Dell Inc. v. Siims
Claim Number: FA0511000593329
Complainant is Dell Inc. (“Complainant”), represented by Nathan J Hole of Loeb & Loeb LLP, 321 North Clark St., Suite 2300, Chicago, IL 60610. Respondent is Siims (“Respondent”), 148 So. Doheny Dr., Beverly Hills, California 90211.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <delldvr.com >, <delldvr.net>, <delldvrs.com> and <delldvrs.net>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2005.
On November 9, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@delldvr.com, postmaster@delldvr.net, postmaster@delldvrs.com, and postmaster@delldvrs.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 6, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names are confusingly similar to Complainant’s DELL mark.
2. Respondent does not have any rights or legitimate interests in the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names.
3. Respondent registered and used the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., markets and sells computer systems
and related products and services, including digital video recorders
(“DVRs”). Complainant began using its
DELL mark in 1987 in assocation with its products and services and spent
hundreds of millions of dollars to advertise and promote its products and
services in many countries.
Complainant owns numerous registrations of its DELL mark and
variations thereof in more than 180 countries and with the United States Patent
and Trademark Office (“USPTO”) (i.e., Reg. No. 1,616,571 issued October 9,
1990; Reg. No. 1,860,272 issued October 25, 1994 and Reg. No. 1,498,470 issued
August 2, 1988).
Nearly half of Complainant’s revenue is generated from
Internet sales on its website.
Complainant has registered hundreds of domain names containing its DELL
mark, including <dell.com>, <dellcomputer.com> and
<delltv.com>. Complainant’s
revenue was almost $50 billion for the last fiscal year, and Complainant has
been the world’s larges direct seller of computer systems for the last several
years.
Respondent registered the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names on November 11, 2004. The domain names resolve to a website that offers similar electronics products as those offered by Complainant under its DELL mark.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registrations of its DELL mark with the USPTO are sufficient to establish Complainant’s rights in the mark in connection with Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the only differences between the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names and Complainant’s DELL mark are the additions of generic top-level domains (“gTLDs”) and the terms “dvr” and “dvrs,” which are abbreviations for digital video recorder or recorders. Furthermore, Complainant contends that these terms are descriptive of a portion of Complainant’s business. These changes are not significant enough to defeat Complainant’s assertion of confusing similarity under Policy ¶ 4(a)(i). See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant argues that there is no evidence to suggest that Respondent has ever been commonly known by any of the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names. In fact, Complainant asserts that the websites linked to the disputed domain names indicate that Respondent is known as “International Secure Integrated Camera Systems.” Furthermore, Complainant contends that the fame of Complainant’s DELL mark makes it difficult for Respondent to claim that it is commonly known by any derivative of the mark. The Panel finds that Respondent has failed to come forward with any evidence that would establish its rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names divert Internet users to Respondent’s websites that advertise and promote products that compete directly with Complainant. Respondent’s use of Complainant’s DELL mark to attract Internet users to Respondent’s competing website is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names to operate websites for Respondent’s competing business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
By using the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names to connect Internet users to Respondent’s websites offering competing electronic products, Respondent is attempting to benefit from the fame and goodwill associated with Complainant’s DELL mark by creating a likelihood of confusion regarding Complainant’s affiliation with Respondent’s websites. Such use of Complainant’s mark in confusingly similar domain names to increase Internet traffic to Respondent’s competing business is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <delldvr.com>, <delldvr.net>, <delldvrs.com> and <delldvrs.net> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
December 8, 2005
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