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Источник информации: Для удобства навигации: WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONDell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life Case No. D2002-0363
1. TheParties The Complainant is DellComputer Corporation of One Dell Way, Round Rock, Texas 78682, United States ofAmerica. The Respondents are MTOC.A. of Mariedy #2, P. Fijo, Falcon Estade Falcon, Venezuela and DiabetesEducation Long LifeФ - DellФ,a division of Master Tec Occidente C.A. (MTO C.A.) of Edificio Mariedy No. 2,Prolongacion Calle Progreso, Esquina Pumarrosa, Punto Fijo, Estado Falcon,Venezuela.
2. TheDomain Name and Registrar The domain names atissue are:
The Registrar isTucows.com, Inc., Toronto, Canada.
3. ProceduralHistory The WIPO Arbitration andMediation Center [the Center] received the Original Complaint on April 17, 2002 [electronic version] and on April 22,2002 [hard copy]. On April 23, 2002,the Center transmitted via email notification of Complaint deficiency. The Center received Amendment (1) to theComplaint on April 23, 2002 [electronic version] and on April 26, 2002 [hardcopy]. The Center received Amendment(2) to the Complaint on May 14, 2002 [electronic version] and onMay 16, 2002 [hard copy]. ByAmendment (2) to the Complaint the Complainant added three further domainnames, which were registered by the Respondent after the date [April 17, 2002]when the Original Complaint was transmitted to the Center. The Original Complaint, Amendment (1) to theComplaint and Amendment (2) to the Complaint are hereinafter collectivelyreferred to as "the Complaint". The Center verified thatthe Complaint satisfies the formal requirements of the ICANN Uniform DomainName Dispute Resolution Policy [the Policy], the Rules for Uniform Domain NameDispute Resolution Policy [the Rules], and the WIPO Supplemental Rules forUniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment tothe Center. The formal date of thecommencement of this administrative proceeding is April 24, 2002. On April 22, 2002 theCenter transmitted via email to Tucows.com, Inc. a request for registrarverification in connection with the eighty domain names at issue in theComplaint and on the same day Tucows.com, Inc. transmitted by email to theCenter Tucows' verification response confirming that the registrant is DiabetesEducation Long Life - Dell (trademark) and that the contact for administrative,billing and technical purposes is Dell™ <diabetes@dellwww.com> all of thesame address at Estado Falcon, Venezuela. On May 23, 2002 theCenter transmitted via email to Tucows.com, Inc a request for registrarverification in connection with the additional three domain names at issue inAmendment (2) to the Complaint and on the same day Tucows.com, Inc transmittedby email to the Center Tucows' verification response confirming that theregistrant is Diabetes Education Long Life - DELL and that the contact foradministrative billing and technical purposes is DELL™<diabetes@dellwww.com> all of the same address at Estado Falcon,Venezuela. Having verified that theComplaint satisfied the formal requirements of the Policy and the Rules, theCenter transmitted by on April 24, 2002 to Respondent the Notification of Complaintand Commencement of the Administrative Proceeding. The Center advised that the Response was due by May 14,2002. On the same day the Centertransmitted by fax and by mail copies of the foregoing documents to Respondentat the addresses provided by the Complaint and Tucows.com, Inc. The Center received theRespondent's Response on May 9, 2002 [electronic version] and on May 15, 2002[hard copy]. On May 10, 2002 the Centertransmitted Acknowledgement of Receipt of Response to the Respondent and to theComplainant. Having received on May15, 2002 Mr. David Perkins' Declarationof Impartiality and Independence and his Statement of Acceptance, the Centertransmitted to the parties a Notification of Appointment of AdministrativePanel and Projected Decision Date, in which Mr. David Perkins was formallyappointed as the Sole Panelist. TheProjected Decision Date was June 11, 2002. The Sole Panelist finds that the Administrative Panel was properlyconstituted and appointed in accordance with the Rules and the SupplementalRules. On May 23, 2002 thePanel issued a Procedural Order admitting Amendment (2) to the Complaint andproviding the Respondent with an opportunity to submit a supplemental Responseby May 27, 2002, such Response to be limited to the issues raised in Amendment(2) to the Complaint. On May 28, 2002the Respondent duly filed a Supplemental Response. Having verified thecommunication records in the case file, the Administrative Panel finds that theCenter has discharged its responsibility under para. 2(a) of the Rules "toemploy reasonably available means calculated to achieve actual notice toRespondents". Therefore, theAdministrative Panel shall issue its Decision based upon the Complaint,Amendment (1) to the Complaint, Amendment (2) to the Complaint, the Response,the Supplemental Response, the Policy, the Rules and the and the SupplementalRules.
