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Dell Inc. v. Pateh Mbowe [2004] GENDND 1337 (20 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Pateh Mbowe

Case No. D2004-0689

1. The Parties

Dell Inc. is the Complainant in this matter. The company is represented by the Jones Day law firm in Columbus, Ohio, United States of America.

The Respondent is Mr. Pateh Mbowe of Atlanta, Georgia, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <delltechnologies.com>, is registered with Register.com.

3. Procedural History

On August 30, 2004, Dell Inc. filed its Complaint via email with the WIPO Arbitration and Mediation Center (the “Center”). Two days later the hard copy arrived in Center’s mailbox. On August 31, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. Acting with admirable efficiency, Register.com transmitted on that same day its verification response confirming that Respondent Pateh Mbowe is listed as the registrant and providing the details for the administrative, billing, and technical contacts. 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 September 6, 2004. Pursuant to the Rules, paragraph (5)(a), the due date for the Response was September 26, 2004. The Respondent did not submit any response. Accordingly, on September 27, 2004, the Center notified the Respondent of his default.

The Center appointed Steven L. Snyder as the sole panelist in this matter on October 7, 2004; the Panel thereafter 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

In 1984, while enrolled at the University of Texas in Austin, Mr. Michael Dell founded a company to manufacture computers and sell them directly to consumers. Twenty years later, Dell Inc. (“Dell”) has yearly sales of more than 45 billion dollars and Mr. Dell likely could purchase his alma mater.

The Complainant has become a frequent patron of the United States Patent and Trademark Office. It has applied to register more than 170 marks with that agency. Included in its roster are numerous registrations for DELL (see reg. nos. 1498470, 1616571, 1860272, 2236785) and registrations which incorporate the DELL trademark. The latter group includes WWW.DELL.COM (reg. no. 2390581), DELL DIMENSION (reg. no. 2030084), DELL FINANCIAL SERVICES (reg. no. 233902) and DUDE, YOU'RE GETTING A DELL! (reg. no. 2786233).

The DELL trademark is becoming ubiquitous. It appears on the company’s numerous products, which are distributed around the world, and is prominently featured in an advertising campaign that reportedly cost more than US $425 million in the 2003 fiscal year.

As befits a computer company, Dell has employed the Internet to both advertise and sell its goods. In November 1988, the company registered <dell.com>. Since then, Dell has registered numerous other domain names, including <dellcomputers.com>, <delldirect.com>, <e-dell.com> and, of course, <dudeyouregettingadell.com>. The company’s main website has grown into a very important sales tool for the company, reportedly averaging sales of US $40 million per day.

On April 4, 2004, long after Dell became a behemoth, Respondent; Pateh Mbowe registered the domain name <delltechnologies.com>. Then, as now, the domain name leads to a website that greets the visitor with this message: “Hello and welcome. I am for Sale !!!” Underneath this large headline appears the following text: “We are an Atlanta based company that specializes in selling domains and getting you started on your website(s). This site is independently owned and operated by Domain Group International, where, ‘We Know Exactly What you are Thinking.’”

The Complainant’s attorney sent him a cease-and-desist letter on May 20, 2004. In that missive, Complainant’s attorney outlined Dell’s trademark rights, accused Mr. Mbowe of infringing those rights, suggested that he cancel registration of <delltechnologies.com> or face the “maximum penalties imposed by law,” and gave him three days to respond.

Four days later, Mr. Mbowe replied by email. He argued that “the word DELL is a common dictionary word meaning a secluded valley” that “can’t be exclusively protected.” Nonetheless, he was willing to transfer the domain name to Dell if the company would “be a little reasonable to at least offer something to me due to the time and resources I have invested in securing this domain. Nothing hugh [sic], just be reasonable . . . .”

Taking Mr. Mbowe at his word, Dell responded with nothing huge. It offered to reimburse Respondent for his out-of-pocket costs, “in an amount not to exceed $100.” Respondent did not reply to the offer and Dell instituted this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that <delltechnologies.com> is confusingly similar to the DELL and DELL-derivative trademarks. The Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name: Respondent is not affiliated with Dell and is not using the “www.delltechnologies.com” website to offer any technical information on Dell products and services. Instead, his website simply offers visitors the chance to purchase the domain name.

Not surprisingly, the Complainant believes Respondent has registered and used the domain name in bad faith. This is shown, Complainant argues, by Respondent’s “business plan.” Dell characterizes that plan as being the registration of multiple domain names containing famous marks for the express purpose of offering them for sale to third parties for financial gain. Accordingly, Complainant requests that the <delltechnologies.com> be transferred to its possession.

