Dell Inc. v. Dynamix Inc. c/o Dynamix
Claim Number: FA0607000746810
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 Dynamix Inc. c/o Dynamix (“Respondent”), po box 321, Washington, DC, 20013, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dellpromos.com>, registered with Abacus America, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 10, 2006; the National Arbitration Forum received a hard copy of the Complaint July 11, 2006.
On July 11, 2006, Abacus America, Inc. confirmed by e-mail to the National Arbitration Forum that the <dellpromos.com> domain name is registered with Abacus America, Inc. and that Respondent is the current registrant of the name. Abacus America, Inc. verified that Respondent is bound by the Abacus America, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 2, 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@dellpromos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <dellpromos.com>, is confusingly similar to Complainant’s DELL mark.
2. Respondent has no rights to or legitimate interests in the <dellpromos.com> domain name.
3. Respondent registered and used the <dellpromos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., has been engaged in the marketing and sales of computer systems and related products and services under the DELL mark since at least as early as 1987. Complainant holds a federal trademark registration for the DELL mark with the United States Patent and Trademark Office (“USPTO”). Complainant first registered its mark with the USPTO October 9, 1990 (Reg. No. 1,616,571). In connection with its on-line marketing and sales efforts, Complainant registered and has used hundreds of domain names containing the DELL mark, including the <dell.com>, <delloutlet.com>, and <delldirect.com> domain names. Complainant has also established several affiliate marketing programs as part of its online marketing strategy. Under the affiliate marketing programs, third parties may display Complainant-approved content and links, and in the process earn commissions for referring customers to Complainant’s website.
In applying to participate in each of Complainant’s affiliate programs, an applicant agrees not to use any domain name containing the DELL mark or variation thereof. However, in late 2005, Complainant became aware of Respondent’s registration and use of the <dellpromos.com> domain name when an individual named Peter Zeller was denied participation in one of Complainant’s affiliate programs because the <dellpromos.com> domain name violated the affiliate program agreement. Due to an administrative error by the administrator of a separate affiliate program of Complainant, Mr. Zeller was inadvertently allowed to enroll in another of Complainant’s affiliate programs earlier in 2005. Once Complainant learned of the error, Complainant terminated Mr. Zeller’s participation in the affiliate program.
Respondent, Dynamix Inc. c/o Dynamix, registered the <dellpromos.com> domain name July 6, 2005. Respondent was previously enrolled in Complainant’s affiliate marketing program, but Respondent’s participation in the program was terminated. Respondent is no longer affiliated or related to Complainant in any way and is not licensed by Complainant or otherwise authorized to use Complainant’s DELL mark. Respondent’s disputed domain name resolves to a website featuring links to Complainant’s website and to third-party websites offering products and services in direct competition with Complainant’s business.
On March 23, 2006, Complainant’s counsel contacted Mr. Zeller, objecting to his use of the disputed domain name and requesting that Mr. Zeller transfer the <dellpromos.com> domain name to Complainant. In response to his notice of termination from the affiliate program, Mr. Zeller claimed that he was not the registrant of the disputed domain name, but rather the administrator. Mr. Zeller further asserted that the true registrant of the <dellpromos.com> domain name was Kai Wang. Upon being contacted by Complainant, Mr. Wang offered to sell the <dellpromos.com> domain name registration for fair market value. Mr. Wang did not respond to further correspondence from Complainant.
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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant provided extrinsic evidence in this proceeding of Complainant’s federal trademark registrations with the USPTO for the DELL mark. The Panel finds that Complainant’s registration of the DELL mark with the USPTO demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the disputed domain name that Respondent registered, <dellpromos.com>, is confusingly similar to Complainant’s DELL mark pursuant to Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s mark with the addition of the term “promos,” and the generic top-level domain “.com.” Previous panels have held that similar alterations to a mark do not negate the creation of confusing similarity between the mark and the resulting domain name. In Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), the panel found that the domain name <suttonpromo.com> was confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name was immaterial to the analysis under Policy ¶ 4(a)(i). Moreover, the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), held that the top level of the domain name such as “.net” or “.com” did not affect the domain name for the purpose of determining whether it was identical or confusingly similar. Therefore, the Panel in the present case finds that the <dellpromos.com> domain name is confusingly similar to Complainant’s DELL mark under Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that it has rights to or legitimate interests in the mark contained in the domain name and that Respondent lacks such rights to or legitimate interests with regard to the disputed domain name. Once Complainant makes a prima facie case, however, the burden of proof shifts to Respondent, and Respondent must demonstrate that it has rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant made a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that the <dellpromos.com>
domain name resolves to a website featuring advertisements and links to
third-party websites that directly compete with Complainant’s business. As a result, the Panel finds that
Respondent’s use of the <dellpromos.com> domain name is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your
One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that
the respondent’s use of the disputed domain names to divert Internet users
attempting to reach the complainant’s website and in breach of the
complainant’s affiliate program 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 also Charles Letts
& Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006),
(finding that the respondent’s use of a domain name that was confusingly
similar to the complainant’s mark to display links to the complainant’s
competitors did not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii)).
Furthermore, the evidence on record does not suggest that Respondent is commonly known by the disputed domain name in accord with Policy ¶ 4(c)(ii). Complainant avers that Respondent’s participation in Complainant’s affiliate marketing program was terminated. Respondent has not shown a present affiliation with Complainant or any authority from Complainant to use the DELL mark. Additionally, nothing in Respondent’s WHOIS information indicates that Respondent is commonly known by the <dellpromos.com> domain name. Thus, based on the evidence on record, the Panel finds that Respondent is not commonly known by the <dellpromos.com> domain name pursuant to Policy ¶ 4(c)(ii) and has no rights to or legitimate interests in the mark contained within the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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 Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The evidence on record indicates that Respondent is using
the disputed domain name to operate a website containing advertisements and
links to third-party websites that compete with Complainant’s marketing and
sale of computer systems. In Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent
engaged in bad faith registration and use by using domain names that were
identical or confusingly similar to the complainant’s mark to redirect users to
a website that offered services similar to those offered by the
complainant. Furthermore, in Zee TV USA, Inc. v. Siddiqi, FA 721969
(Nat. Arb. Forum July 18, 2006), the panel found that the respondent engaged in
bad faith registration and use by using a domain name that was confusingly
similar to the complainant’s mark to offer links to third-party websites that
offered services similar to those offered by the complainant. Consequently, the Panel finds that
Respondent’s registration and use of the <dellpromos.com> domain
name constitutes registration and use in bad faith under Policy ¶
4(b)(iv).
Furthermore, the Panel
finds that Respondent used the disputed domain name to divert Internet users to
the websites of Complainant’s competitors.
Therefore, the Panel finds that Respondent registered and used the <dellpromos.com>
domain name in bad faith pursuant to Policy
¶ 4(b)(iii). Pursuant to the decision
of the panel in Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000), a respondent
violates Policy ¶ 4(b)(iii) when the respondent diverts business from the
complainant to a competitor’s website. See
EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites). Therefore, the Panel finds that Respondent
registered and used the <dellpromos.com> domain name to
disrupt the business of Complainant, demonstrating bad faith registration and
use under Policy ¶ 4(b)(iii).
The Panel finds that Complainant 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 <dellpromos.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 22, 2006.
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