World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell, Inc. v. Nguyen The Cuong

Case No. D2011-1121

1. The Parties

The Complainant is Dell, Inc. of Round Rock, Texas, United States of America, represented by Baker & McKenzie (Vietnam) Ltd., Viet Nam.

The Respondent is Nguyen The Cuong of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <maytinhdell.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2011. On July 4, 2011, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 6, 2011, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2011.

The Center appointed Alain Bensoussan as the sole panelist in this matter on August 9, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complaint is directed against the disputed domain name <maytinhdell.net> which had been registered since October 26, 2010.

The complaint is based on the numerous trademarks DELL protected all around the world, in particular but not exclusively in Vietnam in class 9 under number 21423 since July 8, 1996, and on the fame of the trademark DELL for computer products and services.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that :

- the disputed domain name <maytinhdell.net> is confusingly similar to its numerous and famous and world recognized trademarks composed exclusively or with the word DELL, in particular insofar as the ordinary Vietnamese Internet user will perceive “maytinh” as “máy tính”, which is the equivalent of the English word “computer”;

- the Respondent has no rights or legitimate interest in the disputed domain name insofar as there does not exist any evidence that the Respondent has ever used or proved preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services or that the Respondent has been commonly known by the disputed domain name or that the Respondent operates a business entity that uses the disputed domain name;

- the disputed domain name was registered and is being used in bas faith inasmuch as the Respondent’s website active under the disputed domain name displays among others elements the Complainant’s logotype which has been registered in Vietnam under Trademark registration Nos. 21424 and 1005367 along with the Complainant’s computers, whereas the Respondent is not an authorized reseller of Dell products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel examines the case according to paragraph 4 of Policy applicable to the instant case and according to which the holder of a domain name ending in “.net” is “required to submit to a mandatory administrative proceeding in the event that a third party (a “ complainant”) asserts to the applicable Provider, in compliance with the Rules, that :

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

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

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

Notwithstanding the default of the Respondent, the Complainant has to prove the above three elements.

The Panel also refers to several UDRP Panel decisions according to which :

- the first condition is satisfied when the relevant trademark is recognizable within the domain name, which only adds to this trademark common, dictionary, descriptive terms, this construction of the domain name being insufficient to prevent confusion with Internet users (Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251, <artlecorbusier.com>, Denial, Transfer in Part; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918, <aollnews.com> inter alia, Denial, Transfer in Part); the only exception to this rule is when a not very distinctive trademark is incorporated with other words so that it cannot be considered as the dominant component of the domain name (Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587, <naturelle.com> inter alia, Transfer, with Denial in Part).

- the top-level suffix in the domain name, e.g. “.net” is disregarded when assessing the risk of confusion since it is merely a technical requirement of registration of domain name (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, <guiness.com>, Transfer);

- as far as the second element has to be proven, according to a consensus view, the Complainant “ is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP” (See paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and the quoted relevant decisions such as Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, <croatiaairlines.com>, Transfer).

A. Identical or Confusingly Similar

The Complainant has proved that it owns numerous registered trademarks composed with the word DELL all around the world and in particular in Vietnam where it owns seven registered trademarks. Moreover, it is not doubtful that the trademark DELL is well-known in several countries all around the world by professional as well as by general public for computer products and services. In particular the Complainant has evidenced that it sells its Dell computer products in Vietnam through several local distributors.

According to the Panel, the disputed domain name appears to be constructed with three elements :

may

tinh

dell

If the Panel considers that the public of reference is not exclusively Vietnamese consumer, it nevertheless takes into consideration that the WhoIs databases evidence that the Respondent is located in Vietnam, that the website active under the disputed domain name at prima facie addresses to Vietnamese consumers, since it is written in Vietnamese language and it contains one address in Ha Noi with a map which expressly and non arguably locates the Respondent in Vietnam.

Now, the Complainant has produced an extract from an official English – Vietnamese Computing Dictionary (Túđiên) which evidences that the English word “computer” is translated into Vietnamese by “Máy Tính”.

In this context, the Panel considers that the addition of the merely descriptive word “may tinh” to the trademark DELL in the disputed domain name <maytinhdell.net> and the fact that this descriptive word has a direct link with the products and services for which the trademark DELL is well-known, at very least registered and used in Vietnam, is sufficient to characterize a likelihood of confusion with a trademark or service mark in which the Complainant has rights, under paragraph 4(a)(i) of the Policy. In particular the absence of space between “may” and “tinh” and the absence of accent on the letters “a” and “i” of “may tinh” within the disputed domain name is irrelevant as to the perception of the direct meaning of “may tinh” by the pertinent consumer.

The Panel is satisfied that the Complainant has succeeded to evidence that the disputed domain name <maytinhdell.net> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant asserts and supports that the Respondent “(i) registered the domain name after the Complainant’s rights in and to the Dell Trademark were established; (ii) has no connection or affiliation with the Complainant; and (iii) “Dell” is not a descriptive of generic term”.

As mentioned above, according to a consensus view in paragraph 2.1 of the WIPO Overview 2.0, the Complainant “is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”.

The Respondent failed to bring contrary evidences to the assessments and evidences filed by the Complainant.

Moreover the Panel finds that on the web page accessible under “http://www1.ap.dell.com/content/topics/topic.aspx/ap/topics/contacts/en/sadm_contacts?c=ap&l=en&s=gen&~section=028&~ck=cr&redirect=1” and quoted by the Complainant in its Complaint, the Respondent does not appear in the list of the duly authorized resellers of Dell products and services.

Taking into account of all these elements, the Panel is satisfied that the Complainant has succeeded to evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the website active under the disputed domain name is dedicated to the sell of computer, reproduces the logotype under which the Complainant is known, reproduces several time the word “DELL” such as “Dell WorkStation&Studio XPS”, “DELL LCD”, “Dell’’s Accessories” and “MÁY TÍNH DELL”. All these elements are likely to induce the Internet user to believe that the Respondent is an authorized reseller of the Complainant, whereas it is not according to the Complainant’s assertions, which have not be denied by the Respondent.

Taking into account of all these elements, the Panel is satisfied that the Complainant has succeeded to evidence that the disputed domain name has been registered and is being used in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <maytinhdell.net> be transferred to the Complainant.

Alain Bensoussan
Sole Panelist
Dated: August 23, 2011

 

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