B. Respondent

Mr. Mbowe chose not to file a response to the Complaint. That fact alone does not guarantee the outcome in this case. The Panel has an obligation to review the evidence to determine whether the Complainant has met its burden of proof. See Swissvoice ag v. Chan chin sung, WIPO Case No. D2004-0672 (“The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.”). Nevertheless, a Respondent’s failure to respond leaves the Panel free to “draw such inferences therefrom as it considers appropriate.” See Rules, paragraph 14(b).

6. Discussion and Findings

The Policy sets forth three elements a complainant must prove in order to prevail. They are as follows: (1) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and is being used in bad faith. See Policy, paragraph 4(a). Dell has proved each of those elements.

A. Identical or Confusingly Similar

Though not an identical twin to any of Dell’s trademarks, the disputed domain name would most likely be considered part of the family. Dell has used and registered numerous trademarks incorporating the DELL mark. The <delltechnologies.com> domain name simply takes the famous DELL mark and adds on the word “technologies.”

Dell is a technology company; its entire business is built around such high-tech items as computers, computer printers and LCD televisions. The addition of the word “technologies” to the DELL trademark does not lessen confusion, it only increases it. See Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410 (holding that the addition of “atlanticcity.com” to BALLY’S trademark did not lessen likelihood of confusion when complainant operated a casino in Atlantic City).

B. Rights or Legitimate Interests

To their great disappointment, trademark owners cannot control all uses of their marks. It certain circumstances, a respondent may legitimately use a complainant’s mark in a domain name. The Policy outlines at least three scenarios under which a respondent may have a right or legitimate interest in a domain name which contains the complainant’s mark. See Policy, paragraph 4(c). The facts of the current proceeding do not fit in any of those scenarios.

First, there is no evidence that Respondent had made any preparations to use <delltechnologies.com> in connection with a bona fide offering of goods or services prior to receiving Dell’s cease-and-desist letter. Then, as now, the only use Respondent has made of the disputed domain name is to advertise “an unbelieveable [sic] pool of domains” for sale.

Second, no proof has been brought forward that Mr. Mbowe or his business, the Domain Group International, is commonly known as Dell Technologies.

Third, the Respondent’s website does not make a legitimate noncommercial or fair use of the domain name. His site is not devoted, for example, to explaining or criticizing or applauding Dell’s technology. Instead, it is devoted to making money off the sale of a domain name containing Dell’s trademark.

Nothing in the record suggests that Mr. Mbowe has a right or legitimate interest in <delltechnologies.com>. Much suggests the contrary is true. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO case no. D2000-0163 (ordering transfer of domain name used to advertise “a whole bunch of Great Domain Names”).

C. Registered and Used in Bad Faith

In determining whether a respondent registered and used a domain name in bad faith, the Policy lists a variety of circumstances. See Policy, paragraph 4(b). Top on that list is evidence indicating that the respondent registered the domain name primarily for the purpose of selling it to the complainant for an amount in excess of that required to register the domain name. See Policy, paragraph 4(b)(i).

In this instance, the Respondent clearly registered the domain name primarily for the purpose of selling it. His website proclaims that his company “specializes in selling domains.” It is reasonable to assume that the Respondent intended for those sales to be at a profit. After all, Complainant offered to reimburse Mr. Mbowe for the out-of-pocket expenses he incurred in registering <delltechnologies.com>.

Though Complainant capped its offer at US $100, that sum would almost certainly have compensated Mr. Mbowe for the costs of registering the domain name. Respondent’s refusal to accept Dell’s offer indicates bad faith. Cf. Freddy Adu v. Frank Fushille, WIPO Case No. D2004-0682 (“The most offensive act of a cybersquatter is to hold another’s mark for ransom.”).

Against this evidence, the only defense offered by Mr. Mbowe is found in his email to Dell. In that email, he argued that the word “dell” cannot be “exclusively protected” because it is a “common dictionary word meaning a secluded valley.” If Mr. Mbowe’s position was the law, it would that mean that no word could serve as a trademark if that word was also found in the dictionary. This would be a nasty surprise for such companies as Apple computers and Delta airlines. But such is not the case. While Mr. Mbowe may frolic in dells to his heart’s content, under the Policy he cannot use Dell’s trademark as part of his domain name.

7. Decision

For all the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <delltechnologies.com> be transferred to the Complainant.

Steven L. Snyder
Sole Panelist

Date: October 20, 2004