Dell Inc. v. William Stenzel
Claim Number: FA0510000574596
Complainant is Dell Inc. (“Complainant”), represented by MariaSole L. Kaine, of Loeb & Loeb LLP, 10100 Santa Monica Boulevard, Suite 2200, Los Angeles, CA 90067. Respondent is William Stenzel (“Respondent”), 22038 Gold Canyon, Santa Clara, CA 91390.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellscomputer.com>, registered with Melbourne It, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2005.
On October 11, 2005, Melbourne It, Ltd. confirmed by e-mail to the National Arbitration Forum that the <dellscomputer.com> domain name is registered with Melbourne It, Ltd. and that Respondent is the current registrant of the name. Melbourne It, Ltd. has verified that Respondent is bound by the Melbourne It, Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
This Complaint is based on the following factual and legal grounds:
For over 20 years, Complainant Dell Inc., f/k/a Dell Computer Corporation ("Dell") has marketed and sold computer systems and related products and services. In 1987, Dell adopted the corporate and trade name "Dell Computer Corporation" and began using its DELL trademark. Over the years, Dell has invested heavily in marketing under its DELL Marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries. The media Dell has used include, but are not limited to, television, radio, magazines, newspapers and the Internet. Dell has been, and continues to be, extremely successful. Dell sells its DELL products and services directly in over 80 countries. For the last fiscal year Dell had revenue of almost $50 billion and, for several years, it has been the world's largest direct seller of computer systems. As a consequence of Dell's marketing and sales success, Dell and its DELL Marks have been famous in the United States and in many other countries. As a testament to this, BusinessWeek Magazine recently published its BusinessWeek/Interbrand annual report which ranked the DELL brand as the 21st most valuable global brand. Robert Berner and David Kiley, Global Brands, BUSINESSWEEK, August 1, 2005, at 86. In 2003, Dell changed its corporate and trade name from Dell Computer to Dell Inc. However, Dell is still widely known and referred to as "Dell Computer."
Dell generates almost half of its revenue from sales over the Internet, and Dell's web site appears or has appeared in dozens of languages. To support its on-line marketing and sales efforts, Dell owns, uses and has registered hundreds of domain names that contain Dell's DELL mark and/or its current and former trade names, including <dell.com,> <dellcomputer.com,> and <dellcomputers.com.> Internet users who type or search for <dell.com,> <dellcomputer.com> or <dellcomputers.com> expect to and do arrive at Dell's website.
Dell's DELL mark has been registered in the United States Patent and Trademark Office since 1990; its <www.dell.com> mark has been registered since 2000 and it has owned <dellcomputer.com> and <dellcomputers.com> since 1998. The domain name at issue here was registered in March of 2005. Dell clearly has priority and, as a second comer, Respondent had an obligation not to use or register a domain name that is confusingly similar to Dell's name and Marks. Respondent has taken no such care. In fact, Respondent has intentionally chosen a name virtually identical to the DELL name and Marks.
In July 2005, Dell learned that Respondent had registered and was using <dellscomputer.com> ("Domain") to redirect Internet users seeking Dell's goods and services to a webpage that is in direct competition with Dell - <apple.com.> The Domain was clearly being used to capitalize on a Dell customer's typing error and to gain an advantage from the fact that customers searching for Dell's products and services would now be offered those of a rival.
On July 27, 2005, Dell's outside counsel sent Respondent a letter objecting to his registration and use of the Domain, and requesting that Respondent transfer the Domain to Dell. On July 29, 2005, Respondent sent Dell's counsel an e-mail stating that he would "cease and desist from directing dellscomputer.com to apple.com" and that he had "changed the redirection from apple.com to dell.com."
In an e-mail response dated August 4, 2005, Dell's counsel thanked Mr. Stenzel but asked that he comply in the manner outlined in her July 27 letter and transfer the Domain to Dell. Respondent never responded to counsel's e-mail.
A. The "www.dellscomputer.com" Domain Name is Confusingly Similar to Complainant's DELL Marks and Names
The Domain is confusingly similar to Dell's DELL Marks and trade names. The Domain completely subsumes Dell's famous DELL and <www.dell.com> trademarks. It also is essentially identical to Dell's "Dell Computer" former trade name, and to its <dellcomputer.com> and <dellcomputers.com> domain names.
