WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dell Computer Corporation v. Parmi Phull

Case No. D2001-0285

 

1. The Parties

The Complainant is Dell Computer Corporation, a Delaware corporation having a principal place of business at One Dell Way, Round Rock, Texas 78682.

The Respondent is Parmi Phull of C/130, n12 El Plantio, La Canada, Valencia, 46182, Spain.

 

2. The Domain Names and Registrar

The contested domain names are <dellonline.net> and <dellonline.org>.

The registrar is Network Solutions, Inc.

 

3. Procedural History

The electronic version of the Complaint was filed on February 23, 2001. The hardcopy of the Complaint was received on February 28, 2001. Payment in the required amount was received on February 28, 2001.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.

On March 6, 2001, the Center formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceedings and sent copies to the Complainant, the Registrar and ICANN.

The Respondent failed to file a response. On March 26, 2001, the Center sent a Notification of Respondent Default by email to the Respondent and the Complainant.

On April 6, 2001, the Center contacted John Swinson and requested that he act as panelist in this case.

Mr. Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On April 6, 2001, the parties were notified that Mr. Swinson had been appointed and that a decision was to be, save exceptional circumstances, handed down on April 19, 2001.

The language of the proceeding is English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; no Response was filed by the Respondent; the administrative panel was properly constituted.

 

4. Factual Background

The Complainant owns more than thirty United States trade mark registrations and applications for marks containing the term DELL, including the following:

- U.S. Registration No. 1,498,470 for the trade mark DELL;

- U.S. Registration No. 1,616,571 for the trade mark DELL;

- U.S. Registration No. 1,860,272 for the trade mark DELL;

- U.S. Registration No. 2,236,785 for the trade mark DELL; and

- U.S. Registration No. 2,390,851 for the trade mark WWW.DELL.COM.

The mark DELL and variations are also registered in more than 130 countries around the world, including the Respondentís home country of Spain.

The Complainantís registrations in Spain include:

- Spanish Registration No. 1250232 for the trade mark DELL;

- Spanish Registration No. 2102515 for the trade mark DELL;

- Spanish Registration No. 1694649(9) for the trade mark DELL;

- Spanish Registration No. 1694648(0) for the trade mark DELL;

- Spanish Registration No. 2156293 for the trade mark Dell PRECISION; and

- Spanish Registration No. 1752903 for the trade mark DELLWARE.

The contested domain names currently resolve to the Respondentís netnames4u website (http://www.netnames4u.com/). This website contains a message that "the web site that you have attempted to visit is reserved" and advertises a number of other domain names for sale.

The contested domain names are advertised for sale at http://www.mercury.virtual-pc.com/net4u/.

 

5. Partiesí Contentions

A. Complainant

The Complainant is the worldís largest direct seller of computer systems, with revenues of approximately $25.3 billion in the last fiscal year. Founded in 1984, the Complainant began using the name and mark DELL as a trade name, trade mark and service mark in 1987. Since that time, the Complainant has made extensive and prominent use of its DELL mark in connection with a wide range of computer related goods and services, including offering its goods and services "ONLINE" through such websites as dell.com.

The Complainant spends millions of dollars each year in advertising and promoting its trade marks, products, services and image, thereby creating substantial goodwill in the marketplace. During its last fiscal year alone, the Complainant spent over $300 million in advertising and promotion. As a result of these efforts, the DELL mark has become an asset of incalculable value to the Complainant.

The Complainant contends that the Respondent registered the contested domain names for the purpose of transferring the domain names to the Complainant at a profit. The Complainant alleges that the Respondent has engaged in a pattern of conduct of registering domain names that incorporate famous trade marks.

B. Respondent

The Respondent failed to file a Response within the time limit set by the Center.

In accordance with Rule 5(e) of the ICANN Rules, this dispute shall be decided on the basis of the Complaint alone.

 

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:

(a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(b) the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trade mark or service mark

The DELL mark is well-known throughout the world. Many computer and Internet users are familiar with the story of Michael Dell starting his computer business at his home in Texas and building it into a large, successful seller of quality computer systems. The Complainant is well-known for successfully selling its products online.

The panel finds that the Complainant is the owner of the registered trade mark DELL and a number of other registered trade marks containing the word DELL.

The panel finds that the contested domain names are confusingly similar to the trade marks owned by the Complainant.