4. Factualbackground 4.1 TheComplainant's Business The Complainant was founded in 1984. It is the world's largest direct seller ofcomputer systems. In its fiscal year[February 1, 2001 to January 31, 2002] it had revenues of approximately US$31.2billion. 4.2 TheComplainant's DELL trademark 4.2.1 The Complainant began using the name andmark DELL as a tradename, trademark and service mark in 1987. The Complainant is the proprietor of morethan 30 US trademark registrations and applications containing the markDELL. Copies of the following are annexedto the Complaint:
*The WWW.DELL.COMmark was first used in commerce in December 1997. 4.2.2 In addition, the Complainant uses a family of marks combining DELL with another component. These include but are not limited to:
4.2.3 The DELL mark and variations of it arealso registered by the Complainant in more than 130 countries around the world. 4.2.4 In the Respondent's country, Venezuela,the Complainant sells products and owns a number of trademark registrations forDELL for use in relation to computer products and services. These include: Registration Number Mark P-208279 DELL 4.2.5 The Complainant extensively advertises andpromotes its trademarks, products, services and image. During the 2001 fiscal year alone, theComplainant spent over US$431 million in advertising and promotion. The Complainant states that as a result ofthese activities and of its business, the DELL mark has become an asset ofincalculable value to the Corporation. 4.3 The Complainant's Internet Business The Complainant conducts businesson the Internet through numerous DELL domain names. The earliest of these, <dell.com>, was registered onNovember 22, 1988. By the end of thefiscal year 2000 [February 1, 2000 to January 1, 2001] online internet sales bythe Complainant accounted for almost 50% of its revenue and averagedUS$40 million per day. The domainnames used by the Complainant include: <dell.com> 4.4 Complainant's Patronage of diabetes The Complainant believesthat medical education about diseases, including diabetes, is an important andworthy cause. The Complainant is asupporter of the Juvenile Diabetes Research Foundation's annual walk to curediabetes. Over 1500 of theComplainant's employees, including the corporation's founder [Michael Dell] andits President [Kevin Rollins], participated in the 2001 Austin Walk for thecure, raising over US$130K in that one event. 4.5 The Respondents 4.5.1 The Respondents are represented by Glen McShand of Naples, Florida. He is the President and founder of MasterTec Corporation - also of Naples, Florida - which is described in the Responseas; "… a very well knownengineering firm that serves the petroleum and mining industry worldwide." Master Tec OccidenteC.A. [MTO C.A.] of Venezuela is described as a sister company of Master TecCorporation. The Response states: "Master TecCorporation and Master Tec Occidente C.A. have hundreds of trademarks wellknown by the Petroleum, Mining, Aerospace, Government, Health, Medical andgeneral industry"." 4.5.2 In February 1999 "DellФ Diabetes Education Long LifeФ" was founded as a Division of MTO C.A. The parties involved were America TecCorporation: Tec Corporation: Master Tec Corporation [all of the USA]; MTO C.A.[of Venezuela] and Mr. McShand. TheResponse explains that in August 1995 Mr. McShand's infant son, Ian (21 monthsold), was diagnosed with Type I diabetes. Mr. McShand and his wife started to help other families struck withthat disease through education, support and counselling. It appears that the concept behind theRespondent organization is to provide assistance worldwide to diabetes suffersand/or their families. 4.5.3 The original registrant of 79 of the 80domain names in issue was MTO C.A. Theoriginal registrant of the domain name in issue, BANCONDELL.COM, was AZTEC ofNaples, Florida. The Original Complaintwas filed on April 17, 2002. The nextday [April 18, 2002] all 80 domain names were transferred from MTO C.A. toDiabetes Education Long Life - DELL (Trademark), which is now the effectiveRespondent in this administrative action. The additional 3 domain names in issue - identified in Amendment(2) to the Complaint - were registered by the Diabetes Education Long Life -DELL.
