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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dell Computer Corporation v. Alex and Birgitta Ewaldsson
Case No. D2000-1087
1. The Parties
T The Complainant is Dell Computer Corporation, a Delaware corporation with its headquarters at 1 Dell Way, Round Rock, Texas, USA. The Complainant is represented by Ms. Anna Kuhn, its trademark counsel, of Austin, Texas, USA.
The Respondents are Alex and Birgitta Ewaldsson, with a postal address of Box 1144, Norrkoping, 600 41, Sweden. The Respondents have taken no part in the proceeding and are not represented by counsel.
2. The Domain Names and Registrar
The domain names at issue are 122 in number as specified in Appendix A to this decision. They shall hereafter be referred to as "the disputed domain names". They are registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").
3. Procedural History
The Complaint submitted by Dell Computer Corporation was received on August 17, 2000 (electronic version) and August 21, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On August 25, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:
(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).
(b) Confirm that the disputed domain names are registered with NSI.
(c) Confirm that the persons identified as the Respondents are the current registrants of the disputed domain names.
(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.
(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
(f) Indicate the current status of the domain names.
By email dated September 7, 2000, NSI advised WIPO Center as follows:
(a) NSI had received a copy of the Complaint from the Complainant.
(b) NSI is the Registrar of the disputed domain names.
(c) The Respondents are the current registrants of the said domain names at the postal address shown above. No street address was given, although telephone numbers and email addresses were provided. No information was provided by NSI as to the technical, administrative and billing contacts.
(d) NSI’s 5.0 Service Agreement is in effect.
(e) All the disputed domain name registrations are in "Active" status.
NSI has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The Respondents have never requested that the domain names at issue be deleted from the domain name database. The Respondents have not sought to terminate their agreement with NSI. The Respondents are accordingly bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on September 22, 2000, transmitted by post/courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondents. A copy of the Complaint was emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.
The Respondents were advised that a Response to the Complaint was required within 20 calendar days (i.e., by October 11, 2000). They were also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Notification of Complaint and Commencement of Administrative Proceedings was sent to postmaster@ addresses; no e-mail addresses were found at any web page examined in connection with the disputed domain names.
The Respondents filed no Response. A Notification of Respondent Default was sent by post/courier and email on October 20, 2000.
On October 27, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On October 28, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On November 8, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on November 14, 2000. In terms of Rule 15(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by November 21, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant claims to be the world’s 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, trademark 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.
The Complainant spends millions of dollars each year in advertising and promoting through its trademarks, its computer products, services and image. During its last fiscal year alone, it spent over $300 million in advertising and promotion.
The Complainant owns more 30 thirty United States registrations and applications for marks containing the word "Dell". Details are set out in its Complaint and its annexures. The mark "Dell" and variations are also registered in more than 130 countries around the world, including the Respondents’ home country of Sweden. The Complainant’s Swedish registrations are as set out in the Complaint and annexures. These bear registration dates between January 29, 1993 and June 4, 1999.
In addition to the "Dell" mark itself, the Complainant uses a family of marks
consisting of the term "Dell" combined with another term. These include, but are not limited to, the registered marks "Dell Dimension", "Dell Precision", "Dellware", "Dell Talk" and "Dell Financial Services", as well as marks for which applications are currently pending, such as "Dell4Me", "Dell E Com", "Dell Host", and "Dell WebPC".
The Complainant conducts business on the Internet through numerous "Dell" domain names, including "dell.com", "dellcomputers.com", "delldirect.com", "dellnet.com", "dellhost.com", "dellauctions.com", "dellplus.com", "dell4me.com", and others. Its earliest domain name, "dell.com", was registered on November 22, 1988. By the end of the last fiscal year, Internet sales to the Complainant’s customers reached nearly 50 percent of the Complainant’s revenue and averaged $40 million per day.
