WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. C.I.T. GRUP SRL

Case No. DRO2007-0007

 

1. The Parties

The Complainant is Dell Inc., Round Rock, Texas, United States of America, represented by Nestor Nestor Diculescu Kingston Petersen, Societa Civila de Avocati, Romania.

The Respondent is C.I.T. GRUP SRL, represented by Iliescu Dan, Timisoara, Romania.

 

2. The Domain Name and Registrar

The disputed domain names <dellcomputers.ro> and <delldistribution.ro> are registered with RNC.ro

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2007. On August 23, 2007, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain names at issue. On August 24 2007, RNC.ro 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”), 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 September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2007.

The Respondent sent several emails to the Case Manager and directly to the Complainant’s indicated representative (dated October, 1 , 2, and 4, 2007) by which it confirmed the rights of the Complainant in the two disputed domain names and stated its availability to settle amicably this dispute. On October 4, 2007, the indicated representative of the Complainant informed the Center that the Complainant considered the request of the Respondent ungrounded and rejected it, choosing to go forward for a decision of the Panel.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 17, 2007. 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.

The Complaint was filed by the Complainant in the Romanian language. Nevertheless the Complainant is an American Company. The Respondent has corresponded with the Case Manger appointed in these proceedings in the English language, which suggests the likelihood that the Respondent is conversant and proficient in the English language. In addition, the two disputed domain names were registered in 2003, when the language of the registration agreement was both Romanian and English, as stated in other prior WIPO decisions (see Inter IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003). Having considered all these facts and the circumstances of these administrative proceedings, the Panel decides according to Rules, paragraph 11(a) that the language of these proceedings shall be English.

The Complaint is signed by Mr. Alexandru Harsany as the authorized representative of the Complainant. In proving this capacity, Mr. Harsany had submitted as Appendix 1 to the Complaint a power of attorney no 244857/20.12.2006, by which Mr. Harsany together with other persons are empowered, as attorneys at law, by Dell Computer Corporation to do the following activities: “to legally assist and represent in respect to the enforcement of the Client’s intellectual property rights in Romania, in particular in respect to the unlawful use of its trademarks by Romanian or foreign physical and/or legal persons with the purpose of inducing to the public; and to assist and/ or represent the Client in front of any Romanian authorities, that may be competent with respect of such object including but not limited to police, prosecution, State office for inventions and trademarks, National Authority of Customs, Competition Council etc”.

Having considered the content of the power of attorney, the Panel has issued the Procedural Order No.1 dated October 29, 2007, by which it requested the Complainant to provide further evidence regarding the capacity of Mr. Harsany to act in these specific administrative procedings as the authorized representative of the Complainant.

In response, the Complainant, through Mr. Harsany, submitted on October 30, 2007, the following documents: (1) Legal assistance agreement 244857/20 December 2006 (English version); (2) Translation of original power of attorney in English language; (3) Legal assistance agreement 244857/20 December 2006 (Romanian version); (4) Scanned original of power of attorney in Romanian language.

 

4. Factual Background

The Complainant is Dell Inc. The Complainant has registered several trademarks in Romania dating from 1998 such as WWW DELL COM for Class 9 and 40, DELL PRECISION for Class 9 and DELL for Class 9 and 2.

In February 2005, Dell Computer Corporation sued CIT Grup SRL – the Respondent in this case – together with another company, in a Romanian Court, requesting the Court to oblige the two Defendants to put an end to the use in their commercial activity of the trademark DELL. The Court application was filed in connection with the use by the Respondent of the domain name <dellromania.ro>. By the award no. 1303/15.11.2005, the Court accepted the application and has forbidden the two Plaintiffs any use in their commercial activity of the trademark DELL.

The Respondent is a Romanian company which registered the two disputed domain names in 2003.

In these proceedings, the Respondent admitted in writing, that the Complainant has rights in the disputed domain name and offered to settle the dispute amicably, an offer which the Complainant did not take up.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It is the owner of several notorious trademarks registered in Romania and abroad;

- The disputed domain names are identical with such notorious trademarks;

- Dell Inc was known until 2003 under the name Dell Computer Corporation;

- Dell Computer Corporation sued CIT Grup SRL – the Respondent in this case – together with another company, in front of the Romanian Courts, requesting the Court to oblige the two Defendants to put an end to the use in their commercial activity of the trademark DELL. The Court application was filed in connection with the use by the Respondent of the domain name <dellromania.ro>. By the award no. 1303/15.11.2005, the Court accepted the application and have forbidden the two Plaintiffs the use in their commercial activity of the trademark DELL;

- The indicated authorized representative of the Complainant has corresponded with the Respondent requesting to stop using the two disputed domain names;

- The Respondent has no rights or legitimate interests in the disputed domain names;

- The Respondent has registered the disputed domain names in bad faith.

