registered DELL mark has worldwide recognition.

▪ Dell creates substantial marketplace goodwill by spending millions of dollars annually to promote its products, services, and trademarks.

▪ Three of Dell’s marks have attained incontestable status in the United States under 15 U.S.C. §1065.

▪ The mark DELL and variations of it are registered by Dell in more than 130 countries.

▪ Dell owns the United States trademark registration for the mark DELL4ME.

▪ Dell conducts business on the Internet through numerous domain names containing its marks DELL and DELL4ME, including <delldirect.com>, <dellcomputers.com>, <dell4me.com>, and <e-dell.com> among others.

▪ Dell’s on-line activities are vital to its business; at the end of the 2000 fiscal year, Dell’s online Internet sales accounted for nearly 50 percent of Dell’s revenue.

? In March 2002, Dell learned that the entity "American Clinic" registered the domain name <del4me.com>. (See Annex F of the Complaint for a copy of the relevant WHOIS listing.) Dell sent a letter on March 12, 2002 to Vicki Taylor, the administrative contact person listed for the domain, at the e-mail and postal addresses listed in the WHOIS record for <del4me.com>. (See Annex H of the Complaint for a copy of Dell’s letter.) The letter informed American Clinic that this registration violated Dell’s trademark rights and demanded that American Clinic transfer the domain name to Dell.

▪ There was no response to the letter sent via e-mail. The letter sent via overnight courier to the postal address was returned as undeliverable; there was no such entity as "American Clinic" at the listed address. Furthermore, Dell alleges that the postal address is fictitious, with an incorrect ZIP code. (Compare the address listed in the WHOIS record at Annex F of the Complaint with the United States Postal Service search result for the address at Annex G of the Complaint.)

▪ The Respondent acted in bad faith by providing false information when registering the domain <del4me.com>.

▪ On March 25, 2002 the registration information for <del4me.com> was changed to list Clinical Evaluations as the registrant, with a postal address of 1525 Broadway, New York, New York, 10010. The administrative contact for the domain was changed to Patrick Henderson. However, the e-mail address for the contact person did not change.

▪ Dell alleges that the changed registrant information also contained false information, as the ZIP code (10010) for 1525 Broadway is incorrect. (See the United States Postal Service search result for that address at Annex I of the Complaint.)

▪ In April 2002, Dell learned that Clinical Evaluations had registered the domain name <dell4e.com>. The registrant information for the <dell4e.com> domain is identical to that for <del4me.com> except that it lists a different administrative contact. (See Annex J of the Complaint.)

▪ Respondent has not used the Domain Names for any legitimate purpose, but forwards HTTP requests for them to http://www.3452.net. This Web site in turn forwards requests to various Web sites. On March 11, 2002 the site forwarded requests to <mini-dish.com>. (See Annex K of the Complaint for a copy of mini-dish.com’s Web page on March 11, 2002.) On March 12, 2002 the site forwarded requests to a search result at <TurboFind.com>. (See Annex L of the Complaint for a copy of TurboFind.com’s Web page displaying the results of this search on March 12, 2002). On April 26, 2002 the site forwarded requests to <Engine54.com>.

▪ Respondent registered the Domain Names without any legitimate right or interest in using them, and holds them in bad faith to prevent Dell from acquiring them. There is no evidence of legitimate use of the Domain Names by Respondent, nor any preparations for such use. Forwarding requests from the Domain Names to the Web sites of other businesses does not constitute legitimate use.

▪ Respondent has engaged in "typo-piracy," hoping to attract users who incorrectly enter the domain name <dell4me.com> into their browser. This typo-piracy constitutes bad faith on the part of Respondent.

▪ The disputed Domain Names are confusingly similar to Dell’s marks and domain names. Respondent’s Domain Names will confuse customers, who will believe that the Domain Names are associated with Dell.

▪ Respondents registered the Domain Names long after Dell’s trademarks had become well known, and did so with knowledge of Dell’s superior, prior rights.

Respondent provided no Response, and the deadline for so doing expired on June 12, 2002. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a) of the Policy.

The Panel now considers this matter on the merits in light of the Complaint (uncontested as no response was filed), the Policy, the Rules, and other applicable authority.

Paragraph 4(a) of the Policy requires that Complainant prove, with respect to the Domain Names, each of the following:

(i) The domain name in issue is identical or confusingly similar to Dell’s trademark in issue; and

(ii) Respondent has no rights or legitimate interests in the domain name; and

(iii) The domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances of acts that for purposes of Paragraph 4(a)(iii) above would demonstrate registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the Domain Names for purposes of Paragraph 4(a)(ii) above.

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Names, such as use or preparation to use the Domain Names prior to notice of the dispute, being commonly known by the Domain Names, or making legitimate noncommercial or fair use of the Domain Names.

