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Dell Inc. v. None [2004] GENDND 1102 (27 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Dell Inc. v. None

Case No. D2004-0511

1. The Parties

The Complainant is Dell Inc., Round Rock, Texas, United States of America, represented by Jones Day, United States of America.

The Respondent is None, Charlotte, North Carolina, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dellcomputersclone.com> (the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004. That day, the Center transmitted by e-mail to Tucows a request for registrar verification in connection with the Domain Name at issue. That same day, Tucows transmitted by e-mail 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 16, 2004. The Center verified that the Complaint, as amended, 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”). (The amended Complaint will be referred to hereinafter as the “Complaint.”)

In accordance with the Rules, paragraph 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 18, 2004. Respondent did not submit any response by that date. Accordingly, the Center notified Respondent of its default on August 19, 2004. That day, upon receipt of the Notification of Default, Respondent sent the Center an e-mail purporting to serve as his “reply” to the Complaint. The contents of this late and uncertified e-mail “reply” flunk the formal requisites of the Policy and Rules (to which Respondent agreed when registering the Domain Name). Nevertheless, in its discretion, the Panel admits this e-mail into the record as the “Response.” The weight of this slightly tardy, uncertified, and uncorroborated “Response” is, however, minimal, particularly in view of Respondent’s reference therein to “my lawyers.”

The Center appointed Robert A. Badgley as the Sole Panelist in this matter on August 25, 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

Complainant Dell Inc., f/k/a Dell Computer Corporation, claims to be the world’s largest direct seller of computer systems, with revenues over the past four quarters of approximately $43.5 billion. Founded in 1984, Complainant began using the name and mark “DELL” as a trade name, trademark and service mark in 1987. Since that time, Complainant claims to have 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 “www.dell.com.”

Complainant claims to own 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: 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

Copies of the USPTO Certificates of Registration for these marks are attached to the Complaint. Further, it is alleged -- and not disputed -- that the mark DELL and variations thereof are also registered by Complainant in more than 130 countries around the world.

Respondent registered the Domain Name on March 17, 2004. As of July 15, 2004, the Domain Name was “parked” at WEB.com.

5. Parties’ Contentions

A. Complainant

Complainant contends that, in May 2004, it became aware that Respondent had registered the Domain Name. On or about May 10, 2004, counsel for Complainant sent a letter to Respondent informing him that the registration of the Domain Name violated Complainant’s trademark rights and requested that Respondent cancel its registration of the Domain Name.

Complainant alleges that, in subsequent conversations and e-mail correspondence with counsel for Complainant, Respondent stated that he intended to use the “www.dellcomputersclone.com” website to sell clones of Dell computers. A copy of Respondent’s May 11, 2004 e-mail response to Complainant’s cease-and-desist letter (discussed below) is attached to the Complaint.

According to Complainant, a “clone” is normally considered to be a knock-off or look-alike product that, more often than not, violates the trademarks and/or trade dress of the genuine product. Thus, using the name “DELL” to identify or differentiate a clone computer clearly is an attempt to trade off of Complainant’s mark. Moreover, even if there were such a thing as a legitimate “Dell Computer Clone,” such a product would have to have all of the same components with the same quality, equal performance characteristics and lesser price than a genuine Dell computer. Otherwise, use of a domain name that implies that the site sells “clones” of Dell computers would be false representation. In support, Complainant cites Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404 (July 1, 2000) (while Respondent may be entitled to describe its products as being “clones” of Complainant’s products, “it does not follow that the Respondent . . . is therefore entitled to use the Complainant’s trademark as the Respondent’s domain name.”).

B. Respondent

As noted above, Respondent did not formally or appropriately reply to Complainant’s contentions. Rather, Respondent’s entire “Response” is set forth below in an August 19, 2004 e-mail to the Center:

“Dear Sirs:

All the allegations in this case against me are baseless and constitute harassment. The mere act of mine to register these domains [sic] does not constitute any criminal or fraudulent activity. These domains [sic] are not active and no commercial or non-commercial activity to harm the good name of Dell is being performed on these sites [sic].

In addition I have not offered these domains for sale to public or any individual via any means whatsoever.

You cannot prosecute anybody for buying a knife based on the premise that this person has bought a knife and is bound to commit a murder, this person who bought the knife has the innocent intentions of enjoying fresh fruits in the sanctity of his home.

Why did I register these domains? I have some good intentions and purposes to use these domains but I will do that only once I consult my lawyers and they assure me that I am not harming anybody’s commercial interest and not breaking any laws. There is no law which forces me to tell my intentions in advance and leak out my own business secrets. Therefore in the light of these facts please ask the complainant to stop this harassment and get on with his business and life.”

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

For the reasons discussed below, the Panel holds that Complainant has satisfied each of these elements and is entitled to the relief sought, namely, transfer of the Domain Name.

A. Identical or Confusingly Similar

Complainant’s rights in the mark DELL are clearly established. Complainant holds several USPTO registrations for the DELL mark. These DELL marks relate predominantly to computers, computer components and accessories, and computer-related services.

Respondent’s Domain Name, <dellcomputersclone.com>, incorporates both the strong, arbitrary mark DELL and the noun with which that mark doubtless is most closely associated, “computers.” If Respondent’s second-level domain ended there, at “dellcomputers,” the Policy’s “confusing similarity” standard would certainly be fulfilled.

The Panel pauses, though, at the word “clone” at the end of Respondent’s second-level domain. In his May 11, 2004 e-mail responding to Complainant’s cease-and-desist letter, Respondent argued: “The fact that this domain is named <dellcomputersclone.com> says that this is not a dell site and not owned and operated by Dell Corpt. [sic] The clone is not the original.”