B. Respondent

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

During these proceedings the Respondent sent several emails to the Case Manager and directly to the Complainant’s indicated representative (dated October, 1 ,2, and 4, 2007) by which it confirmed the rights of the Complainant in the two disputed domain names and stated its availability to settle amicably the dispute.

 

6. Discussion and Findings

As described above, the Panel, after considering the evidence submitted by the Complainant as to the capacity of its indicated representative to act in these procedures, issued the Procedural Order no.1 dated October 29, 2007. By this Procedural Order, the Panel requested the Complainant to provide further evidence supporting this capacity. The documents submitted by the Complainant’s indicated representative as a response to the Procedural Order, do not shed additional light on the content of the power of attorney no. 244857/20.12.2006.

In this sense, the Legal Assistance contract provided by the Complainant’s indicated representative states at Article 1 the object of the contract which consists of “legal assistance and representation in respect to the enforcement of the Client’s intellectual property rights in Romania, in particular in respect to the unlawful use of its trademarks by Romanian or foreign physical and/or legal persons with the purpose of inducing to the public the false impression that they would represent the Client and/or have been empowered by the Client to offer/sale goods that bear the Client’s trademark; to represent in front of any Romanian authorities, that may be competent with respect of such object including but not limited to police, prosecution, State office for inventions and trademarks, National Authority of Customs…”: and in the preamble, the name of the Client – Dell Computer Corporation.

From the documents submitted as evidence, in these proceedings, in supporting the capacity of Mr. Alexandru Harsany, who also signs the Complaint, to represent the Complainant in these proceedings, it may be inferred that a company called Dell Computer Corporation has empowered the law firm in which Mr. Harsany exercises its profession to legally assist and represent this company, in respect to the enforcement of its intellectual property rights in Romania, in particular in respect to the unlawful use of its trademarks by Romanian or foreign physical and/or legal persons, by apparently limiting this representation to representation of such company in front of any Romanian authorities, that may be competent with respect of such object including but not limited to police, prosecution, State office for inventions and trademarks, National Authority of Customs, Competition Council, etc.

The Panel considers that the documents provided by Mr. Harsany in the name of his client in response to the Procedural Order, do not definitively support the capacity of Mr. Harsany to act as the authorized representative of the Complainant, which is Dell Inc and not Dell Computer Corporation, in these UDRP proceedings.

Despite the fact that within the Complaint, Mr. Harsany states that in 2003, the Complainant has changed its name from Dell Computers in Dell Inc, the power of attorney signed in December 2006, number 244857/2006, indicates Dell Computer Corporation as the Client and there is no evidence in the file definitively establishing such a name modification.

Nonetheless there is correspondence between the Center and the Complainant’s Legal Department (that is, of Dell Inc.) by which the Complainant acknowledged the Complaint was filed by their stated representative.

For these reasons, despite the failure of Mr. Harsany to correct the irregularities of the documents submitted to the Panel, and noting also that the UDRP does not contain express provisions to be complied with regarding Powers of Attorney (see Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate, WIPO Case No. D2006-1231), the Panel is prepared to accept that Complainant is aware that Mr. Harsany is acting for them in some capacity in these proceedings and shall proceed with consideration of the Complaint on its merits.

A. Identical or Confusingly Similar

There is no doubt that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. The addition of the words “computers” and “distribution” to the “dell” word does not make distinctive the two disputed domain names from the Complainant’s mark DELL, which is a strong and very distinctive trademark. For this reasons the Panel finds the disputed domain names confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent sent several emails to the Case Manager and directly to the Complainant’s indicated representative (dated October, 1 ,2, and 4, 2007) by which it confirmed the rights of the Complainant in the two disputed domain names and stated its availability to settle amicably this dispute.

By the several emails the Respondent confirmed implicitly and explicitly the lack of any rights and interests in the disputed domain names.

Having in consideration the apparent documented concession of the Complainant’s full rights to these domain names, the Panel finds that the Respondent in all likelihood has no rights or legitimate interest in relation to the disputed domain names.

C. Registered and Used in Bad Faith

It is the opinion of the Panel that the disputed domain name was in all likelihood registered and used in bad faith. The Complainant’s contentions and the Respondent confirmation of the rights of the Complainant in the disputed domain names indicates that the Respondent acquired the disputed domain name in order to benefit from the fame of the Complainant and the drawing power of the Complainant’s DELL trademark. The Complainant’s DELL trademark has a strong reputation and is widely known, the Respondent has provided no evidence of any actual or contemplated good faith use, and it is in the circumstances difficult if not impossible to conceive of any plausible actual or contemplated use of the Domain Names by the Respondent that would not be illegitimate (see eg. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <dellcomputers.ro> and <delldistribution.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: October 31, 2007