The contested domain names consist of the DELL trade mark and a generic term ("online"). Domain names comprised of a trade mark and a generic term have repeatedly been held to be confusingly similar to the trade mark alone (See Brown & Bigelow, Inc. v. Site Ads, Inc., NAF Case No. FA0011000096127; The Body Shop, Intíl., PLL v. CPIC NET, WIPO Case No. D2000-1214; Space Imaging, LLC v. Brownwell, eResolution Case No. AF-0298).

The Complainant has been successful in a number of domain name disputes involving the DELL trade mark. The domain names that have been transferred to the Complainant pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy include buy-dell.com, buy-dell.net, buy-dell.org, buydell.net, buydell.org, dell2000.org, dell2001.com, dell2001.net, dell2001.org (See Dell Computer Corporation v. Alex and Birgitta Ewaldsson, WIPO Case No. D2000-1087) and dellpalm.com, dellpalm.net, dellpalm.org, palmdell.com, palmdell.net, delldsl.com, dellpocketpc.com, dellpocketpc.net, dellwireless.net (See Dell Computer Corporation v. Got Domain Names For Sale, a/k/a/ gotnames@mciworld.com, a/k/a wes2@bellsouth.net, WIPO Case No. D2000-0659).

6.2 Illegitimacy

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the contested domain names as:

(a) there is no evidence of the Respondentís use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;

(b) the Respondent has not been commonly known by the domain names;

(c) the Respondent is not making a legitimate noncommercial or fair use of the domain names; and

(d) the Respondent undertook to register the domain names with full and complete knowledge of the Complainantís superior and prior rights.

The panel agrees with the Complainantís assertions above. It is highly unlikely that the Respondent was unaware of the Complainantís well-known trade mark, but the panel does not need to decide this dispute on that basis.

The Respondent had the opportunity to respond and present evidence that it is a legitimate business that registered the domain name without knowledge of the Complainantís rights. The Respondent chose not to do so. The Complainant is not entitled to relief simply by default, but the panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147, May 1, 2000).

Paragraph 14 of the ICANN Rules provides that:

"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."

The words DELL or DELLONLINE do not form any part of the Respondentís name and the Respondent has not provided the panel with any evidence that it is using or making preparations to use the contested domain names in connection with a bona fide offering of goods or services.

The contested domain names currently resolve to the Respondentís website at http://www.netnames4u.com where a number of domain names are listed for sale and Internet users are able to submit offers to purchase those domain names.

Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondentís legitimate rights in the contested domain names. The Respondent does not meet any of the three elements set out in this paragraph.

Accordingly, the panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the contested domain names in bad faith as the Respondent:

(a) registered the contested domain names in order to sell them to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the domain names; and

(b) registered the contested domain names to prevent the Complainant from reflecting its marks in corresponding domain names.

On December 27, 2000, the Complainantís attorney sent a letter to the Respondent informing the Respondent that the contested domain names infringed the Complainantís trade mark rights and requesting the Respondent to transfer the contested domain names to the Complainant. On January 5, 2001, the Respondent sent an email to the Complainantís attorney which stated that "the word DELL is not unique these days". The Respondent offered to "settle this claim" for a price of US$1123.

During the course of the Complainantís investigations, the Complainant learned that the Respondent holds more than eighty top-level domain name registrations. Among the domain name registrations held by the Respondent are a number of other famous trade marks coupled with "online", such as compaqonline.net, compaqonline.org, siemensonline.com and siemensonline.org.

The contested domain names currently resolve to the Respondentís netnames4u website (http://www.netnames4u.com/) where a number of domain names (but not the contested domain names) are listed for sale and Internet users are able to submit offers to purchase those domain names. The contested domain names are advertised for sale at http://www.mercury.virtual-pc.com/net4u/ and the email contact at that site is sales@netnames4u.com. The Respondent is the registered owner of netnames4u.com.

Prior ICANN decisions have found that offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor. See New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812, TV Globo Ltda. v. Green Card Transportes e Eventos Ltda., WIPO Case No. D2000-0351 (three panel decision); Robert Ellenbogen v. Mike Pearson; WIPO Case No. D00-0001; EMI PLC v. JASON MACE WIPO Case No. D2000-0712; EMI GROUP PLC and KHALIL EL-HOLIBY WIPO Case No. D2000-0761; Cedar Trade Associates, Inc., v. Ricks, FA0002000093633; Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Entertainment Charlotte WIPO Case No. D2000-0619.

The panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i) and (ii) of the ICANN Policy.

The panel finds that the Complainant has established this element.

 

7. Decision

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain names, <dellonline.net> and <dellonline.org>, be transferred to the Complainant.

 


 

John Swinson
Sole Panelist

Dated: April 11, 2001