Dell Inc. v. Innervision Web Solutions
c/o Domain Registrar
Claim Number: FA0503000445601
PARTIES
Complainant
is Dell Inc. (“Complainant”),
represented by Nathan J. Hole of Loeb & Loeb LLP,
321 North Clark Street, Suite 2300, Chicago, IL 60610. Respondent is Innervision Web Solutions c/o Domain Registrar (“Respondent”), Old
Bridge, NJ 08879.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <dellcomputerssuck.com>,
registered with Enom, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Carolyn
M. Johnson, Peter L. Michaelson, and Tyrus R. Atkinson, Jr,. as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 28, 2005.
On
March 25, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <dellcomputerssuck.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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
April 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 26,
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@dellcomputerssuck.com by e-mail.
A
timely Response was received and determined to be complete on April 26, 2005.
A
timely Additional Submission was received from Complainant on April 29, 2005.
On May 9, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Carolyn M. Johnson, Peter L. Michaelson, and Tyrus R. Atkinson, Jr., as
Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
For
over 20 years, Complainant Dell, Inc., f/k/a Dell Computer Corporation (“Dell”)
has marketed and sold computer systems and related products and services. In 1987, Dell adopted the corporate name
“Dell Computer Corporation” and began using the DELL trademark. Over the years, Dell has invested heavily in
marketing under its DELL marks, devoting hundreds of millions of dollars to
advertising and promoting its products and services through many media in many
countries. Because of Dell’s marketing
and sales success, Dell and its DELL marks have become famous in the United States
and in other countries.
Dell
owns, uses and has registered hundreds of domain names that contain Dell’s DELL
mark and/or its current and former trade names, including <dell.com>,
<dellcomputer.com>, and <dellcomputers.com>. Complainant holds
registered trademarks with the United States Patent and Trademark Office for
the DELL trademark in various combinations dating back to 1987.
In
February 2005, Dell learned that Respondent had registered and was using <dellcomputerssuck.com>
(“Domain”) to redirect Internet users to its website at <innervisionpc.com>. At its <innervisionpc.com> website,
Respondent markets computer systems and related products and services, all in
direct competition with Dell.
On
March 11, 2005, Dell’s outside counsel sent Respondent a letter objecting to
its registration and use of the domain name and requesting that Respondent
transfer the Domain to Dell. On March
14, 2005, Edward Ziejka, a representative of Respondent, called Dell’s outside
counsel and left a voicemail. In his voicemail, Ziejka stated, “if they want the
domain, they can buy it from me.” The
following day Dell discovered that Respondent had altered its use of the
Domain. Respondent had made the Domain anew, clearly making it an artificial
“gripe site” about “major computer manufacturers.”
The
Domain is clearly confusingly similar to Dell’s Marks and names. The Domain completely subsumes Dell’s famous
DELL and DELL.COM trademarks.
Respondent
competes directly with Dell in the market of computer systems. Respondent registered the Domain on April 1,
2004 and, until recently, used the Domain to solely redirect Internet users to
its own, competing website. Respondent
did not, at any time before it received notice of this dispute, use the Domain
in connection with a bona fide offering of goods or services. Respondent is not currently known, and has
not been known by the Domain name.
Respondent has not made a legitimate noncommercial or fair use of the
Domain. Respondent’s use of the Domain
was commercial and Respondent’s conversion to a purportedly non-commercial
“gripe site” after being contacted by Complainant’s counsel is an implicit
admission of its previous wrongful conduct.
Respondent has no rights and legitimate interests in the Domain name.
Respondent
had actual knowledge of Complainant’s Marks and names when it registered the
Domain. In addition, Respondent used
the Domain in bad faith, redirecting users to its own, competing website.
B.
Respondent
The
domain name registered by Respondent, <dellcomputerssuck.com>, is
not identical and/or confusingly similar to Complainant’s trademarks. Respondent takes the position that the
addition of the term “sucks” in the domain name eliminates the possibility of
confusion. Respondent further contends that if his domain name were confusingly
similar to Complainant’s mark then his domain name would be ranked near or
above Complainant’s trademarked domain names on the most popular Internet
search engines, but actually, it is not.
