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Dell Inc. v. Horoshiy, Inc. [2004] GENDND 1480 (18 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Horoshiy, Inc.

Case No. D2004-0721

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 Horoshiy, Inc., Curacao, Netherlands Antilles, Netherlands.

2. The Domain Names and Registrar

The disputed domain names are: <dellalo.com>, <dellfianancialservices.com>, <dellfinacialservice.com>, <dellsex.com>, <dellupdates.com>, <dell4memyway.com>, and <rebatedell.com> are registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2004. On September 8, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On September 15 and September 21, 2004, NameKing.com 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 contacts of the disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 24, 2004. The Center verified that the Complaint together with the amendment to 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 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2004.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 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.

On September 30, 2004, the Complainant’s representatives submitted a request to the Center for a further seven domain names to be added to the Complaint. On October 1, 2004, the Center informed the Complainant’s representatives that the Rules did not explicitly provide for such a request and that accordingly the Center would transmit this to the Panel when duly appointed. Following consideration of the Complainant’s request, the Panel drafted a detailed Procedural Order providing for, among other matters, amendment to the Complaint and subsequent notification to the Respondent. On November 5, 2004, prior to the issuing of this Procedural Order, the Complainant’s representatives withdrew their request for amendment. Consequently, the Panel now proceeds to a decision on the originally amended Complaint as filed on September 24, 2004.

4. Factual Background

The Complainant, formerly known as Dell Computer Corporation, is a well-known direct seller of computer systems. The Complainant was founded in 1984, and began using the name and mark DELL as a trade name, trademark and service mark in 1987, in connection with a wide range of computer related goods and services. In addition, the Complainant offers its goods and services on-line through such websites as “www.dell.com”.

The Complainant conducts business on the Internet through numerous “DELL” domain names, including <dell.com>, <dellfinancialservices.com>, <dell.rebatestatus.com>, <dell4me.com>, <dellsupport.com>, <wwwdell.com>, <e-dell.com>, <dellcomputers.com>, <delldirect.com>, <dellbrowser.com>, <dellfactory.com>, <dellwebpc.com>, <dellauction.com>, <dellauctions.com>, <dellplus.com>, <dellexchange.com>, <dellpoweredge.com>, <dellprecision.com>, <delllatitude.com>, <delldimension.com>, <dellselectcare.com> and others. The earliest domain name, <dell.com>, was registered on November 22, 1988.

The Complainant owns more than thirty United States trademark registrations and applications for the term DELL, both with and without another term, together with similar registrations in more than 130 countries around the world. The Complainant’s marks combining DELL with another term include the registered marks DELL FINANCIAL SERVICES, DELL DIMENSION and DELL PRECISION.

The Respondent registered the following disputed domain names on the following dates:

<dellalo.com> registered on July 20, 2004;

<dellfianancialservices.com> registered on May 10, 2004;

<dellfinacialservice.com> registered on July 13, 2004;

<dellsex.com> registered on July 20, 2004;

<dellupdates.com> registered on June 16, 2004;

<dell4memyway.com> registered on August 13, 2004; and

<rebatedell.com> registered on August 11, 2004.

On July 19, 2004, the Complainant’s representatives sent a letter and email to the Respondent stating that the registration of <dellfianancialservices.com> violated the Complainant’s trademark rights and requesting that the Respondent transfer the domain name to the Complainant. The Respondent did not reply to these communications. On August 26, 2004, having learned of the other disputed domain names, the Complainant’s representatives sent a second letter and email to the Respondent seeking transfer to the Complainant of all of the disputed domain names except <dellalo.com>. The Respondent did not reply to those communications.

A popup box on the website to which the disputed domain name <dellfianancialservices.com> pointed, entitled “About Horoshiy domains”, stated that the Respondent did not intend to hold domain names which were properly the property of someone else, that it was the Respondent’s company policy to transfer any domain name to any person that, in the Respondent’s reasonable opinion, had a legitimate legal claim to that domain name and that if any such person demonstrated such a claim the Respondent would transfer the relative domain name. The box went on to provide that the Respondent does not sell domain names and has acquired domains utilizing automated programs. The site invited contact by email to a specific address and stated that a representative would respond promptly. Both of the Complainant’s representative’s communications were addressed to the Respondent’s stated email address. No representative of the Respondent has responded to the Complainant or its representatives.

5. Parties’ Contentions

A. Complainant

The Complainant’s revenues over the past four quarters were approximately $45.4 billion. The Complainant spends millions of dollars each year in advertising and promoting its trademarks, products, services and image, thereby creating substantial goodwill in the marketplace. During the 2003 fiscal year alone, the Complainant spent over $426 million in advertising and promotion. As a result of these efforts, the Complainant’s DELL mark has become an asset of tremendous value to the Complainant.

