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Dell Inc. v. George Dell and Dell Net Solutions [2004] GENDND 1110 (24 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Dell Inc. v. George Dell and Dell Net Solutions

Case No. D2004-0512

1. The Parties

The Complainant is Dell Inc., a Delaware corporation with its principal place of business at Round Rock, Texas, United States of America. The Complainant is represented herein by the law firm of Jones Day, Columbus, Ohio, United States of America.

The Respondents are George Dell and Dell Net Solutions, Jupiter, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dellnetsolutions.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2004. On July 13, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 13, 2004, eNom 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on July 20, 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”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Amended Complaint (hereinafter referred to as the “Complaint”), and the proceedings commenced on July 21, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 10, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2004.

The Center appointed William R. Towns as the Sole Panelist in this matter on August 17, 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

The Complainant is a well-known direct seller of computer systems. Founded in 1984, 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 mark in connection with a wide range of computer related goods and services, and currently owns more than thirty United States trademark registrations and applications containing the term DELL. The Complainant also conducts business on the Internet through numerous “DELL” domain names, including <dell.com> and <dellnet.com>. The earliest of these domain names, <dell.com>, was registered by the Complainant on November 22, 1998. The Complainant registered the domain name <dellnet.com> on January 27, 1999.

The Respondents registered the disputed domain name <dellnetsolutions.com> on February 19, 2004, using fictitious contact information. The email address provided for the administrative contact (“test guy”) was sdfsdf@sdfdsf.com. The domain name <sdfdsf.com> is registered to one Henry Chan, whom the Panel notes has been a respondent in a large number of WIPO Administrative Panel Decisions and other UDRP-based decisions in which he has been found to have registered and used the disputed domain names in bad faith. See, e.g., Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430.

On April 16, 2004, The Complainant contacted the Respondent George Dell by email, insisting that the Respondent cancel the domain name <dellnetsolutions.com>. On April 17, 2004, George Dell responded, refusing to cancel or transfer the disputed domain name, and stating that he had started a web design business. The Respondent claimed that he had invested money in brochures and business cards with the name “Dellnet Solutions,” and that it would be “very costly” for him to change his name and cancel the disputed domain name.

Nevertheless, on April 24, 2004, the Respondent George Dell and Web Designs Box registered the domain name <webdesignsbox.com>. This domain name resolves to the website for Web Designs Box, which by all indications is Respondent George Dell’s website design business. There is no evidence that Respondent has ever conducted his website design business under the name Dellnet Solutions, and in his email communication of April 17, 2004, the Respondent conceded that his business website was not operational at the time he was contacted by the Complainant on April 16, 2004.

The Respondent also admitted in his April 17, 2004, email that he had provided false information when initially registering the disputed domain name, which he claimed he had done to conceal the fact that he was starting of a website design business from a former business partner. He denied any knowledge of Henry Chan, but offered no explanation why his fictitious administrative contact involved a domain name registered to Mr. Chan.

5. Parties’ Contentions

A. Complainant

The Complainant, founded in 1984, began using DELL as a trade name, trademark and service mark in 1987. The Complainant now owns more than thirty United States registrations and applications containing the term DELL, including various combination marks, and has registered the DELL mark or variations thereof in more than 130 countries. The Complainant also conducts business on the Internet through numerous “DELL” domain names, the earliest of which, <dell.com> was registered by the Complainant on November 22, 1988.

The Complainant states that it is the world’s largest direct seller of computer systems, with revenues over the past four quarters of approximately $43.5 billion. The Complainant’s online Internet sales have and continue to comprise a substantial part of its revenues. The Complainant has made extensive use of its DELL mark in connection with a wide range of computer related goods and services, spending millions of dollars annually promoting and developing goodwill in its DELL trademarks and service marks and products and services designated by these marks. The Complainant maintains that it spent over $426 million during 2003 alone in such advertising and promotion. Accordingly, the Complainant argues that DELL is a well-known or famous mark.

The Complainant contends that the disputed domain name <dellnetsolutions.com> is confusingly similar to its DELL mark, and that Respondents registered and are using the disputed domain name in bad faith to capitalize on the famous DELL mark, and misleadingly divert Internet users to the Respondents’ website for commercial gain. The Complainant alleges this constitutes bad faith under Paragraph 4(b)(iv) of the Policy, and contends that the Respondents’ use of fictitious contact information is further indicia of bad faith. The Complainant also asserts that bad faith can be inferred from the Respondents’ apparent association with Henry Chan, who the Complainant characterizes as “a well-known cyber pirate.”

The Complainant alleges that the Respondents lack legitimate interests or rights in the disputed domain name. First, the Complainant has not licensed or authorized the use of the DELL mark in connection with the Respondents’ domain name or business. Second, the Complainant argues that, even assuming the legal surname of one of the Respondents is Dell, the Respondents’ business is not operated under the “Dell” surname and has never been known by that surname. Thus, the Complainant reasons the Respondents’ use of the disputed domain name is not legitimate, but is instead calculated to falsely suggest to Internet users that the Complainant is affiliated with the Respondents’ website or business.