Respondent
claims that he has rights and legitimate interests to the domain name <dellcomputerssuck.com>.
Respondent claims that he is making
legitimate, noncommercial, and fair use of the domain name to express criticism
and commentary pursuant to his First Amendment rights, primarily the right of
free speech. Respondent claims the
domain was temporarily pointed towards <innervisionpc.com> for testing
purposes only from the day it was registered on 2004-04-01 as Complainant
allegedly claims as bad faith. Therefore it was not registered to solely
redirect Internet users to its own site or it would have been in place from the
day its was registered. Respondent
claims that his protest site is in no way a sham.
Respondent
is not a competitor of Complainant.
Respondent operates a very small home-based business whose primary function
is computer repair of all brand computers.
The website that promotes computer sales has never in its existence made
a single sale of a computer system.
Respondent claims that the domain name is not used for commercial gain
nor has it generated any kind of commercial or personal gain. Respondent is not using the domain or
protest site to divert business from Complainant’s business. Respondent claims that <dellcomputerssuck.com>
was not registered in bad faith and is not being used in bad faith. Respondent claims that he did not register
the domain name with the intent to profit therefrom.
C.
Additional Submissions
Complainant’s
Additional Submission.
Whether
Respondent is a competitor of Dell’s is to be determined not by sales volume,
but by the types of goods and services he offers for sale. Respondent does not deny that he offers
computer systems for sale or that his computer systems compete with Dell’s.
Respondent’s
contention that the domain was directed for testing purposes is untrue. The Internet Archive Wayback Machine,
demonstrates that on several dates from registration until notification of this
dispute, Respondent redirected the domain to Respondent’s website
<innervisionpc.com>.
After
filing this Complaint, Dell learned that Respondent has registered other domain
names containing Dell’s trademarks.
Respondent registered <dudedellsucks.com> and
<mydellsucks.com>. Moreover, the evidence suggests that Respondent also
used <dudesellsucks.com> to direct consumers to the commercial and competing
<innervisionpc.com>.
Respondent’s
Additional Submission.
Respondent
does not own the infrastructure required to compete with Complainant and offers
different services. The website at <dellcomputerssuck.com>
was directed to <innervisionpc.com> for testing purposes but
Respondent forgot it and continued to direct itself there until the Respondent
was notified by a threatening letter from Complainant.
The
domain name, <mydellsucks.com>, was never pointed at any competing
commercial website. The domain
<dudedellsucks.com> was registered to be used for the gripe site long
before Complainant filed its Complaint.
The remaining allegations contained in Respondent’s Additional
Submission are irrelevant to any issue in this proceeding.
Respondent’s
Letter to the Forum
Respondent
states that his business is to buy and sell domains. Respondent claims that his business is being damaged by this
proceeding and states, “(W)hen someone wants something someone else owns he or
she purchases it, not try’s and strong arm them to get it.”
FINDINGS
1. Complainant is a major seller of computer
systems and related products and has held trademark registrations with the
United States Patent and Trademark Office for the trademarks and service marks
for DELL (registered in 1990) and DELL.COM (registered in 2000).
2. Respondent is an individual who operates
a home-based business engaged primarily in the repair of computer systems. Respondent also advertises computer systems
for sale on the Internet, designs web sites, and buys and sells domain names.
3. On April 1, 2004, Respondent registered
the domain name, <dellcomputerssuck.com>.
4. In February 2005, Complainant learned
that Respondent had registered <dellcomputerssuck.com>.
5. On March 11, 2005, Complainant sent a
cease and desist letter to Respondent.
6. Respondent responded to the cease and
desist letter by voice mail stating that Complainant could buy the domain
name. No further communications were
had between the parties.
7. From the date of registration until the
date of the cease and desist letter, the domain name directed Internet traffic
to Respondent’s web site at <innervisionpc.com> which offered computer
systems for sale.