This argument merits attention, but ultimately is not persuasive here. The dominant element of the Domain Name is the strong (and in all likelihood famous) mark DELL, which is followed immediately by the noun (“computers”) that best describes the goods and services provided by Complainant under that mark. By the time one reaches the word “clone,” one is clearly prepared to see something related to Complainant’s goods or services.i The word “clone” may well suggest to some that they are about to visit a site featuring something other than a Dell computer, but others might not reach the same conclusion. There remains, notwithstanding Respondent’s assertion, considerable room for confusion as to the source, sponsorship, affiliation, or endorsement of the offerings one may expect to find at the corresponding website.

Indeed, the very allure of this Domain Name -- assuming it was ultimately intended to resolve to a website selling Dell clones -- is that it trades on the renown of the DELL mark. To sell Dell clones (whether legitimately or otherwise) is presumably different from selling, say, Compaq clones. The presence of the DELL mark in this Domain Name must have some value as a signal to potential customers.

Finally, it bears noting that at least one other WIPO panel has found “confusing similarity” in circumstances involving a “trademark + clone” domain name. See Institut Straumann AG v. Core-Vent Corporation, WIPO  Case No. D2000-0404 (July 1, 2000) (involving <straumann-clone.com>). In a similar vein, see G.D. Searle & Co. v. Flynn, NAF Case No. FA128644 (December 17, 2002) (finding <genericcelebrex.com> to be “confusingly similar” to complainant’s “CELEBREX” mark); Bank of America v. Beitler, NAF Case No. FA161463 (July 24, 2003) (transferring <bankofamericaforeclosures.com>; “A domain name that appends a trademark to a common term that does not obviously disassociate the domain name from the mark normally will be deemed confusingly similar to the mark. While ‘foreclosures’ may not be strictly within the classes of services offered by Complainant, the concept is sufficiently closely related to Complainant’s business to create a likelihood of confusion.”). In each of these cases, there was appended to a well-known mark a word (“clone,” “generic,” “foreclosures”) that arguably suggested that the corresponding website offered something other than the good or service traded under that mark. However, “confusing similarity” was found in each instance because the appended word was not powerful enough to overcome the strong mental association created by the mark itself.

Given the strength and renown of Complainant’s mark and the initial interest engendered by the combination “dellcomputers,” the word “clone” (placed, it is worth noting, at the end of the second-level domain) is not sufficient to overcome the overall -- and confusing -- similarity between the mark and the Domain Name. In sum, although it is by no means an obvious conclusion, the Panel finds that Complainant has satisfied Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).

Respondent did not trouble to file a formal (or, more importantly, substantive) response in this proceeding, and has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name. Indeed, in his August 19, 2004 e-mail to the Center, Respondent expressly declined to do so.

Respondent also admitted in his May 11, 2004 e-mail to Complainant that he had “not even started to build [his] website,” and expressed his willingness to “cancel” his registration of the Domain Name.

Respondent does assert, in his May 11, 2004 e-mail to Complainant, that he had conducted a USPTO search and found, in addition to marks owned by Complainant, numerous marks owned by third parties that include the word “Dell.” The implication is that Complainant does not enjoy a monopoly over the word “Dell.” This truism is of little assistance to Respondent, however. By adding the word “computers” to his Domain Name, Respondent was clearly using the word “Dell” in the sense of Complainant’s mark, and not in some innocuous generic sense.

The Panel rules that Complainants have shown, and Respondent has not denied that the Respondent lacks any “rights or legitimate interests” in respect of the Domain Name for purposes of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that 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; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

With respect to the “bad faith” element, the Panel first observes that Respondent clearly had Complainant’s well-known mark in mind when registering the Domain Name. The very presence of the word “computers” in the Domain Name confirms this.

Further, as discussed above in the “confusing similarity” context, Respondent selected a domain name well suited to trade on the fame of Complainant’s mark. There is simply no ignoring the fact that the word “Dell” carries distinction and drawing power for a website that sells computer-related goods or services.

Complainant alleges, and Respondent does not deny, that Respondent said he intended to use the Domain Name for a site “to sell clones of Dell computers.” The Panel has no reason to doubt this certified allegation, particularly since it is difficult to imagine a sensible alternative use of a domain name entitled <dellcomputersclone.com>.

As respects the use of the Domain Name in “bad faith,” the lack of any active use of the Domain Name is not fatal to Complainant’s case. First, it has already been found that Respondent intended to use the Domain Name to sell Dell clones, thus trading on the renown of Complainant’s mark.

Second, it has been established in many WIPO decisions that “passive use” may constitute “bad faith” use of a domain name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). As in Telstra, the present case involves a distinctive -- and probably famous -- mark. Moreover, in the present case it is established that Respondent intended to trade on the fame of Complainant’s mark.ii The fact that Respondent has not yet pressed the Domain Name into its intended service does not prevent a finding that Respondent has “intentionally attempted to attract, for commercial gain, Internet users …by creating a likelihood of confusion” with Complainant’s mark within the meaning of Policy, paragraph 4(b)(iv). Under these circumstances, there is simply no reason to wait until Respondent has carried out, to Complainant’s detriment, his stated intentions of commercial use.

The Panel concludes that Respondent’s registration and use of the Domain Name constitutes “bad faith” within the meaning of Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <dellcomputersclone.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist

Dated: August 27, 2004

i The Panel notes that, in lieu of “clone,” a strikingly distinct word (such as “sucks”) would have presented an altogether different issue.

ii Although the Panel wonders why a legitimate business would use the moniker “None” as its domain name “registrant” name, this fact is of marginal significance here. When Complainant sought to reach Respondent with its cease-and-desist letter, it succeeded. This is not a case of patently false or evasive registrant contact information giving rise to an inference of “bad faith.