For these reasons, the Complainant seeks to have the disputed domain name transferred.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names.” Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name are the sole remedies provided to the complainants under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. Since Paragraph 4(a)(iii) requires the Complainant to prove that the domain name has been registered and is being used in bad faith, a number of Panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing under Paragraph 4(a)(iii). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the Respondents’ domain name is confusingly similar to Complainant’s DELL mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainant indisputably has established rights in the DELL mark. Previous panels have held that, if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous examples of decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., SBC Communications, Inc. v. Fred Bell a/k/a Bell Internet, WIPO Case No. D2001-0602 (“net,” a common descriptive word for Internet, added to mark BELL in <bell-net.com>); Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>). See also Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates complainant’s mark).

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized the Respondents to use the DELL mark in connection with the conduct of the Respondents’ business or as part of Respondents’ domain name. Nevertheless, the Respondents have registered the domain name <dellnetsolutions.com>, which incorporates in its entirety the Complainant’s distinctive DELL mark. Further, there is evidence that the Respondents have used the disputed domain name to direct Internet users to the Respondents’ business website. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondents lacks rights or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a Complainant makes a prima facie showing that a Respondent lacks rights to the domain name at issue, the Respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

While the Respondent has not provided a reply to the Complainant’s contentions, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondents of rights or legitimate interests in the disputed domain name.

Regarding Paragraph 4(c)(i), The Respondent George Dell has conceded that the website for his business was not operational when he received notice of the dispute. But he has claimed that he was preparing to use the disputed domain name in connection with his business website before he received such notice. However, since the Respondents chose not to file a Response in this proceeding, there is no evidence in the record to substantiate this claim. Moreover, notwithstanding this claim, within a week of receiving notice of the dispute, the Respondent registered and began using the domain name <webdesignsbox.com> in his business. Thus, the record reflects neither the Respondents’ use nor the Respondents’ demonstrable preparations to use the disputed domain name in connection with the offering of goods or services at any time prior to notice of the dispute.

Further, the critical inquiry under Paragraph 4(c)(i) is whether the Respondents were using or making demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the mark under Paragraphs 4(a)(iii) and 4(b). See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith. As discussed further below, the Panel concludes that the Respondents have not used the disputed domain name in connection with a bona fide offering of goods or services, because the circumstances at hand indicate the Respondents’ registration and use of the disputed domain name was not in good faith.

Regarding Paragraph 4(c)(ii), there is no evidence that the Respondents have been commonly known by the disputed domain name. Accordingly, the Panel cannot conclude that the Respondents’ have rights or legitimate interests in the domain name simply because Dell is (or may be) the legal surname of one of the Respondents. As discussed above, there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name. In addition, the Complainant has made a substantial showing that the DELL mark is a well known or famous mark in the United States, and given the strength of the DELL mark, the Respondents’ use of the disputed domain name seems calculated to falsely suggest to Internet users that the Complainant is affiliated with the website. See SBC Communications, Inc. v. Fred Bell a/k/a Bell Internet, WIPO Case No. D2001-0602. See also Houghton Mifflin Co. v. Weathermen, Inc., WIPO Case No. D2001-0211.

The Panel concludes for the reasons stated above that the Respondents have no rights or legitimate interests in the disputed domain name. Further, the Panel finds that the Respondents sought to trade on the good will and reputation of the Complainant by incorporating the entirety of the DELL mark into the disputed domain name, and then using the disputed domain name to direct Internet users to the Respondents’ website. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith.” See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (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;

(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt 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 the Respondent’s website or location or of a product or service on its website or location.

As noted above, the Panel has concluded that the Respondents had knowledge of the DELL mark at the time of registration of the disputed domain name. The Panel concludes that the Respondents’ primary intent in registering and using the disputed domain name, which incorporates the DELL mark in its entirety, was to trade on the Complainant’s good will and reputation by creating a likelihood of confusion with the Complainant’s mark and the Respondents’ website and web design business.

Accordingly, the Panel finds from the circumstances that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website and web design business. Pursuant to Paragraph 4(b)(iv), this constitutes evidence of bad faith registration and use of the disputed domain name for purposes of Paragraph 4(a)(iii). See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453; Bodegas Vega Sicilia, S.A. v. Serafín Rodrígues Rodrígues, WIPO Case No. D2001-1183; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038; eBay Inc. v. Sunho Hong, WIPO Case D2000-1633; and, Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Under the circumstances of this case, the Panel finds that the Respondents’ initial efforts to conceal their true identity when registering a domain name incorporating the Complainant’s DELL mark, given the strength and reputation of that mark, also constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

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 <dellnetsolutions.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: August 24, 2004