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Appraisal Institute, Inc. v. David Aldredge [2005] GENDND 344 (5 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Esprit7258

Case No. D2004-1026

1. The Parties

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

The Respondent is Esprit7258 of Glendale, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <dell4us.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2004. On December 8, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On December 9, 2004, Tucows 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 and technical contact. 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 December 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2005.

The Center appointed Steven Fox as the sole panelist in this matter on February 10, 2005. 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 began using the name and mark DELL as a trade name, trademark and service mark in 1987. Complainant has used DELL as a standard character mark on its own and in various styles and combinations, more than thirty of which are federally registered (or pending). Complainant uses the marks in connection with a wide range of computer-related goods and services. DELL, in standard characters, was federally registered on October 9, 1990. One of the combinations is DELL4ME, which was federally registered on January 30, 2001.

Respondent had been affiliated with Complainant as a Dell Home Systems affiliate, earning money by directing business to Dell's websites that feature home and home office products, such as “www.del14me.com.” Respondent did not, however, have authority to use DELL or any of Complainant’s marks.

Respondent registered <dell4us.com> on June 22, 2004. In July 2004, Dell became aware that Respondent had registered the <dell4us.com> domain name. Counsel for Dell wrote Respondent July 19, 2004, asserting that <dell4us.com> violated Dell's trademark rights and requested transfer the domain name to Dell. Respondent did not transfer <dell4us.com> to Complainant. Respondent emailed Complainant’s counsel a response on July 19, 2004, stating: “I changes [sic.] my website name about 3 days ago from <dell4us.com> to ‘Cheapairlinetickets4you.com’. This change was implented [sic.] yesterday and I do not use the website domain name <dell4us.com>.”

5. Parties’ Contentions

A. Complainant

Complainant contends that <dell4us.com> is confusingly similar to Dell’s family of DELL marks and domain names, including DELL4ME and <dell4me.com>, asserting: “If a domain name incorporates a famous mark in its entirety, ‘it is confusingly similar to that mark despite the addition of other words.’” Complainant contends that Respondent registered the <dell4us.com> domain name to misdirect traffic from the “www.dell4me.com” website to Respondent’s “www.trafficsecrets.com” and “The Internet Marketing Center.” Complainant also contends that Respondent has no legitimate interest in the <dell4us.com> domain name because Respondent is not a licensee of, or otherwise currently affiliated with, Dell.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules states: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since all parties are domiciled in the United States, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: “(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the 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.”

A. Identical or Confusingly Similar

Respondent’s domain name is identical or confusingly similar to Complainant’s DELL4ME and DELL marks. The marks themselves are nearly identical. The dominant feature of the marks is DELL. The primary significance of the term DELL4US is ‘DELL’. The marks are confusingly similar because they have significant similarities in sound, appearance and commercial impression.

B. Rights or Legitimate Interests

Respondent does not have rights or legitimate interests in the domain name. Respondent uses the domain name to direct traffic to “www.trafficsecrets.com” and “The Internet Marketing Center,” neither of which are commonly known by the domain name. Nor does the record contain evidence that Respondent uses, or has made preparations to use, the domain name in connection with a bona fide offering of goods or services. Nor does the record contain evidence that 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. Complainant adopted and registered its marks years before Respondent registered its domain name.

C. Registered and Used in Bad Faith

It appears that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business, and/or attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s domain name appears to have no connection with its company or its services. Respondent almost certainly knew of Complainant's marks when Respondent registered its domain name. Respondent’s use of the domain name was clearly for commercial benefit. The Panel finds that the domain name was registered and used 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 name, <dell4us.com>, be transferred to the Complainant.

Steven Fox
Sole Panelist

Date: February 15, 2005