5 TheParties' Contentions 5.1 The Complainant's Case 5.1.1 The Complainant's case is that the domain namesin issue are identical or confusingly similar to its DELL and DELL family oftrademarks and service marks, that the Respondent has no rights or legitimateinterest in respect of those domain names, and that such domain names wereregistered and are being used in bad faith. 5.1.2 The Complainant states that it firstbecame aware of the domain names in issue through a domain name Watch Report,the first in January 2002 which identified 62 of the domain names and thesecond in March 2002 which identified the remaining 18 domain names. After filing the Original Complaint [onApril 8, 2002], the Complainant became aware of 3 additionalregistrations, namely: <dellfrance.com>;and <dellchina.com> registered April 20, 2001 and registered May 1, 2002and these were added in Amendment (2) to the Complaint. 5.1.3 The Complaint exhibits the following interpartes correspondence with the Respondents: February 12, 2002: TheComplainant's attorneys addressed a ceaseand desist letter to Mr. McShand in relation to 62 domain names [identifiedin their January 2002 domain names Watch Report] and 4 of the 5 USregistered trademarks [referred to in paragraphs 4.2.1 above]. February 19, 2002: TheComplaint exhibits an affidavit from Jennifer Brockmeyer relating to twoconversations with Mr. McShand on that date. Ms Brockmeyer is a project assistant with the Complainant'sattorneys [Jones Day Reavis & Pogue of Columbus, Ohio]. Her testimony is as follows: - Mr. McShand stated that his active website,<www.dellwww.com>, was used for diabetes education. - Mr. McShand stated, that although thedomain names were not for sale, the Complainant could make an offer and hewould discuss any such offer with his partners. - Mr. McShand said that if the Complainantpersisted with threats or legal action, he would post on his websites the factthat Dell Computer Corporation was trying to shut down a children's diabeteswebsite. - She was also present in a conversationon the same day between Mr. Dreitler [of the Jones Day Firm] and Mr.McShand when the latter stated that his intention was to make money from the 62sites complained of in the cease anddesist letter. - The Complaint also exhibits an affidavitfrom Mr. Dreitler, which refers to a follow-up conversation which he had laterthe same day with Mr. McShand. Histestimony is as follows: - Mr. McShand stated that he would nottransfer the 62 domain names in issue to the Complainant. - Mr. McShand said he was entitled to useDELL as his worldwide domain name. There was, therefore, no need for him to use a domain name incorporatingthe word diabetes. - When asked if he was putting so muchwork into the domain names with no expectation of making money, Mr. McShandreplied: "Of course I intendto use them to make money" Mr. McShand volunteeredthat he now had more than 80 DELL domain names. February 20, 2002: email toJones Day from Mr. McShand in response to the cease and desist letter of February 12. The salient points of that letter are: "Dell" is a genericword. It’s dictionary definition means"A small, secluded, wooded valley." - Many hundreds of companies are doingbusiness under names which include the word "dell". For example, dell purse book, dell crosswordpuzzles etc. - The Complainant has no entitlement toclaim exclusive ownership of the word "dell". - The Respondent is not in the business ofmanufacturing computers. - DELL is an acronym for "DiabetesEducation Long Life". - The Respondent's web pages are directedto US citizens suffering from or concerned with diabetes. As his audience expanded to other countries,he would register DELL with the TLD for each country. The domain names werenot for sale. The letter then reads inthe final paragraph: "If your client isinterested in my domains, he or his representatives should approach me in abetter way. I am always open tohelp." 5.1.4 The Respondent's <dellwww.com>website The front page of thiswebsite is exhibited to the Complaint. It is captioned: "Children withDiabetes Type I The Dell or woodedvalley is fragile like our children. Education is key for long life." The web page then givesa synopsis of Mr. McShand's story of his son's illness [see, paragraph 4.5.2above] under the caption. "Ian's Story" Then under another caption "Our DELLSites" the web page lists over60 of the DELL prefixed domain names in issue in the Complaint. 