In September and October, 1999, the Complainant learned that a Swedish company called Euroregister had registered the following domain names: "delldvd.net", "delldvd.org", "dellfilm.com", "dellfilm.net", "dellfilm.org", "dell-filmclub.com", "dell-filmclub.net", "dellibm.net", "dellibm.org", "dell-ibm.org", "ibm-dell.net", "ibm-dell.org" and "buydell.net". In the WHOIS information for these domain names, next to the name Euroregister, the notation "4Sale" appeared. The Complainant, through its attorneys, contacted Euroregister by letter dated October 27, 1999, which was sent via email and first class mail postage prepaid to the attention of Alex Ewaldsson, the administrative contact listed in the WHOIS information for those domain names. The Complainant’s letter informed Euroregister that its domain names infringed the Complainant’s trademark rights. The Complainant requested that Euroregister either transfer the domain names to the Complainant or provide an explanation of any legitimate right it had to use the domain names. The Complainant threatened Court action in the United States District Court at Austin, Texas, and attached a proposed statement of claim citing Euroregister.
Having received no response, the Complainant’s attorneys sent a follow-up email to Euroregister on November 8, 1999. In an email of November 8, 1999, Alex Ewaldsson stated that Euroregister maintained the domain names at the request of a group of Russian computer programmers, but that Euroregister could act on their behalf. Mr. Ewaldsson further stated that the programmers hoped to present a business proposal to the Complainant within the next twelve months, and that Euroregister was advising the programmers to keep the domain names until the business proposal was made; then, if the Complainant was uninterested in the proposal, to offer to sell the domain names to the Complainant for a "reasonable sum". He alleged that this was not meant to be "a name napping" and that "the similarity in designer groups marketing and commercial name includes DELL in their name and is as a part of their line of business".
In response, the Complainant’s attorneys informed Mr. Ewaldsson and Euroregister, in an email on December 9, 1999, that no business relationship would be possible as long as Euroregister continued to own infringing domain names. The Complainant reiterated its demand that the domain names be transferred to it, and stated that "the only compensation will be the $70 filing fee per registration". The Complainant also asked that, if Euroregister were acting on behalf of another party, it should identify that party.
In an email of December 20, 1999, Mr. Ewaldsson informed the Complainant’s counsel that Euroregister had chosen to deactivate the 13 domain names referred to above. Contrary to the Complainant’s explicit condition that there would be no compensation beyond reimbursement for the registration fees, Mr. Ewaldsson stated that Euroregister would be sending the Complainant a bill not only for the registration fees, but also for an additional $800. He added: "I strongly suggest that you register the domain names for DELL Computer or if you wish (sic) we can do it on their behalf".
The Complainant confirmed that Euroregister had in fact canceled the 13 domain names. On May 23, 2000, the Complainant received an invoice from Euroregister. In addition to the registration fees that the Complainant had agreed to reimburse ($70 per domain name, a total of $910), the invoice requested payment of $800 for "our work" and $428 for a value-added tax. The total payment requested was $2,138.
The day following receipt of Euroregister’s invoice, the Complainant forwarded payment of $910 to Euroregister, as reimbursement for the registration fees. The Complainant did not pay the additional $1228 sought in the invoice.
On June 6, 2000, Mr. Ewaldsson attempted to contact the Complainant’s attorney, Doreen Costa, by telephone. Ms. Costa was unavailable: Mr. Ewaldsson spoke with Ms. Costa’s paralegal. Mr. Ewaldsson informed her that he was upset that he had not received the full amount of the May 23 invoice, and that as a result, he had registered 35 additional domain names containing the mark "Dell". Mr. Ewaldsson asked that Ms. Costa return his call, and stated that he intended to engage in a legal battle with the Complainant if the Complainant remained unwilling to pay.
Ms. Costa spoke with Mr. Ewaldsson on June 8, 2000. At that time, Mr. Ewaldsson claimed to have registered 50 domain names containing "Dell". He stated that he was angry at the Complainant’s decision to pay only the registration fees, and that his anger had prompted him to register the additional "Dell" domain names. Mr. Ewaldsson wished the Complainant to enter into a contract to purchase his domain name registration and protection services, and wanted the Complainant to provide him with certain computer equipment. Ms. Costa asked that Mr. Ewaldsson send a letter setting forth these demands and providing a list of the "Dell" domain names he had registered.
On July 20, 2000, the Complainant’s attorneys received a letter from Birgitta Ewaldsson, who identified herself as Alex Ewaldsson’s secretary. She stated she was writing "on his behalf after his instructions". The letter confirmed that Mr. Ewaldsson is "expecting to get a contract with [the Complainant]" to provide certain domain name "protection" services. It further stated that "In the case, [the Complainant] declares our offer of cooperation; we offer all the domains for sale for 2 computers of the latest model and a colour laser printer plus 70 USD for each domain. Plus transfer fee of 70 $ per domain".
