WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Inc. v. Gustavo Winchester / YourJungle Privacy Protection Service
Case No. D2014-2188
1. The Parties
The Complainant is Dell Inc. of Texas, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britian and Northern and Northern Ireland
The Respondent is Gustavo Winchester of Belo Horizonte, Brazil / YourJungle Privacy Protection Service, Colorado Springs. Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dellauctions.com> is registered with NamePal.com #8027 (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2014. On December 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 7, 2015.
The Center verified that the amended 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 January 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on February 17, 2015. 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 Complainant is an American multinational computer technology company that develops, sells, repairs and supports computer and related products and services. In 2013 the Complainant was the third largest PC vendor in the world and it is currently the number1 shipper of PC monitors in the world.
The Complainant is the owner of various domain names incorporating the DELL mark which resolve to a website for its goods and services at “www.www.dell.com”. In addition the DELL brand is well established on social media sites with accounts on Facebook totaling over 7.8 million likes, with over 1,500 of these on Complainant’s“DellAuction” Facebook page, over 860,000 followers on LinkedIn and over 300,000 followers on Twitter.
The Complainant is the owner of the DELL mark and has registered the DELL name and mark for protection in more than 130 countries and covering at least 12 different classes of goods and services. (Annex 9 of the Complaint)
The disputed domain name <dellauctions.com> was registered on April 10, 2014.
5. Parties’ Contentions
The Complainant states that the disputed domain name <dellauctions.com> is identical or confusingly similar to the trademark DELL. The disputed domain name incorporates in its entirety the DELL mark with only a few small changes: the disputed domain name employs lower case letters while the trademark is generally used in association with entirely capital letters, the generic Top-level domain suffix “.com” extension which is not present in the trademark and the addition of the word “auctions” within the domain name.
The Complainant further states that regarding the additional word “auctions” it has been held by numerous UDRP panels that the descriptive or generic additions to a trademark, particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks.
The Complainant indicates that it has not licensed or otherwise authorized the Respondent to use the DELL mark as part of the Respondent’s domain name. Nevertheless the Respondent has registered the disputed domain name <dellauctions.com> that incorporates in its entirety the Complainant's distinctive DELL mark.
The Complainant adds that the Respondent currently is not using the disputed domain name for a noncommercial purpose. An expectation of developing a legitimate noncommercial interest in a domain name is insufficient to defeat the prima facie case that the use is unauthorized.
The Complainant additionally states that the website at the disputed domain name currently contains a pay-per-click (PPC) hyperlinks on the left hand side of the page including links to “laptop Auctions Online”, “Gun Auction Sites” and “Refurbished Laptop Computers” which redirect the user by means of hyperlinks to sites selling competitors’ products such as Samsung and ASUS laptop computers, as well as MacBook and iPad products from competing technology companies. The use of a website for a PPC landing page is not legitimate where adverts are keyed to the trademark value of the domain name.
The Complainant finally states that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.
The Complainant indicates that the Respondent will have been aware, or should have been aware, of the Complainant due to its extensive use in connection with the terms “DellAuction” and “DellAuctions”. The Respondent has registered the domain name to create confusion with the Complainant's mark and Complainant’s domain name “www.dellauction.com”, and this demonstrates bad faith at the time of registration.
Consequently, in view of the above-mentioned circumstances, it is established that the Respondent has no rights or legitimate interests in the disputed disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the trademark DELL.
The disputed domain name consists of the term “dell”, with the addition of the generic term “auctions”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
Furthermore, the Complainant is the owner of the domain name <dellauction.com>, being the only difference with the disputed domain name the addition of the letter “s” in auction.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704).
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark or service mark corresponding to the disputed domain name. That the Respondent is not commonly known by the name “Dell”, is not in any way affiliated with the Complainant, nor authorized or licensed to use the DELL trademark, nor authorized to seek registration of any domain name incorporating said trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleadingly consumers to its website for commercial gain.
The Panel has reviewed the evidence provided by the Complainant and can conclude that the Respondent was clearly not making a legitimate use of the disputed domain name since the website contained a PPPPC) website with a list of hyperlinks to “laptop Auctions Online”, “Gun Auction Sites"” and “Refurbished Laptop Computers” which redirected the users to sites selling competitors’ products and competing technology companies.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of Complainant when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well known throughout the world; therefore, in the Panel’s assessment, it is unlikely to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.
The Complainant, in Annex 1 of the Complaint, provided evidence of the above where it is demonstrated that it had registered and operated an auction site at “www.dellauction.com” from 1999 until February 10, 2014, and also that the Complainant had social media sites registered for “DellAuction” which are easily found through Internet searches under the terms “Dell Auctions” or similar. Therefore, the Respondent will have been aware, or should have been aware, of the Complainant due to its extensive use in connection with the terms “DellAuction” and “DellAuctions“.
In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent uses the disputed domain name to direct Internet users to a website which contains a PPC website with a list of hyperlinks to computer hardware and software, and furthermore, it displays links to direct competitors of the Complainant. These PPC links are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <dellauctions.com> be transferred to the Complainant.
Date: February 17, 2015