5.1.5 Of these, the only active domain name is<dell.www.com>. This, theComplaint says, should be compared to the Complainant's own <www.dell.com>website registered on November 22, 1988 [see, paragraph 4.3 above]. First, addition of the suffix www does not distinguish that domainname in issue from the Complainant's DELL trademark. Second, it is clearly intended to trap those wishing to visit theComplainant's website but who mistakenly type the www after DELL instead of before it. This is characterized as typo-piracy,the Complaint referring to the following decisions under the Policy. NIKE, Inc .v. Alex Nike, WIPO Case No. D2001-1115. In that case the domain name in issue was <wwwnike.com>. No response was filed. The Panel stated that it had: "… no hesitation inaccepting the Complainant's submission that the only distinctive element of theDomain Name is the very well known mark NIKE, the Complainant's trademark. The addition of the letters"www" as a prefix in the context of a domain name is whollynon-distinctive… . The Domain Name isundoubtedly confusingly similar to the trademark NIKE." World Wrestling Federation Entertainment Inc .v. Matthew Bessette, WIPO Case No. D2000-0256. The domain names in issue were <www.wwf.com> and <www.stonecold.com>. No Response was filed. Finding for the Complainant, the Panel stated: "Respondent'sDomain Names each differs from Complainant's domain names by a singlecharacter, a period between the common third level domain, "www", andthe second level domain name. The Panelagrees with the Complainant's assertion that Respondent is a "typo-pirate"who attempts to mislead Internet users who mistakenly omit the period between"www" and the second level domain name. Cybersquatters commonly register domain names such as the ones atissue, in order to take advantage of and profit from the unavoidable fact thattypographical errors occur." 5.1.6 Further, the Complainant states that noneof the domain names in issue relate, exfacie, to diabetes or education. The Complaint exhibits, for example, an available domain name which isappropriately descriptive of the Respondent's asserted aims, namely: <diabeteseducation.net>. Wherecircumstances such as this prevail, it is an indication of bad faith intent inregistering the confusingly similar trademark. Here, the Complaint cites: Virtual Works Inc .v. Volkswagen of American Inc., 57 USPQ 2d., 1547 (4th Cir. 2001).Thisis a decision of the US Court of Appeals for the Fourth Circuit. The domain name in issue was vw.net, which Volkswagen saidconstituted a bad faith intent to profit from the famous VW trademark. At the time Virtual Works Inc registered thedomain name in issue, available alternative domain names more closelydescribing its business were available, these included: <vwi.net>:<vwi.org>: ><irtualworks.net>: and <virtualworks.org>. The Appeal Court upheldthe District Court's decision granting summary judgment to Volkswagen, theCourt citing as an indicia of bad faith intent under the 1999Anticybersquattering Consumer Protection Act [ACPA] the availability of<vwi.net> and .org at the timeVirtual Worlds Inc registered <vw.net>. 5.1.7 February 21, 2002: following receipt of Mr. McShand's emaildated February 20, 2002 [paragraph 5.1.3 above], Mr. Dreitler replied byemail advising him that, although the Complainant had hoped to resolve thedispute informally, his cybersquatting activities would result in the matterbeing dealt with at "… a more formal forum". 5.1.8 February 21, 2002: later that day Mr. McShand replied by emailreiterating his position that the Complainant could not: "… claim exclusiveownership in the entire planet, all services and/or goods with the generic worddell." The Complaint statesthat, adopting Mr. McShand's theory, it would not be possible to obtainregistered trademarks in dictionary words such as "coke";"delta"; "sprite"; "ivory" etc. Enpassant, the Panel would observe that Mr. McShand did not in his emailof February 20, 2002 appear to deny the Complainant's rights in the DELLtrademark for computers and computer related goods and services but was sayingthat the Complainant could not assert rights in that trademark over othernon-computer related services, such as the Respondent's educative website fordiabetes sufferers and those involved with diabetes sufferers. That said, the Complainant points to the factthat the Policy does not require a Complainant to demonstrate exclusive rightsto a trademark for each and every good and service. 