Over the years, the Complainant has offered a variety of goods and services over the Internet, including computer hardware, software and peripherals, customer service and support, domain registration, web hosting and network security services. The Complainant’s Internet presence is extremely important to its business; by the end of fiscal year 2000, Internet sales to its customers reached nearly 50 percent of its revenue and averaged $40 million per day.

The disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. If a domain name incorporates a famous mark in its entirety, it is confusingly similar to that mark despite the addition of other words.

The Respondent has registered the disputed domain names to capitalize from Internet users searching for the Complainant, or any of the numerous computer-related services offered by the Complainant over the Internet. Such use does not confer rights or legitimate interests upon the Respondent.

The Complainant operates websites under names that are very similar to some of the domains illegitimately registered by Respondent, including:

<dellfinancialservices.com>, which offers various financial services and financing to small businesses and consumers;

<dell.rebatestatus.com>, which provides the Complainant's customers with a way to submit and track rebate submissions;

<www.dell4me.com> which resolves to the <dell.com> website and offers the Complainant's computers and peripherals for sale; and

<support.dell.com> which offers updates and technical support for the Complainant's products.

The disputed domain names are used for “click-through” revenue generating sites which provide income to Respondent by inducing Internet users to click through to sponsored links. The Respondent’s use of multiple domain names containing the Complainant’s famous trademarks merely to capture the Complainant's customers who are seeking the Complainant’s products and/or services and to re-direct them to other websites is neither legitimate, nor good faith, use of these domains. 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).

Given the strength and fame of the Complainant’s DELL marks, the Respondent's use of the various disputed domain names will confuse consumers into believing that these domain names are associated with the Complainant. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. When a domain name is obviously connected with a Complainant and its products, its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”.

The Respondent registered the disputed domain names long after the Complainant’s mark had become famous and with full and complete knowledge of the Complainant’s superior and prior rights.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that the following three elements are present:

(i) The domain names are 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 in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel has disregarded the top level domain ‘.com’ for the purposes of comparison of each of the disputed domain names with the marks of the Complainant on the basis that this is a wholly generic element of a domain name.

Considering the matter objectively, based on the likelihood of confusion with the Complainant’s trademarks which are undoubtedly well-known worldwide, the Panel is satisfied that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. Each of the disputed domain names consists of the mark DELL together with additional words or phrases, with the exception of <dellalo.com>. This on its own would be sufficient to show confusing similarity and the Panel accepts the Complainant’s general submission that if a domain name incorporates a famous mark in its entirety, it is confusingly similar to that mark despite the addition of other words.

Furthermore, the Panel accepts the Complainant’s additional submission that <dellfianancialservices.com> and <dellfinacialservice.com> are very similar to the Complainant’s domain name <dellfinancialservices.com>; <rebatedell.com> is very similar to the Complainant's third and second level domain name <dell.rebatestatus.com>; and <dell4memyway.com> is very similar to the Complainant's third and second level domain name <www.dell4me.com>.

The position regarding the disputed domain name <dellalo.com> is slightly less straightforward. This domain name constitutes the addition of three letters to the Complainant’s DELL mark. The Panel is unaware of any meaning or significance to the three letters 'alo' but in any event, the Panel considers that the term ‘dellalo’ taken as a whole does not create a generic or descriptive term that would allow it to be clearly distinguished from the Complainant’s mark.

In these circumstances, the Complainant has successfully proved that each of the disputed domain names is confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any legitimate rights or interests in the disputed domain names. The Panel accepts the Complainant’s contention that Respondent’s use specifically targets the Complainant’s famous DELL mark, without the Complainant’s permission, to derive revenue from it. This is not a bona fide offering of goods or services, or a legitimate non-commercial or fair use. There is no evidence that the Respondent has been commonly known by any of the disputed domain names.

The Complainant has raised a prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names. The Respondent has chosen not to answer any of the Complainant’s submissions. Neither did the Respondent answer the Complainant’s representatives’ initial communications. Under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences from the Respondent’s failure to respond to the administrative proceeding as it considers appropriate. The Panel draws the inference that had the Respondent had any rights or legitimate interests in the disputed domain names it would have provided evidence of these by way of a response to the Complaint.

The Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the domain names in bad faith, to attract, for commercial gain, Internet users to the relative websites by creating a likelihood of confusion with the Complainant. The Complainant’s submissions and evidence are highly suggestive of the fact that the Respondent registered the disputed domain names for the purpose of, and is engaged in “typosquatting.” In the view of the Panel, this constitutes a prima facie case of registration and use in bad faith. The Respondent has chosen to provide no explanation as to its conduct within the context of this administrative proceeding.

Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and has used the disputed domain names 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 names, <dellalo.com>, <dellfianancialservices.com>, <dellfinacialservice.com>, <dellsex.com>, <dellupdates.com>, <dell4memyway.com> and <rebatedell.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist

Dated: November 18, 2004