Shortly after the conversation between Ms. Costa and Mr. Ewaldsson, the Complainant learned that Respondents were offering at least 63 "Dell" domain names for sale on the website "GreatDomains.com".
At the time the Complaint was prepared for filing, NSI’s WHOIS database showed the Respondent, Mr. Ewaldsson, to be the owner or part owner of 122 "Dell" domain names. Many of these are registered to Mr. Ewaldsson individually. The rest are registered to Mr. Ewaldsson and Ms. Ewaldsson together. Many bear the notation "Domain4Sale" next to the registrant’s name in the WHOIS information. All were registered between June 6 and July 10, 2000.
5. Parties’ Contentions
The Complainant submits that each of Respondents’ 122 domain names contains the term "Dell" combined with one or more additional terms. Given the strength of the "Dell" mark standing alone and the fact that the Complainant commonly uses marks in which the term "Dell" is combined with other terms, consumers encountering the Respondents’ domain names will be confused into believing that all the disputed domain names are associated with the Complainant. Many of the Respondents’ domain names, such as "delldrivers.com" and "dellit.com" ("IT" is a common acronym for "information technology"), are composed of "Dell" combined with a generic term relating to the computer industry where the Complainant’s "Dell" mark is best known. Others, such as "newdell.net" and "dellultra.com", are composed of "Dell", combined with a laudatory or descriptive term. Still others combine the "Dell" mark with well-known marks of other computer companies, such as "ibmdell.com" and "dellsun.net" (Sun Microsystems). The Respondents have even registered three domain names containing the term "onedellway", which is the street address of the Complainant’s headquarters.
Because of the number of domain names at issue in this case, the Complainant did not provide a separate analysis of the likelihood of confusion for each of the 122 domain names. The Complainant submits that the likelihood of confusion is clear from a simple reading of the domain names themselves. Moreover, the Respondents have acknowledged that their registration of the "Dell" domain names was a retaliatory act directed at the Complainant. They have attempted to use the domain names as leverage to try to extract a profitable settlement from the Complainant.
In the Complainant’s submission, the Respondents intentionally chose domain names that were similar to the "Dell" mark and the family of "Dell" marks; otherwise, the domain names would have little value either as a retaliation measure or as negotiating leverage. It is therefore appropriate to infer that there is a likelihood of confusion between these domain names and the Complainant’s marks. See Sun-Fun Prods., Inc. v. Suntan Research & Development, Inc., 656 F.2d 186 (5th Cir. 1981) (proof that defendant intended to copy plaintiff’s mark may justify inference of confusing similarity); Perfect Fit Indus., Inc. v. Acme Quilting Co., 618 F.2d 950 (2d. Cir. 1980) (intentional copier is presumed to have intended to create confusion and to have succeeded).
The Complainant further submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names. There is no evidence of the Respondents’ use of, or demonstrable preparations to use, these domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. The Respondents have not been commonly known by the domain names. The Respondents are not making a legitimate non-commercial or fair use of the domain names.
The Respondents registered the disputed domain names with full and complete knowledge of the Complainant’s rights, having been informed of those rights upon the occasion of Euroregister’s previous registration of thirteen "Dell" domain names (all of which have been re-registered by the Respondents and are at issue in this case). Moreover, the Respondents have made clear the bad faith purpose for which the domain names were acquired – to extort a profitable settlement from the Complainant.
The Respondents registered the domain names in order to sell them for valuable consideration in excess of the out-of-pocket costs directly related to the domain names. When they registered some of the domain names, the Respondents took care to add the term "Domain4Sale" next to their names, so that it would show up in the WHOIS records. The Respondents have listed many domain names for sale on the website "GreatDomains.com", inviting the public to "Make Offer" for each of the domains. The Respondents specifically stated in a letter received by the Complainant on July 20, 2000 that they wished to sell the domain names to the Complainant for $70 each (in addition to reimbursement of the registration fees), plus a contract for services, two computers and a color laser printer.