5.1.9 April 12, 2002: Mr. McShand implemented the threat made inhis conversation on February 19, 2002 with Ms Brockmeyer [see, paragraph 5.1.3above] that he would draw the dispute to the attention of computermagazines. There is exhibited to theComplaint an article entitled "Dispute over Dell Domains". April 18, 2002: theRespondent sent an email to the Complainant in, inter alia, the followingterms: "Your company DellComputer Corporation must stop harassing our business. Your actions are going to oblige us to takefurther actions. We will communicatethis issue to all news and editors around the globe." 5.1.10 Identicalor Confusingly Similar The Complainant's caseis that all the 83 domain names in issue are likely to be confused with theComplainant's family of DELL trademarks and domain names. All those domain names contain the DELLtrademark combined with generic terms or the name of a country where theComplainant carries on business under or by reference to the DELL name andmark. Of the 54 separate country names- only counting duplicates like <dellmex.com> and <dellmexico.com>once and not counting non-country specific domain names like <dellsouthamerica.com>- the Complainant carries on business or directly sells its products in 49 ofthose 54 countries. 5.1.11 As tothe Respondent's <dellwww.com> domain name, the Complainant's case isthat it is to all intents and purposes identical [see, paragraph 5.1.5 above]. 5.1.12 Insupport of its case that domain names comprising a trademark with a genericterm have been held to be confusingly similar with the Complainant's trademark,the Complainant refers to the following cases under the Policy. Brown & Bigelow Inc .v. Site Ads. Inc.NAF Case No. FA0011000096127, where the domain name in issue, <hoylecasino.com>, was found to be confusingly similar to the Complainant's HOYLE trademark. The Panel referring to The Body Shop International PLC .v. CPIC Net and Syed Hussain, WIPO Case No. D2000-1214 and Space Imaging, AF0298 cases [separately summarized below], the latter as authority for the proposition that a combination of the Complainant's mark with a generic term that has an obvious relationship to the Complainant's business gives rise to confusing similarity. The Body Shop International PLC .v. CPIC Net and Syed Hussain, WIPO Case No. D2000-1214, where the domain name in issue, <bodyshopdigital.com> was found to be confusingly similar to the Complainant's well-known THE BODY SHOP name and mark. 5.1.13 Insupport of its case that a domain name comprised of the Complainant's trademarkfollowed by country designations has been held to be confusingly similar, theComplainant refers to the following cases. America Online, Inc .v. Asia On-Line This Domain forSale, NAF Case No. FA0004000094636, where the domain namesin issue included <ao-laustralia.com>; <ao-lchina.com>;<ao-leurope.com>; <ao-lhonkong.com> etc were found to beconfusingly similar with the Complainant's well-known AOL name and trademark. Bloomberg L.P. .v. Sein M.D., NAF Case No. FA0101000096487, where the domain namesin issue, <bloombergchina.com> and <bloombergjapan.com> were heldto be confusingly similar with the Complaint's BLOOMBERG name and trademark,the Panel stating: "The mere additionof a geographic identifier does not render the distinctive trademark BLOOMBERGdiminished, nor does an addition of the words CHINA and JAPAN controvert theownership of trademark or service mark rights in the Complainant." 5.1.14 Rightsor Legitimate Interests The Complainant's caseis that it is inescapable from the evidence that the Respondent registered the83 DELL domain names in issue without any legitimate right or interest in respectof them. Specifically, there is noevidence of the Respondent's use, or demonstrable preparations to use 82 of the83 domain names in issue. As to theonly domain name in issue in use, namely <dellwww.com>, it purports to bea "strained acronym" for "Diabetes Education LongLife". There is no rationalconnection between the DELL trademark and a site devoted to diabeteseducation. This is the more so whenother domain names that contain the word "diabetes" are available forregistration [see, paragraph 5.1.6 above]. Further, neither Mr. McShand nor MTO C.A. are commonly known asDELL. Put shortly, the domain names inissue are not being used in connection with a bona fide offering of goods or services. They were registered by the Respondent long after DELL had becomea famous trademark of the Complainant and with full knowledge of theComplainant's superior and prior rights in the DELL trademark. 