The Panel finds that Respondent’s Domain Names are confusingly similar to Dell’s trademarks. Dell has registered the trademark "DELL4ME" in the United States (Registration No. 2,425,829; see Annex D of the Complaint for a copy of the Certificate of Registration). Both Domain Names are variants of DELL4ME, formed by omitting one letter from the mark. Omitting one of the two "l"s results in <del4me.com> and omitting the "m" results in <dell4e.com>. Including the top-level domain ("TLD") designation <.com> in the domain name does not affect whether the domain name is confusingly similar. See, e.g., Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (stating that the "addition of the generic top-level-domain (gTLD) .com is without legal significance in determining similarity"). Previous WIPO decisions have held that domain names which differ from famous marks only by one letter may constitute "typo-squatting" or "typo-piracy." See, e.g., Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (July 21, 2000) (holding that an "Internet user or consumer viewing the term ‘microsof’ (or <microsof.com>) is likely to confuse it with the term ‘microsoft’ (or <microsoft.com>)"), and Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055 (December 12, 2001) (finding that the "Domain Name consists of Complainant’s world-famous SMIRNOFF Mark minus the final ‘F’. This mutilation of a famous mark or "typo-piracy" has been held on many occasions to remove none of the confusing similarity such a misspelling gives rise to"). Typo-squatting seeks to take advantage of errors by users in typing domain names into their Web browser’s location bar. Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive. It is not necessarily the case that alteration of a single letter will constitute typo-squatting; there may be legitimate trademark or domain name uses that happen coincidentally to differ from another’s legitimate use by a single letter. This, however, is not such a case. It is particularly persuasive that Respondent has adopted not one but two different domain names that differ from Complainant’s by only a single letter each. It is implausible in the extreme that this circumstance was merely coincidental – particularly, as discussed below, absent any evidence that either of these variants is legitimately owned marks of Respondent. Accordingly, given that the Domain Names differ from Dell’s mark only by one letter, and in a way that mimics typing errors by Internet users, the Panel finds that the Domain Names are confusingly similar to Dell’s trademark.

The Panel finds that Respondent has no rights or legitimate interest in the Domain Names. There is no evidence in the record that Respondent has any legitimate interests in the Domain Names. The Web sites at the Domain Names do not advertise or sell any goods or services, but only forward users to other sites. There is no evidence suggesting that Respondent is preparing to use the Domain Names to promote or sell goods or services, and such preparations seem implausible given the length of time elapsed since Respondent registered the Domain Names. Respondent does not use the Domain Names, or any variants of them, in its business name, and there is no evidence it is commonly known by the Domain Names. Finally, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Names. The fame, strength, and priority of use of Complainant’s marks, coupled with the Domain Names’ overwhelming similarity to Complainant’s marks and corporate name, and Respondent’s failure to advance any of the defenses provided in Paragraph 4(c) of the Policy lead this Panel to conclude that Respondent has no rights or legitimate interests in the Domain Names.

As guidance in determining whether the bad faith requirement is met, Paragraph 4(b) of the Policy sets forth four non-exclusive illustrations of fact patterns that can show registration and use of a domain name in bad faith.

The first illustrative scenario of bad faith is if Respondent has "registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name" (Paragraph 4(b)(i) of the Policy). The record contains no evidence that Respondent registered the Domain Names with intent to gain consideration greater than out-of-pocket costs from either Complainant or a competitor of Complainant. This fact pattern does not apply to Respondent’s conduct and hence does not establish registration and use in bad faith.

The second illustrative scenario of bad faith is if Respondent has "registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct" (Paragraph 4(b)(ii) of the Policy). The record contains no evidence that Respondent registered the Domain Names to prevent Dell from reflecting one of its marks in the Domain Names. While this scenario could apply to <dell4e.com>, which contains the DELL mark, it could not apply to <del4me.com>, which, although confusingly similar to the DELL4ME mark, does not contain any of Dell’s marks. Furthermore, it is not clear that registering two Domain Names amounts to a "pattern of such conduct." This illustration thus does not apply to Respondent’s conduct and therefore does not establish registration and use in bad faith.

The third illustrative scenario of bad faith is if Respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (Paragraph 4(b)(iii) of the Policy). The record contains no evidence that Respondent competes with Dell, nor that it registered the Domain Names to disrupt Dell’s business. Further, the names "American Clinic" and "Clinical Evaluations" do not seem to indicate an affiliation with the computer industry. As such, this fact pattern does not apply to Respondent’s conduct and thus does not establish registration and use in bad faith.

Finally, the fourth illustrative scenario of bad faith is if Respondent has "intentionally attempted to attract, for commercial gain, Internet users to your Web site 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 your web site or location or of a product or service on your web site or location" (Paragraph 4(b)(iii) of the Policy).

This Panel finds, first of all, that Respondent has attempted to attract Internet users to its Web site, which it then forwarded to other sites, by using Domain Names confusingly similar to Dell’s Web site <dell4me.com> and Dell’s marks DELL and DELL4ME. These Domain Names are unrelated to Respondent’s business names and do not appear to be related to its field of commerce. As discussed in Paragraph 5(b)(i) above, Respondent has engaged in typo-squatting by registering domain names that differ from a well-known domain name only in minor ways that mimic common typing errors by Internet users. This conduct constitutes bad faith conduct in itself. See, e.g., Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323 (June 12, 2000) (describing "typo-piracy" whereby bad faith operators deliberately misspell a famous domain name trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website"); Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970 (September 12, 2001) (finding "Respondent has demonstrated bad faith by engaging in ‘typo-piracy’ to confuse Internet users and draw them away from Complainant’s web site"); and Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 (September 25, 2000) (stating that the panel’s "findings that the Respondent intentionally registered domain names with a slight, but knowingly confusing, spelling difference are pertinent to determining whether Respondent has acted in good faith.") The Panel finds that Respondent has intentionally attempted to attract users to its site in bad faith through the use of confusingly similar domain names.

