Dell Inc. v. Steve Kerry d/b/a North West Enterprise Inc.
Claim Number: FA0605000705267
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 Steve Kerry d/b/a North West Enterprise Inc. (“Respondent”), 22915 Telegraph Rd., Santa Fe Springs, CA 90670, USA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com>, registered with OnelineNIC.com.
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 May 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2006.
On May 16, 2006, OnelineNIC.com confirmed by e-mail to the National Arbitration Forum that the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names are registered with OnelineNIC.com and that Respondent is the current registrant of the names. OnelineNIC.com has verified that Respondent is bound by the OnelineNIC.com 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 May 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 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@wwwdell4me.net, postmaster@wwwdellcom.com, postmaster@wwwdellcom.net, postmaster@dell4mecom.net and postmaster@wwwdell4mecom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2006, 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 <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names are confusingly similar to Complainant’s DELL4ME and WWW.DELL.COM marks.
2. Respondent does not have any rights or legitimate interests in the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names.
3. Respondent registered and used the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell Inc., has marketed and sold computer systems and related products and services for over 20 years. For several years Complainant has been the largest direct seller of computer systems and generates almost half of its revenue from sales over the Internet. Complainant holds trademark registrations in more than 180 countries, including more than 30 trademarks with the United States Patent and Trademark Office (“USPTO”). Complaint’s USPTO registrations include its DELL4ME mark (Reg. No. 2,425,829 issued January 30, 2001) and WWW.DELL.COM (Reg. No. 2,390,851 issued October 3, 2000).
Respondent registered the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names on January 17, 2005, February 14, 2005, August 30, 2005, January 17, 2005, and January 18, 2005, respectively. Respondent’s disputed domain names resolve to websites featuring advertisements for and links to websites offering products that are in direct competition with 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 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 federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the DELL4ME and WWW.DELL.COM marks. 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.”).
The Panel finds that the Respondent’s <wwwdell4me.net>,
<dell4mecom.net> and
<wwwdell4mecom.com> domain names are confusingly similar to
Complainant’s DELL4ME mark pursuant to Policy ¶ 4(a)(i). Two of these disputed domain names add a
“www” before Complainant’s mark, but this addition is not enough to negate the
confusing similarity between Respondent’s domain names and Complainant’s
mark. See Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum
Dec. 6, 2002) (holding confusing similarity has been established because the
prefix "www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); see also Dana Corp. v. $$$ This
Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding the respondent's <wwwdana.com> domain name confusingly similar
to the complainant's registered DANA mark because the complainant's mark
remains the dominant feature).
Moreover, the Panel finds that the addition of generic top level domain
names “.com” and “.net” in various places of the domain name also does not
negate the confusingly similar aspects of the disputed domain names under
Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); 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 further finds that Respondent’s <wwwdellcom.com> and <wwwdellcom.net> domain names are confusingly similar to Complainant’s WWW.DELL.COM mark. Respondent’s omission of the periods between “www,” “dell” and “.com” does not sufficiently negate the confusingly similarity between the disputed domain names and Complainant’s mark. In Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) the panel found that the respondent’s domain name <wwwbankofamerica.com> was confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it took advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet. Therefore, the Panel finds that the elimination of periods between the words preceding the generic top-level domain name is not enough to negate the confusing similarity between Complaint’s mark and Respondent’s domain names pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant asserts that Respondent is not authorized to use Complaint’s trademarks, and that Respondent is not associated with Complainant in any way. Furthermore, neither Respondent's WHOIS information, nor any other evidence in the record, suggests that Respondent is commonly known by any of the disputed domain names. In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did not have rights in a domain name where the respondent was not known by the mark. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
the disputed domain names to operate websites providing links to third-party
websites that offer goods and services in direct competition with Complainant’s
business. The Panel finds that such use
does 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).
In Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003), the panel found that the respondent was not
using the domain names for a bona fide
offering of goods or services or a legitimate noncommercial or fair use because
the respondent used the domain names to divert Internet users to a website that
offered services that competed with those offered by the complainant under its
marks. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum
Nov. 20, 2003) (finding that the respondent used a domain name for commercial
benefit by diverting Internet users to a website that sold goods and services
similar to those offered by the complainant and thus, was not using the name in
connection with a bona fide offering
of goods or services nor a legitimate noncommercial or fair use).
Additionally, evidence in the
record indicates that Respondent has offered to sell the disputed domain
names. This is further evidence that
Respondent is not using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Mothers Against
Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use). Consequently, in the instant case, the Panel finds that
Respondent’s use of Complainant’s marks in the disputed domain names does not constitute
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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleged that Respondent acted in bad faith by
registering and using domain names that contain the dominant features of
Complainant’s registered marks.
Respondent is using the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names
to redirect Internet users to websites featuring advertisements for and links
to websites offering products that are in direct competition with
Complainant. The Panel finds that such
use constitutes disruption and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business).
Based on the uncontested evidence presented by Complainant, the Panel infers that Respondent receives click-through fees for diverting Internet users to websites featuring advertisements for and links to websites offering products that are in direct competition with Complainant. Respondent’s domain names, incorporating the dominant features of Complainant’s marks, are capable of creating confusion as to Complainant’s affiliation with the disputed domain names and resulting websites. The Panel thus concludes that the Respondent’s use of the disputed domain names is equivalent to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwdell4me.net>, <wwwdellcom.com>, <wwwdellcom.net>, <dell4mecom.net> and <wwwdell4mecom.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 21, 2006
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