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Dell Inc. v. Derick Appert [2005] GENDND 416 (3 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Derick Appert

Case No. D2005-0177

1. The Parties

The Complainant is Dell Inc., Round Rock, Texas, United States of America, represented by Baker Botts, LLP, of the United States of America.

The Respondent is Derick Appert, Kankakee, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <delllatitudelaptopbatteries.com>, is registered with SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2005. On February 17, 2005, the Center transmitted by e-mail to SRSplus a request for registrar verification in connection with the domain name at issue. On March 11, 2005, SRSplus transmitted by e-mail 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. 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 March 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2005.

The Center appointed David W. Quinto as the sole panelist in this matter on April 21, 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 Dell Inc. (“Dell”) was founded in 1984, and is today the world’s largest seller of computer systems. It currently enjoys annual revenues of more than $47 billion. Dell claims to have used the mark DELL beginning in 1987. Dell has obtained numerous United States registrations for the DELL mark. The first such registration, issued on August 2, 1988, and reflects a first-use-in-commerce date of November 1987. Dell has since used its DELL mark in connection with a wide range of computer-related goods and services.

Beginning in 1994, Dell has used the LATITUDE mark for a line of notebook computers. Dell obtained a United States registration of the LATITUDE mark in Class 9 for computers and instruction manuals sold therewith on March 12, 1996.

Respondent’s challenged domain name resolves to a Web site that offers a variety of battery products for sale, including batteries for cellular telephones, camcorders, digital cameras and, of course, Dell laptop computers (as well as competitors’ computers). Respondent’s site also contains links to sites offering unrelated products, such as male enhancement and weight loss products. Respondent is not an authorized distributor or licensee of Dell products.

5. Parties’ Contentions

A. Complainant

Dell contends that it annually spends millions of dollars to advertise and promote its marks, products, and services, thereby earning substantial goodwill in the marketplace. To increase the awareness of its products and services, Dell conducts business on the Internet using numerous DELL domain names, including <delllatitude.com>. Dell believes that consumers looking for Dell products are likely to reach Respondent’s Web site by mistake, after entering the challenged domain name. In addition, Dell is concerned that consumers will stumble upon Respondent’s site and assume that Respondent is affiliated with, or endorsed or sponsored by, Dell. Because Respondent is not its licensee, Dell contends that Respondent lacks any rights or legitimate interests in the challenged domain name. Dell also contends that the challenged domain name was registered in bad faith in that Respondent is using a domain name that incorporates Dell’s marks to maximize his profits. Further, Dell contends that Respondent maximizes his revenues by selling advertisements and obtaining profits through sponsored links and pop-up advertisements. Finally, Dell avers that it has been unable to communicate with Respondent at Respondent’s stated postal or e-mail addresses and accordingly argues that the challenged registration was made in bad faith because Respondents registration information was not complete and accurate.

B. Respondent

The Respondent did not reply to Dell’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy, Dell has the burden to show that Respondent’s domain name is identical or confusingly similar to a trademark . . . in which the complainant has rights. Here, Dell has provided evidence that it owns two registered trademarks incorporated in Respondent’s challenged domain name: DELL and LATITUDE. Accordingly, Dell has demonstrated that it has protectable marks.

In decisions too numerous to list, UDRP panels have increasingly applied the objective test of confusing similarity first enunciated in Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000). There, the panel concluded that a domain name is identical or confusingly similar to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.

The challenged domain name incorporates Dell’s marks DELL and LATITUDE in their entirety. Accordingly, the Panel finds that Dell has shown that the challenged domain name is confusingly similar to its registered marks.

Even if one were to apply a subjective, as opposed to objective, test, the result would not change. As explained in Dell Computer Corporation v. Logo Excellence, WIPO Case No. D2001-0361 (May 7, 2001) (citing cases):

All that is necessary is that the domain name misappropriate sufficient components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.

The addition of the phrase “laptop batteries” does not distinguish the challenged domain name in a manner that would lessen the likelihood of confusion. See Dell Computer Corporation v. MTO C.A., WIPO Case No. D2002-0363 (July 5, 2002). To the contrary, the addition of terms that have an obvious relationship to Dell’s marks heightens the confusion. See Space Imaging LLC v. Brownell, eResolution Case No. AF0298 (September 22, 2000).