As indicated above, Dell only recently changed its corporate name and is still widely known and referred to as "Dell Computer." The Domain is a simple, perhaps common, mistyping/misspelling of Dell Computer and/or Dell Computers; it is different by only one letter - an "s" added to the end of the DELL Mark or transposed from the end of "computers." Clearly, Respondent has sought to take advantage of this mistake by Internet users searching for Dell's website, and it is well-settled that the mere addition of a letter or term is not sufficient to obviate confusion. See Dell Computer Corp. v. MTO C.A. and Diabetes Education Long Life, D2002-0363 (WIPO July 5, 2002) (<dellaboutus.com,> <dellcontact.com,> <dellcustomer.com,> <delloffers.com,> <dellinvestors.com> and <bancondell.com> confusingly similar to DELL mark); see also Alta Vista Company v. Curtis Claar d/b/a Tae Po Promotions, FA0009000095549 (NAF Oct. 24, 2000) (<altavistas.com> confusingly similar to ALTAVISTA); E Auto, L.L.C. v. Net Me Up, D2000-0104 (WIPO April 14, 2000) (<eautomotive.com> confusingly similar to the trademark EAUTO); Morrison & Foerster, LLP v. Brian Wick and American Distribution Systems, Inc., FA0003000094381 (NAF May 8, 2000) (<morrisonforester.com> and <morrisonandfoester.com> confusingly similar to MORRISON & FOERSTER).
Many previous Panels have concluded that a respondent cannot have legitimate rights to or interest in a domain name where it can not meet any of the circumstances listed in UDRP Policy, paragraph 4(c) and it has no connection or affiliation with the complainant. See e.g., Dell Computer Corp. v. Rave Club Berlin, D2002-0601 (WIPO Aug. 12, 20002); Dell Inc. aka Dell Computer Corp. v. Asia Ventures, Inc., D2004-0452 (WIPO July 30, 2004); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO July 3, 2001); Barry Zito v. Stan Andruszkiewicz, FA0207000114773 (NAF Aug. 20, 2002); Florida First Bank v. Mukadder Mufit Ozgunes, FA0004000094391 (NAF May 15, 2000); V Secret Catalogue, Inc. v. Artco, Inc., FA 94342 (NAF May 9, 2000). As was the case in those decisions, the Respondent here cannot meet any of the paragraph 4(c) circumstances, and he also has no connection or affiliation with Dell.
(1) No Bona Fide Offering of Goods or Services
Panels have consistently held that using a domain name consisting of a misspelling of a mark to divert users to other commercial websites is not a bona fide offering of goods or services. Diners Club Int'l Ltd. v. Domain Admin******It's all in the name******, FA0305000156839 (NAF June 23, 2003) (respondent's <wwwdinersclub.com> domain name, a mis-spelling of <www.dinersclub.com> and a typosquatted version of Complainant's DINERS CLUB mark, was evidence in and of itself that Respondent lacked rights or legitimate interest in the disputed domain name); Nat'l Ass'n of Prof'l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site."). Here Registrant not only diverted traffic to a commercial website, he directed it to <apple.com>, one of Dell's main competitors.
Respondent can not hide behind the fact that, after Dell objected, he re-directed traffic from <dellscomputer.com> to <dell.com.> First, such use cannot constitute a bona fide offering of Respondent's goods or services; he has no connection or affiliation with Dell. Moreover, UDRP policy, paragraph 4(c)(i) limits bona fide uses of a Domain to those made "before any notice to [Respondent] of the dispute." See, e.g., Wollongong City Council, Complainant v. Viva La Gong, D2003-0113 (WIPO April 2, 2003) (where site's content was changed after notice was provided, the panel found that "[a]ny changes after notice of this dispute must be treated with caution since they can shed no light on the state of the site prior to the dispute arising"); National Collegiate Athletic Association v. Dusty Brown, D2004-0491 (WIPO August 30, 2004) (changing to a gripe site after contact by mark owner was insufficient to establish any legitimate interest in the disputed domain name). This result is logical and fair as consideration of post-notice conversions would allow cybersquatters to avoid the provisions of the UDRP simply by changing temporarily to a "legitimate" use and resuming the wrongful use once any relevant proceedings ended. Accordingly, Respondent's current redirection of the Domain to <dell.com> is of no consequence.
(2) Respondent is Not Known as <dellscomputer.com>
There is no evidence to suggest that Respondent is currently known, or has ever been known as <dellscomputer.com.> Nothing in the WHOIS record for the Domain suggests that Respondent is known by the Domain. Moreover, given the distinctive nature of Dell's DELL mark, its Dell Computer name and its <dell.com>, <dellcomputer.com> and <dellcompters.com> domain names, along with Dell's worldwide fame and notoriety, it would be nearly impossible for Respondent ever to claim to be "commonly known by" any derivative of the DELL Mark. Thus, UDRP Policy 4(c)(ii) is inapplicable to Respondent. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 29, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 17, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); Nike, Inc. v. Ben Dias, FA0211000135016 (NAF Jan. 7, 2002).
(3) No Legitimate Noncommercial or Fair Use
Respondent has not made a legitimate noncommercial or fair use of the Domain. Prior to Dell's notice to Respondent, he used the Domain to direct Internet users and consumers to a commercial website offering goods and services in direct competition with Dell. Respondent's post-objection use can not aid him either. As discussed above, such use can not be considered in determining whether Respondent has any rights or legitimate interest in the Domain. Moreover, Respondent's post-objection use has been neither non-commercial nor a fair use.