8. After receipt of the cease and desist
letter, Respondent changed the content of the web site to one that featured
commentary on Complainant and other computer companies. Respondent’s contention that he is making a
legitimate, noncommercial, and fair use of the domain name to express criticism
and commentary pursuant to his rights of free speech is an insufficient defense
in this case.
9. Respondents domain name, <dellcomputerssuck.com>
is confusingly similar to Complainant’s mark, DELL.
10. Respondent has no rights to or legitimate
interests in respect to the domain name <dellcomputerssuck.com>.
11. Respondent registered and used the domain
name in bad faith.
12. The <dellcomputerssuck.com> domain
name should be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent 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 respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant must prove that it has rights
in a trademark or service mark to which the disputed domain name is identical
or confusingly similar. Complainant
proves that it has rights in the trademark and service mark, DELL, as a result
of Complainant’s registrations with the United States Patent and Trademark
Office, which predate the registration of the disputed domain name. See Men’s Wearhouse, Inc. v. Wick, FA117861
(Nat. Arb. Forum Sept. 16, 2002) (holding that under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and have
acquired secondary meaning); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity, which creates a
rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting the
presumption).
Complainant argues that the domain name
registered by Respondent is confusingly similar to Complainant’s DELL mark,
because the domain name contains Complainant’s mark in its entirety, adding
only the generic or descriptive terms “computers” and “suck.” Respondent argues that adding the term
“suck” to the domain name eliminates the possibly of confusion.
Respondent is correct in stating that
Panels have decided that the addition of the word “sucks” to another’s mark
eliminates the possibility of confusion. See Lockheed Martin Corp. v.
Parisi, D2000-1050 (WIPO Jan. 26, 2001); Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000). Other Panels have reached the opposite
result. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001);
Direct Line Group Ltd & Ors v. Purge LT, Ltd. D2000-0583 (WIPO Aug.
13, 2000). The conflict in decisions
was recognized in ADT Services-AF v. ADT Sucks.com, D2001-0213 (WIPO
Apr. 23, 2001), wherein it was stated that since no appellate tribunal exists,
the division will endure under the Policy.
The Panel suggested that the “sucks” addition might be viewed more often
by panels as not confusingly similar when used as a domain name in a fair use
and noncommercial context as opposed to a domain name used in a commercial
context. The ADT Services case involved a domain name containing the
word “sucks” used to direct Internet users to a web site utilized for
commercial gain. The Panel adopted the
reasoning contained in Direct Line Group Ltd & Ors v. Purge LT, in
which case the Panel compared Direct Line with
<directlinesucks.com>. The Panel
observed,
The first and
immediately striking element to the Domain Name is the Complainants’ name and
adoption of it in the Domain Name is inherently likely to lead some people to
believe that the Complainants are connected with it. Some will treat the additional “sucks” as a pejorative
exclamation and therefore dissociate it after all from the Complainants; but equally, others may be unable to give it
any very definite meaning and will be confused about the potential association
with the Complainants. The Complainants
have accordingly made out the first element in its Complaint.
Based upon this reasoning, the Panel in
the ADT Services case found that ADT and <adtsucks.com> were
confusingly similar.
The majority of domain name decisions
favor finding that the “sucks” addition does not defeat a finding of confusing
similarity. In a minority of decisions,
Panelists have deemed a “sucks” addition to a well-known trademark to be an
obvious indication that the domain name is not affiliated with the trademark
owner. Each case should be considered on its merits and not automatically
accept any prior rule. See Wachovia
Corporation v. Alton Flanders, D2003-0556 (WIPO Sept. 19, 2003) (finding
<wachoviasucks.com>, <wachovia-sucks.com>, and
<wachoviabanksucks.com> domain names confusingly similar to the trademark
Wachovia).
Both parties in this case agree that the
domain name, <dellcomputerssuck.com>, was directed to a commercial
web site at <innervisionpc.com>.
This web site advertised computer systems for sale by Respondent. Under the facts and circumstances of this
case the Panel rejects Respondent’s contention that the addition of the word
“sucks” prevents a finding of confusing similarity.
The disputed domain name in this case
consists of Complainant’s mark, DELL, to which have been added the word
“computers” and the word “sucks”.