Thus, Dell has shown that the challenged domain name is confusingly similar to its registered marks.

B. Rights or Legitimate Interests

Pursuant to Paragraph 4(a)(ii) of the Policy, Dell has the burden to show that the registrant has no rights or legitimate interests in respect of the domain name. However, Paragraph 4(c) of the Policy allows a respondent to demonstrate its rights or legitimate interests in a domain name by, among other things, showing that it used the domain name in connection with a bona fide offering of goods or services before receiving notice of a dispute.

The means to demonstrate rights or legitimate interests in a domain name include that a respondent has been commonly known by the domain name or that the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Here, there is no evidence that Respondent is commonly known as “Delllatitudelaptopbatteries”. Further, it is undisputed that Respondent is using the challenged domain name for commercial purposes. Accordingly, Respondent can claim rights or legitimate interests in the challenged domain name only if he used the challenged domain name in connection with a bona fide offering of goods or services before receiving any notice of the dispute.

Various panels have held that a default by a respondent is tantamount to an admission that the complainant’s allegation that the respondent lacks rights or legitimate interests in a challenged domain name is correct. See, e.g., Benchmark Staffing, Inc. v. Parker, WIPO Case No. D2002-0226 (May 30, 2002) (Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interest in respect of the domain name at issue. This entitles the panel to assume the truth of the allegation. G.D. Searle & Co. v. Montgomery Byers, NAF Case No. FA0204000110778 (June 2, 2002).

That approach is extreme and need not be applied here. Instead, this Panel subscribes to the view that it is generally inappropriate to make deliberate domain name use of a mark for commercial purposes. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001), a panel held that the use of a mark cannot be bona fide unless four conditions are satisfied. First, the registrant must actually be offering the goods or services at issue. Second, the registrant must use the site to sell only the trademark goods: “[o]therwise, it could be using the trademark to bait Internet users and then switch them to other goods”. Third, the site “must accurately disclose the registrant’s relationship to the trademark owner. Finally, the registrant “must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.

Here, Respondent is quite clearly using a domain name incorporating Dell’s marks to bait Internet users and he has not accurately disclosed his lack of relationship with Dell. Further, his use of the challenged domain name would compete unfairly with Dell and Dell’s authorized dealers who sell batteries for Lattitude laptop computers. Thus, Respondent’s use is not bona fide and, accordingly, Respondent lacks rights or legitimate interests in the challenged domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that Dell demonstrate that the challenged domain name has been registered and is being used in bad faith. In turn, Paragraph 4(b) of the Policy enumerates without limitation four circumstances that “shall be evidence of the registration use of a domain name in bad faith”. The fourth of those is that by using the domain name, the Respondent must have “intentionally attempted to attract, for commercial gain, Internet users” by creating a likelihood of confusion with the complainant’s mark. To prove this circumstance, a complainant must show that a respondent effected the registration in bad faith and engaged in subsequent bad faith conduct. However, it is usually not possible for a complainant to prove the registrant’s state of mind at the moment of registration. For that reason, bad faith registration will often be established by inference. Various panels have held that bad faith registration may be inferred when a registrant registers a domain name that incorporates a well-known mark. As explained in Rusconi Editore S.p.A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001):

For an allegation of bad-faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the domain name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainant’s right in respect of the trademark in question.

Here, quite apart from Respondent’s constructive notice of Dell’s marks as evidenced by the widespread public awareness of Dell computer products in the United States of America and Dell’s numerous trademark registrations, it is apparent that Respondent was actually aware of Dell’s marks because his domain name suggests that he is selling a product for use with Dell’s products. Because he is making such use, and because he is obtaining profits through sponsored links and pop-up advertisements, Respondent’s use, as well as registration, have been in bad faith. Further, his failure to provide accurate information in a registration agreement may also evidence bad faith registration and use. See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002).

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 <delllatitudelaptopbatteries.com> be transferred to Dell.

David W. Quinto
Sole Panelist

Dated: May 3, 2005