WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dell Computer Corporation v. Got Domain Names For Sale, a/k/a/ gotnames@mciworld.com, a/k/a wes2@bellsouth.net

Case No. D2000-0659

 

1. The Parties

1.1. The Complainant is Dell Computer Corporation, a corporation organized and existing under the law of the State of Delaware, United States of America, having its principal place of business at One Dell Way, Round Rock, Texas, United States of America.

1.2. The Respondent is Got Domains Names for Sale, a business entity having a mailing address of P.O. Box 4164 Wilmington, North Carolina, United States of America. Complainant alleges that gotnames@mciworld.com and wes2@bellsouth.net are also names under which Respondent registers domain names.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are:

2.1. "dellpalm.com";
2.2. "dellpalm.net";
2.3. "dellpalm.org";
2.4. "palmdell.com";
2.5. "palmdell.net";
2.6. "delldsl.com";
2.7. "dellpocketpc.com";
2.8. "dellpocketpc.net";
2.9. "dellwireless.net".

2.10. In all cases the registrar with which the domain name is registered is Network Solutions in Herndon, Virginia, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 22, 2000, and the signed original together with four copies forwarded by express courier was received on June 28, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 27, 2000.

3.2 On June 27, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.

On July 4, 2000, NSI confirmed by reply e-mail as follows:

3.3.1 That the domain names "dellpalm.com" and "dellpalm.net" are registered with NSI, are currently in active status, and that the Respondent, Got Domain Names for Sale, is the current registrant of the names. The registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.

3.3.2. That the Administrative and Billing Contact for the two domain names is Wes Hudson, gotnames@mciworld.com.

3.3.3. That the domain name "dellpalm.org" is registered with NSI, is currently in active status, and that gotnames@mciworld.com is the current registrant of the name. The registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.

3.3.4. That the Administrative and Billing Contact for "dellpalm.org" is Sherry Hudson, wes2@bellsouth.net.

3.3.5. That the domain names "palmdell.com", "palmdell.net", "delldsl.com", "dellpocketpc.com", "dellpocketpc.net", and "dellwireless.net" are registered with NSI, are currently in active status, and that wes2@bellsouth.net is the current registrant of the names.

3.3.6. That the Administrative and Billing Contact for the six names is Wes Hudson, gotnames@mciworld.com.

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

3.5 No formal deficiencies having been recorded, on July 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of July 24, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. That email address was incorrect, and, accordingly, the email notification was returned to the WIPO Center. In any event, evidence of proper notice is provided by the evidence in the record of the Respondentís participation in these proceedings.

3.6 An informal Response dated July 10, 2000 was received by the WIPO Center. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on July 20, 2000.

3.7. On August 3, 2000, the WIPO Center received a Reply from Complainant dated July 31, 2000.

3.8. On August 4, 2000, having received M. Scott Donaheyís Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was August 18, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

4.1. Complainant has applied for or has obtained 28 registrations of marks containing the word "DELL" with the United States Patent and Trademark Office ("USPTO"), including DELL DIMENSION, DELL PRECISION, DELLWARE, DELL TALK, AND DELL4ME. The earliest date of first use of these marks is November 1987.

4.2. Complainant spends millions of dollars each year in the advertisement and promotion of its trademarks, products and services. From 1996 to 1999 such expenditures were in excess of US$300million.

4.3. Complainant has registered and uses many domain names in conducting its business on the Internet, including "dell.com", "dellcomputer.com", "delldirect.com", "dellnet.com", and others. The earliest domain name registered was "dell.com", registered on November 22, 1988.

4.4. On April 12, 2000, Complainant announced an agreement between it and Palm, Inc., a leading provider of handheld computing devices, enabling Complainant to offer an expanded line of Palm products through its direct sales channels.

4.5. On April 12, 2000, Respondent registered the domain names "dellpalm.com" and "dellpalm.net". On April 28, 2000, Respondent registered "dellpalm.org."

4.6. Respondent does not contest the names "palmdell.com", "palmdell.net", "delldsl.com", "dellpocketpc.com", "dellpocketpc.net", and "dellwireless.net". Respondent concedes that these marks were registered after being contacted by Complainant. Response, p. 1. As these marks were all registered on April 22, 2000 (see Complaint, Annex A), Complainant contacted Respondent about the unauthorized use of Complainantís trademark on or before April 22, 2000.

4.7. Respondent does contest Complainantís rights to "dellpalm.com", "dellpalm.net", and "dellpalm.org".

4.8. Respondent has registered numerous other domain names incorporating the trademarks or service marks of various entities, including Alcatel, Bell South, Excite@Home, CNN, AOL, FoxNews, MSN, MSNBC, U.S. West, and Verizon. Complaint, Annexes I and J.

4.9. Respondent contends that the two domain names at issue are generic terms for "valley of the palms," that "Dell" is the nickname of his wifeís uncle, and that Respondent conducts a business buying and selling sabal pond trees.