The Respondents registered and have used all of the disputed domain names at issue in this Complaint in order to prevent the Complainant from registering its marks in corresponding domain names. The Respondents have registered domain names containing the well-known trademarks of third parties. For example, the Respondents own over 100 domain names containing the term "telia", which is the company name and trademark of a multinational telecommunications company headquartered in the Respondents’ home country of Sweden. These include "telia4sale.net", "teliaconsulting.com", "telianederland.com", "teliasatelliteservice.net", "teliainteractive.net", "teliainternational.net", and "teliatrademark.com". Information obtained from the U.S. Patent and Trademark Office website shows "Telia" to be a registered trademark owned by the Swedish company.
Searches by the Complainant of NSI’s WHOIS database, conducted on July 7, 2000, showed other domain names owned by Respondents. These include the following:
Information obtained from the U.S. Patent and Trademark Office website on July 7, 2000, shows that "Bentley", "Ikea", "Jaguar", "Philips", "Siemens" and "Subaru" are trademarks registered by others.
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
(a) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(b) That the Respondent has no rights or legitimate interests in respect of the domain name.
(c) That the domain name has been registered and used in bad faith.
The Panel accepts the submissions of the Complainant as detailed above as being well-founded under each of the above criteria.
In the Panel’s view, all the disputed domain names are confusingly similar to the Complainant’s marks which are registered in Sweden, the United Stated and other countries, i.e. "Dell" and other marks incorporating the word "Dell". The Complainant has a wide international reputation for its name "Dell" for computer systems. This reputation is well-recognised in the United States and Europe.
Applying the usual tests under trademark law and passing-off law, the Panel decides that all the disputed domain names are confusingly similar. Persons dealing with, or even perusing any website of any of the disputed domain names could easily conclude that the registrant of any of them was associated with Dell’s operation as a marketer of computer systems in Europe. The other words attached to "Dell" in some of the domain names have a computer or IT connotation, such as "IT", or "Servers" or "Driver". Yet others combine someone else’s famous mark such as "DellIBM". Others indicate some kind of service which might be associated with or offered by Dell, such as "Dell-Mobile", "Dell Finance" or "Dellinsurance", for example.
Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel finds that there is no evidence that the Respondents, before receiving notice of the dispute, used or demonstrably prepared to use the domain names in connection with a bona fide offering of services.
Nor have the Respondents ever been commonly known by the disputed domain names. Nor are the Respondents making any legitimate non-commercial or fair use of the domain names without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondents’ conduct suggests otherwise. Their registration of this plethora of names all involving "Dell" was a retaliatory measure triggered by the Complainant’s refusal to pay more than registration fees for the 13 transferred domain names containing the word "Dell".
The Respondents have no licence or other legal right in respect of the domain names, unless their usage is permitted at law. The Panel therefore decides that the Respondents have no rights or legitimate interests in respect of the domain names.
Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:
"the following circumstances … shall be evidence of the registration and use of the domain name in bad faith:
(iii) You have registered the domain name primarily for disrupting the business of a competitor.
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
The Respondents did place some of the names on the Internet for sale. The fact of soliciting the sale and placing the domain name on the Internet for sale has been regarded in a number of WIPO cases as being evidence of bad faith use.
The retaliatory circumstance of registering so many names provides clear evidence of bad faith registration. The Respondents, moreover, by their registration of other domains featuring world-famous names, show that they are acting opportunistically and blatantly in seeking to capitalize on famous names for pecuniary motives. The bulk registration was clearly for the purpose of disrupting the business of the Complainant. Each name creates the likelihood of confusion with the Complainant’s mark and lets an Internet user think there is some sponsorship by, affiliation with, or endorsement by, the Complainant of the Respondents’ products or services. The same circumstances that show bad faith registration also show bad faith use.
The Panel accordingly determines that the Respondents have registered and used the Complainant’s mark in bad faith.
For the foregoing reasons, the Panel decides:
(a) that the 122 domain names registered by the Respondents are identical or confusingly similar to the trademark to which the Complainant has rights;
(b) that the Respondents have no rights or legitimate interests in respect of the domain names; and
(c) that the Respondents’ domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the 122 domain names be transferred to the Complainant.
Hon Sir Ian Barker QC
Date: November 17, 2000