Dell Inc. v. fadaei
Claim Number: FA0601000636421
PARTIES
Complainant is Dell Inc. (“Complainant”), represented by Daniel D. Frohling, of Loeb & Loeb LLP, 10100 Santa Monica
Blvd., Suite #2200, Los Angeles, CA 90067.
Respondent is fadaei (“Respondent”),
pardisepars, mirdamad street, Tehran, tehran 1111111, AU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <delliran.com>,
registered with Onlinenic, Inc.
PANEL
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.
Honorable Paul A. Dorf (Ret.), Flip Jan Claude Petillion and Richard W.
Page, Esquire as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 26, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 27, 2006.
On February 4, 2006, Onlinenic, Inc. confirmed by e-mail to the
National Arbitration Forum that the <delliran.com>
domain name is registered with Onlinenic, Inc. and that the Respondent is the
current registrant of the name. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, 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 February 8, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 28, 2006 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@delliran.com by e-mail.
Having received no Response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On
March 10, 2006, pursuant to Complainant’s request to have the dispute decided
by a Three-member Panel, the
National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.), Flip Jan Claude Petillion and Richard W.
Page, Esquire as Panelists.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name at issue is confusingly
similar to Complainant’s marks and names; that Respondent has no rights or
legitimate interests in the domain name at issue; that Respondent has not used
the domain name at issue in connection with a bona fide offering of goods or services; that Respondent no longer
has a legitimate affiliation with Dell; that Respondent has not made any
legitimate noncommercial or fair use of the domain name at issue; and, Respondent
registered and used the domain name at issue in bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding.
FINDINGS
Complainant is engaged in the business of
marketing and selling computer systems and related products and services. Complainant began using DELL as its trade
name, trademark and service mark in 1987.
Its products are sold directly to consumers, by promoting the products
and services through television, radio, magazines, newspapers and the Internet.
As
Complainant generates almost half of its revenue from Internet sales, it owns,
uses and has registered hundreds of domain names that contain its famous mark,
including domain names that combine the mark with a country code.
Complainant
has registered the trademark DELL and other variations of the mark in more than
180 countries worldwide, including Iran.
Complainant also owns more than 30 trademark registrations in the United
States, dating back to 1988.
Complainant
marketed and sold its products and services in Iran until 1997, when the United
States imposed an embargo on trade with Iran.
Complainant continues to maintain its trademark registrations in Iran
should the embargo be lifted.
In
1991, prior to these sanctions, Respondent entered into an International
Distributor Agreement that gave Respondent limited rights to use the famous
mark for one year. This Agreement
terminated in 1992. In December of that
same year, Complainant learned that Respondent had filed an Iranian trademark
application for the term “DELLIRAN” and Complainant opposed the application and
requested, through its counsel, that the Respondent stop using the DELL
name. Respondent then opposed
Complainant’s trademark applications and filed a second application for the
trademark “DELLIRAN” which Complainant opposed. In 1995, the parties resolved the dispute and Respondent was
allowed to register “DELLIRAN” in Iran only; however, the agreement did not
provide for Respondent to register or use the domain name at issue.
The
registration for Respondent’s
“DELLIRAN” mark expired in 2002.
Iranian Intellectual Property Law, Chapter One, Article 2 states: “The right to exclusively use a trademark is
only recognized for an individual [or an entity] who has registered it” and
Article 9 “In the following cases, the clerk mentioned in Article 6 will deny
the registration application: 1. If the symbol is not in accordance with the
law” and “2. If the symbol is already registered to a third party or the
similarity degree of the symbol to a registered symbol is great enough to
mislead regular consumers, meaning the consumers who do not have special
information.” As the Respondent’s
registration has expired and as Complainant has current trademark registrations
of its famous mark in Iran, Respondent is prohibited from securing a new
registration.
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.”
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 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.
The Panel finds that Complainant has
established rights in the DELL mark through registration with the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,616,571 issued Oct. 9,
1990). See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
[or] have acquired secondary meaning”); 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
has also registered the DELL, DELL (stylized E) and DELL PRECISION marks in
Iran.
The Panel also finds that the domain name at
issue is confusingly similar to Complainant’s mark, as it contains
Complainant’s entire DELL mark and adds the geographic term “Iran.” The addition of geographic terms to a
well-known and established mark, fails to properly distinguish a domain name
pursuant to Policy ¶ 4(a)(i). See
VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the
respondent added the word “India” to the complainant’s mark); see also
Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name,
<walmartcanada.com> is confusingly similar to the complainant’s famous
mark).
It appears from the evidence presented that
Respondent is using the domain name at issue to operate a website to market
computer systems and related products and services using Complainant’s famous
mark, falsely suggesting that Respondent is an agent of Complainant, and posing
as the only authorized dealer of Complainant’s products and selling those
products to consumers in a market in which Complainant is not allowed to
compete. The Panel finds that that such
use of the domain name at issue is neither a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2,
2003) (“Respondent lacks rights in the disputed domain names because Respondent
competes with Complainant by selling Complainant's used parts without a license
from Complainant to do so.”); see also Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts
to pass itself off as the complainant online, which is blatant unauthorized use
of the complainant’s mark and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name); see also Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a
bona fide offerings [sic] of goods or services, nor an example of a legitimate
noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder
of a domain name, confusingly similar to a registered mark, attempts to profit
by passing itself off as Complainant . . . .”).
In 1991, Complainant and Respondent entered
into a licensing agreement whereby Respondent was granted limited use of
Complainant’s DELL mark and the right to be the sole distributor of
Complainant’s products in Iran. That
agreement, however, was terminated in 1992 and since that time, Complainant and
Respondent have not entered into another agreement. Further, Respondent is no longer licensed to register domain
names featuring Complainant’s mark. The
Panel finds that Respondent is neither commonly known by the disputed domain
name nor licensed to register marks featuring Complainant’s mark pursuant to
Policy ¶ 4(c)(ii). See Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)
(finding that without demonstrable evidence to support the assertion that a
respondent is commonly known by a domain name, the assertion must be rejected);
see also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question).
Respondent is using
the domain name at issue to sell Complainant’s goods under Complainant’s mark
without an authorized license or agreement.
The Panel finds that such use constitutes disruption of Complainant’s
business and is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
the respondent, a watch dealer not otherwise authorized to sell the
complainant’s goods, to the complainant); see also G.D. Searle &
Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002)
(“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products
represents bad faith use under Policy ¶ 4(b)(iii).”).
Furthermore, Respondent’s manner of use of
the domain name at issue will likely lead to confusion among Internet users as
to Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that such use is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <delliran.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panel Chair
Dated: March 23, 2006
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