Finally, Respondent's lack of legitimate interest is demonstrated by the fact that, as discussed below, his only demonstrated uses of the Domain have been in bad faith. Administrative panels have found that "bad faith use of a domain name does not establish rights or legitimate interests in the sense of paragraph 4(a)(ii) of the Policy." TPI Holdings, Inc. v. AFX Communications, D2000-1472 (WIPO Feb. 2, 2001).
The facts surrounding Respondent's registration and use of the Domain all demonstrate his bad faith. There can be no doubt that Respondent registered the Domain with full knowledge of the DELL Marks, trade name and <dell.com,> <dellcomputer.com,> and <dellcomputers.com> domain names. At the time Respondent registered <dellscomputer.com,> the "Dell Computer" name had been around for over 15 years, Dell and its DELL Marks were famous worldwide, Dell had obtained trademark registrations in numerous countries, and Dell had long since registered and been using the <dellcomputer.com> and <dellcomputers.com> domain names. Respondent clearly and intentionally took Dell's former trade name and mark, "Dell Computer," added the letter "s" and registered it as a domain name. Furthermore, Respondent, in linking the disputed domain name to the site of a direct competitor of Dell, evidences that he had knowledge of the DELL Mark and associated products and services prior to seeking registration.
As previous panels have noted, "there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively." Digi Int'l v. DDI Sys., FA0209000124506 (NAF Oct. 24, 2002); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (Respondent had actual and constructive knowledge of Complainant's EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith). Thus, Respondent's registration of the Domain was with knowledge of the DELL Marks, which constitutes evidence of bad faith under the UDRP Policy.
Further, although Respondent redirected his site to <dell.com> after receiving Dell's counsel's letter, he has failed to respond to Dell's subsequent demand to transfer the Domain. This failure can only be interpreted as Respondent's deliberate intention to not respond in order to hold on to the Domain and capitalize on Dell's trade name, DELL Marks and DELL websites at a future date.
For the above reasons, Dell submits that Respondent has registered and used the Domain in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dell, Inc. f/k/a Dell Computer Corporation, has for over twenty years marketed and sold computer systems and related products and services. Over the years, Complainant has invested heavily in marketing under its DELL marks, devoting hundreds of millions of dollars to advertising and promoting its products and services in over eighty countries. For the last fiscal year, Complainant generated revenues close to $50 billion and for several years Complainant has been the world’s largest direct seller of computer systems.
As a consequence of Complainant’s marketing and sales success, Complainant’s marks have become famous in the United States and many other countries around the world. Complainant generates almost half of its revenue from sales over the Internet. To support its online marketing and sales efforts, Complainant holds hundreds of domain names which contain Complainant’s famous DELL mark, e.g. <dellcomputer.com>, <dellcomputers.com>, <dellsupport.com> and <dellcustomercare.com>.
Complainant owns numerous trademark registrations for its DELL mark. Complainant has registered the DELL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,616,571 issued October 9, 1990).
Respondent registered the <dellscomputer.com> domain name on March 15, 2003. Respondent’s domain name resolves to third-party commercial website that directly compete with Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Simply using a domain name that forwards to another web site invites a higher level of scrutiny, Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, FA0211000129123 (January 2, 2003) and The Procter & Gamble Company v. Hong Gil Dong, FA0510000572962 (November 10, 2005).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DELL mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <dellscomputer.com> domain name is confusingly similar to Complainant’s mark because the domain name fully incorporates Complainant’s DELL mark and adds the descriptive term “computer,” which has an obvious connection to Complainant’s business. Respondent’s <dellscomputer.com> domain name adds the single letter “s” to Complainant’s DELL mark. Such changes are not enough to overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The addition of the top-level domain “.com” is irrelevant in determining whether the <dellscomputer.com> domain name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
The Panel finds Policy ¶4(a)(i) has been satisfied.
Complainant asserts Respondent does not have rights or legitimate interests in the <dellscomputer.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to the Complaint and the fact the domain name forwards to another web site, the Panel infers Respondent does not have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is not commonly known by the <dellscomputer.com> domain name. The Panel concludes Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent is using the <dellscomputer.com> domain name to redirect consumers to third-party commercial website that features goods and services that directly compete with Complainant (possibly for Respondent’s commercial gain). The Panel finds Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users to Respondent’s website for Respondent’s own commercial gain (or, at a minimum, the commercial gain of the web sites the traffic is being forwarded to) does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds Policy ¶4(a)(ii) has been satisfied.
The Panel infers that Respondent receives click-through fees for diverting Internet users to its own commercial website. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv), as Respondent is using the <dellscomputer.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds Policy ¶4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dellscomputer.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 23, 2005