Adding a generic term such as “computers” to a mark does not justify not
finding confusing similarity, particularly when the added term has an obvious
relationship with Complainant’s business.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000). Here, the addition of the word
“sucks” constitutes nothing more than the addition of a generic word to the
mark that does not prohibit a finding of confusing similarity. See Arthur
Guiness Son & Co (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov 7,
2001).
The addition of the generic top-level
domain “.com” is irrelevant to determining the element of confusing similarity.
See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).
Under the facts and circumstances present
in this case, the Panel finds that <dellcomputerssuck.com> is
confusingly similar to the Complainant’s DELL mark.
Finding confusing similarity in “sucks” cases does not abridge the
rights of legitimate protest sites because such sites are adequately protected
by the second and third elements of the Policy. See Wachovia Corporation v. Alton Flanders, supra; See
also Koninklijke Philips Electronics N.V. v. In Seo Kim, D2001-1195
(WIPO Nov. 12,2001).
Complainant prevails under Policy ¶
4(a)(i).
When a complainant alleges and puts forth
proof that respondent has no rights or legitimate interests in the disputed
domain name, the Policy invites the respondent to demonstrate his rights to and
legitimate interests in the domain name. See Policy ¶ 4(c).
Panels have taken this invitation as a
burden shifting provision which requires a respondent to establish rights or
legitimate interests in the domain name by coming forward with concrete
evidence rebutting Complainant’s assertions because the information is uniquely
within the knowledge and control of the respondent. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Do
The Hustle LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Respondent contends that he has rights to
and legitimate interests in the domain name because “he is making legitimate,
noncommercial, and fair use of the domain name to express criticism and
commentary pursuant to his First Amendment Rights, primarily the Right of Free
Speech. It is not uncommon for citizens
to make use of protest sites to express their displeasure with a particular
entity.” Both parties agree that the
site at <dellcomputerssuck.com> presently contains material that
could be considered a commentary site used in a noncommercial and fair use of
the domain name. Respondent’s
difficulty is that the domain name was directed to his commercial web site from
the time of registration until after receiving the cease and desist letter from
Complainant’s legal counsel.
Prior to notice of the dispute,
Respondent was not making a bona fide offering of goods or services. The <dellcomputerssuck.com>
domain name diverted Internet users to Respondent’s website at the
<innervisionpc.com> domain name where Respondent markets computer systems
and related products and services that are in direct competition with
Complainant. Respondent’s use of the
disputed domain name to redirect Internet users searching for Complainant to
Respondent’s competing web site is not a use in connection with a bona fide
offering of goods or services or a legitimate non-commercial or fair use
pursuant to Policy, ¶ 4(c)(i) or ¶ 4 (c)(iii).
See Computerized Sec. Sys, Inc. v. Hu, FA157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel
Communications, Inc. v. Beaty Enders, FA135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that Respondent, as a competitor of Complainant, had no rights
or legitimate interests in a domain name that utilized Complainant’s mark for
its competing website); see also Avery Dennison Corp. v. Steele, FA133626
(Nat. Arb. Forum Jan. 10, 2003) (finding that Respondent had no rights or
legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Respondent’s contention that he was
making a legitimate noncommercial or fair use of the domain name without intent
for commercial gain, as a “protest site” is untenable. Respondent directed Internet users to his
commercial website until the cease and desist letter was served upon him. Respondent must have operated the website
“without intent for commercial gain” to qualify under Policy ¶ 4(c)(iii). Respondent operated the website at
<innervisionpc.com> for commercial gain.
Directing Internet users to that site from <dellcomputerssuck.com>
was a commercial exercise.