4.10. After being contacted by Complainant, on April 26, 2000, Respondent filed an application for the registration of a trademark with the USPTO for the trademark DELLPALM.

4.11. Respondent directed the Panelís attention to the many active web sites using the word "dell," which sites are not owned or operated by Dell computers.

4.12. The domain name "dellpalm.com" does not resolve to an active web site. The domain names "dellpalm.net" and "dellpalm.org" both resolve to a web site identified as "domainsarefree.com," and stating, "Welcome to the parked homepage of www.dellpalm.net [or .org]." Web hosting and domain name registration services are offered for a fee on the site. 1

 

5. Partiesí Contentions

5.1 Complainant contends that Respondent has registered as a domain name names which are confusingly similar to the trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent contends that it Complainant has no trademark identical or similar to its domain names, that the domain names reflect generic terms, that Respondent has rights and legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in good faith.

 

6. Discussion and Findings

6.1. The Panel is given broad discretion to consolidate disputes between a given complainant and a given respondent. Policy, Paragraph 4(f). The Panel exercises that discretion in the present case to consolidate all of the domain name claims brought by the Complainant in this proceeding. Uniform Rules, Rule 10(e); Bennett Coleman & Co Ltd. v. Steven S Lalwani, WIPO Case No. D2000-0014 and

D 2000-0015.

6.2. Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

6.3. Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

6.4. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate interests in respect of the domain name; and,

3) the domain name has been registered and used in bad faith.

6.5. At the outset the Panel notes that Complainant submitted, without a prior request for consideration, an unsolicited Reply. Because there is no provision in the rules for such a filing and because no request was made by the panel for additional documents, the Panel disregards the Reply filed by the Complainant. J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035.

6.6. The Panel notes that the domain names "dellpalm.com", "dellpalm.net", and "dellpalm.org" are confusingly similar to defendantís mark, especially in light of the press release in which it announced that Complainant would be marketing the products of Palm, Inc. The Panel believes that it is more than a coincidence that two of the three names at issue were registered on the very day that the press release announcing the partnership between Complainant and Palm issued, and that the third followed shortly thereafter.

6.7. The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, Paragraph 4(c).

6.8. Respondent has failed to produce evidence sufficient to rebut Complainantís allegations. The bald assertion that Respondent is engaged in the buying and selling of sabal palm trees, without the certification required by the Uniform Rules, Rule 5(b)(viii) and without any evidentiary support, is far from persuasive. Finter Bank Zurich v. Gianluca Olivieri, WIPO Case No. D2000-0091.

6.9. Respondent contends that it has applied for registration of trademarks identical to the domain names remaining at issue. This might constitute a demonstration of Respondentís rights to and legitimate interests in the three domain names that remain at issue, had such application been made prior to receiving notice of the dispute. See Policy, Paragraph 4(c)(i). Because Respondentís application postdates his receipt of notice of the dispute, Respondent cannot be said to have acquired rights to or legitimate interests in the domain names at issue. NFL Properties, Inc. v. Rusty Rahe. WIPO Case No. D2000-0128; Mahindra & Mahindra Limited v. Neoplanet Solutions, WIPO Case No. D2000-0248.

6.10. As noted, supra, Paragraph 4.3, Respondent has registered numerous other domain names that are identical or confusingly similar to marks registered by third parties. This is in and of itself evidence of bad faith. Policy, Paragraph4(b)(ii); Adobe Systems, Inc. v. Domain OZ, WIPO Case No. D2000-0057; ISL Marketing AG, et al. v. J.Y. Chung, et al., WIPO Case No. D2000-0034.

6.11. While the above finding makes it unnecessary to do so, the Panel also notes that Respondentís use of the name to attract users to a web site through the use of a domain name which is confusingly similar to the mark held by Complainant and which creates a likelihood of confusion as to the sponsorship or affiliation of the web site, also constitutes bad faith registration and use. Bank of America Corporation v. InterMos, ICANN Case No. FA0009000095092; XS, Inc. v. World Wide Web Marketplace, Inc. ICANN Case No. CPR0001.

 

7. Decision

7.1. For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent that Respondent has not conceded rightfully belong to Complainant are confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the remaining domain names at issue, and that the Respondentís domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names "dellpalm.com", "dellpalm.net", "dellpalm.org", "palmdell.com", "palmdell.net", "delldsl.com", "dellpocketpc.com", "dellpocketpc.net", and "dellwireless.net" be transferred to the Complainant.

 


 

M. Scott Donahey
Sole Panelist

Dated: August 15, 2000


 

Footnotes:

1. Reviewing the Whois information is tantamount to the taking of Judicial Notice by a United States Federal Court. See, Federal Rules of Evidence, Rule 201. Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119; America Networks Inc. v. Tariq Masood and Solo Signs, ICANN Case No. D2000-0131.