Secondly, the Panel further finds that Respondent did so for commercial gain. This aspect of the scenario is a closer question, as Respondent does not sell or advertise its own goods or services on the site. Furthermore, there is no evidence in the record of a contractual or other business relationship between Respondent and the owners of the sites to which Respondent’s site forwards users (for example, <mini-dish.com>, <TurboFind.com>, and <Engine54.com>). However, the factual record makes clear that Respondent deliberately forwarded users to at least two commercial sites. <Mini-dish.com> attempts to sell DIRECTV Satellite Systems to consumers, and <TurboFind.com> lists franchise opportunities such as "Mini-ATMs" and a "virtual marketplace." See Annexes K and L of the Complaint. Respondent clearly controls the destination web sites to which the Domain Names are being forwarded; indeed, it altered the destination site three times in two months. Such forwarding in itself can constitute bad faith use. See Edmunds.com, Inc. v. WWWEDMUNDS.com and DMUNDS.com, WIPO Case No. D2001-0937 (August 31, 2001) (finding that "the fact that users are automatically redirected to another site… is evidence of bad faith under paragraph 4(b)(iv) of the Policy"). Since Respondent is in default and has not contested any of Complainant’s factual allegations, these facts are taken as established. See Paragraphs 4(d) and 5(a) above. Given Respondent’s control over which sites it forwarded requests to, and the commercial nature of the sites it chose, the Panel infers that Respondent did so for commercial gain. Again, since Respondent is in default, the Panel may draw such inferences from the facts where appropriate. See Paragraph 14(b) of the Rules, and Paragraph 5(a) above. The Panel concludes that Respondent has intentionally attracted users to its site for commercial gain.

Third, the Panel finds that Registrant created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its site or the sites to which it forwarded users. Respondent’s Domain Names are confusingly similar to Complainant’s marks, and Respondent has engaged in typo-squatting. See Paragraph 5(b)(i) above. Internet users seeking to reach one of Complainant’s web sites might well be confused as to whether Complainant was associated with, sponsored, or endorsed the destination sites. Accordingly, the Panel finds Registrant created a likelihood of confusion by users with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the destination sites.

Finally, the Panel also finds that Respondent registered and uses the domain name <del4me.com> in bad faith by providing incorrect contact information for that domain name. Paragraph 2 of the Policy states that by "applying to register a domain name, or by asking us to maintain or renew a domain name registration, you [the registrant] hereby represent and warrant to us that… the statements that you made in your Registration Agreement are complete and accurate." The contact information provided pursuant to Respondent’s Registration Agreement was not complete and accurate. Complainant alleges that its attempt to deliver a copy of the Complaint to Respondent failed because the postal address listed in the WHOIS information for <del4me.com> was not correct. This contact address derives from the registration information. The Panel assumes that Complainant’s statement is correct based on Respondent’s failure to offer any alternative facts or explanation. See Paragraph 14(b) of the Rules. Falsifying contact information constitutes bad faith registration and use. See, e.g., World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256 (June 7, 2000). The integrity and effectiveness of the Policy, and of its dispute resolution mechanism, depend on registrants providing honest, complete, and accurate contact information. Failure to do so constitutes bad faith registration and use. Hence, the Panel finds that Respondent registered and used the domain name <del4me.com> in bad faith.

The record contains insufficient evidence to determine whether Respondent provided inaccurate information for the <dell4e.com> domain name. While Complainant alleges that the postal ZIP code for Clinical Evaluations’ mailing address is incorrect, there is no evidence in the record of failed deliveries to the Clinical Evaluations address at 1525 Broadway. As such, the Panel cannot conclude that the information is sufficiently inaccurate or incomplete to impair attempts to contact Respondent. The Panel does not find bad faith registration or use based on the WHOIS contact information provided for the <dell4e.com> domain name.

Based on Respondent’s intentional attempts to attract users to its site for commercial gain through forwarding requests and the likelihood of confusion from its confusingly similar Domain Names, and based on Respondent’s provision of incorrect contact information for the <del4me.com> domain name, the Panel finds that there is sufficient evidence to support Complainant’s allegation that Respondent has registered and used the Domain Names in bad faith.

In light of the above findings and analysis, the Panel decides that Dell has met its burden of proving: (1) the Domain Names are confusingly similar to marks belonging to Complainant; (2) Respondent has no rights or legitimate interest in the Domain Names; and (3) the Domain Names have been registered and are being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel requires that registration of the <dell4e.com> and <del4me.com> domain names be transferred to Dell.

Michael A. Albert
Sole Panelist

Dated: June 30, 2002