The recent decision in Wachovia Corp.
v. Flanders, D2003-0596 (WIPO Sept. 19, 2003) dealt with a similar factual
situation. The Panel stated as
follows:
“The domain
names at issue here do not point to a protest site. In the previous UDRP cases
which have found legitimate interests based on the right of free speech and the
fair use doctrine, the domain name has been linked to a ‘complaint’ web
site…Such is not the case here, Here Respondent’s <wachoviasucks.com>
<wachovia-sucks.com> and <wachoviabanksucks.com> domain names point
to competitive financial products and services. Simply having a domain name with “-sucks” in the name cannot, by
itself, establish fair use; one must look to the content of the website to
determine if there is an exercise of free speech which allows the Respondent to
rely on the fair use exception. To do
otherwise would legitimize cybersquatters, who intentionally redirect traffic
from a famous mark simply through the use of a derogatory term.”
The Panel finds that Respondent has no
rights to or legitimate interests in the domain name <dellcomputerssuck.com>.
There is no evidence to suggest that
Respondent is commonly known by the <dellcomputerssuck.com> domain
name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (requiring a showing that one has been commonly
been known by the domain name prior to registration of the domain name to
prevail).
Complainant prevails under Policy ¶ 4 (a)(ii).
Complainant was fully aware of
Complainant’s famous DELL mark at the time of registering the disputed domain
name. That is precisely why Respondent
chose the domain name. Respondent is in
the computer business and buys and sells domain names. Respondent knew, or should have known, of
the deception and confusion that would inevitably follow if Respondent used the
domain name. This factual situation
constitutes bad faith registration. See
Reuters Ltd. v. Teletrust IPR Ltd. D2000-0471 (WIPO Sept. 8, 2000); see
also Samsonite Corp. v. Colony Holding, FA94313 (Nat. Arb. Forum Apr. 177,
2000) (holding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002); see
also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar.
21, 2005).
The Panel could easily infer that
Respondent registered the disputed domain for the purpose of selling the domain
name to Complainant. Respondent states
that he is a buyer and seller of domain names.
His answer to the cease and desist letter was to state “if they want the
domain, they can buy it from me.” The
Respondent’s actions in registering the disputed domain name with an intent to
then sell it at a profit to the Complainant is specifically condemned in the
Policy. See Policy ¶ 4(b)(i).
There is a pattern to Respondent’s
conduct. In addition to <dellcomputerssuck.com>,
Respondent registered <mydellsucks.com> and
<dudedellsucks.com>. In ADT
Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) the panel
held: “The Panel has no difficulty in finding bad faith registration…Respondent
has shown a cynical pattern of dealing in domain names with apparent attempt to
embarrass the owners of internationally known marks.”
As to the use made of the disputed domain
name, Respondent has used the <dellcomputerssuck.com> domain name
to divert Internet users searching for Complainant’s DELL products and services
to Respondent’s website that offers competing computer products and
services. Under Policy ¶ 4(b)(iv), this
is evidence that Respondent registered and used the domain name in bad faith to
attempt to divert Internet users for commercial gain by attracting users to
Respondent’s website through a likelihood of confusion with Complainant’s DELL
mark. See Computerized Sec., Inc. v.
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding respondent’s use of
the <saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name); see
also Busy Body, Inc. v. Fitness Outlet, Inc. D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith where Respondent attempted to attract customers to its
website and created confusion by offering similar products for sale as
Complainant).
The registration and use of “sucks”
domain names, when operated for commercial gain, is evidence that the domain
name was registered and used in bad faith.
In Caixa d’ Estalvis y Pensions de Barcelona (La Caixa) v.
Namezero.com, D2001-0360 (WIPO May 3, 2001), the panel stated: “The general
principle taught by precedents seems to be that, when a –SUCKS domain name has
been registered for the main purpose of making money, it has been registered in
bad faith.” See also Wal-Mart
Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000) (finding bad
faith where respondent was intentionally using <walmartcanadasucks.com>,
<walmartuksucks.com>, and <walmartpuertoricosucks.com> domain names
to attract Internet users to his website).
The Panel finds that under the facts and
circumstances of this case, Complainant must prevail under Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellcomputerssuck.com>
domain name be TRANSFERRED from Respondent to Complainant.
Carolyn M. Johnson, Peter L. Michaelson
and Tyrus R. Atkinson, Jr., Panelists.
Tyrus R. Atkinson, Jr. Panel Chair, for
the Panel
Dated: May 23, 2005
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