5.1.15 Registeredand Used in Bad Faith Here, the Complainantpoints, as evidence of bad faith, to transfer of 80 of the domain names fromMTO C.A. to the Respondent shortly after [April 18, 2002] first being contactedby the Complainant's attorneys [the ceaseand desist letter dated February 12, 2002] - see, paragraphs4.5.3 and 5.1.3 above respectively]. The Complainant asserts that Mr. McShand took this step to transfer thedomain names away from the United State to Venezuela being "… apparentlyinsecure in his stated beliefs that he had an absolute right to own the domains… ." 5.1.16 TheComplainant points as further evidence of bad faith to the April 2002 PressRelease by Mr. McShand [see, paragraph 5.1.9 above] in which he; - identifies himself as the owner of thedisputed domain names, making no mention of MTO C.A.; and - tried to muddy the Complainant's name inconnection with this dispute. 5.1.17 Asother bad faith evidence, the Complainant states that the address provided byMTO C.A. was incomplete and the telephone number provided in Wisconsin is not aworking telephone number, which it characterizes as "willful omissions …to keep from being located by legitimate trademark owners." 5.1.18 Finally,the Respondent's attempt to hide behind a worthy cause so as to be paid by theComplainant for the domain names in issue is nothing less than extortion, theRespondent clearly banking on the Complainant not wanting to risk adversepublicity. April 18, 2002: theRespondent sent an email to the Complainant in, inter alia, the followingterms: "Your company DellComputer Corporation must stop harassing our business. Your actions are goingto oblige us to take further actions. We will communicate this issue to all news and editors around theglobe." 5.2 TheRespondents Case 5.2.1 Identical or Confusingly Similar As foreshadowed in Mr.McShand's email dated February 20, 2002 [paragraph 5.1.3 above], the crux ofthe Respondents' case is as follows: - The word "Dell" is a genericword meaning "a small, secluded, wooded valley". As such it is available for any one to useprovided that such use does not conflict with prior use by a business for thesame goods and services. - There are many other registeredtrademarks in the United State and in other countries also for the word DELLand for marks including the word DELL which do not belong to the Complainant. - Because the Complainant and theRespondents are engaged in very different activities, use by the Respondents ofthe domain names in issue for its diabetes education project cannot give riseto any misrepresentation or confusion in relation to the Complainant's goods oractivities. 5.2.2 The Response then lists the following USand EC Community registered trademarks and trademark applications for DELL andfor marks in which DELL is a component, none of which belong to theComplainant. [Where the Class(es) andregistration dates are not shown in the table, it is because such informationis not provided in the Response.]
5.2.3 The Response also lists companies whichhave the name / mark DELL or include it as a component in their business names.
5.2.4 The Response lists domain names that useor incorporate the mark DELL.
5.2.5 The Response cites the following uses ofthe generic word "Dell": - Several companies in the United Kingdom. Various businesses andindividuals in addition to those listed in paragraphs 5.2.2 to 5.2.4 above,including: Dell Tech Laboratories Ltd: 5.2.6 The Response asserts that the aboveexamples comprise only a sample of the very many uses of the word DELL byindividuals, companies and organizations other than the Complainant. For example, - there are many more companies andindividuals using the word DELL as their trademark or service mark in othercountries; - in the United States alone there areover 100 attorneys with the surname DELL; - DEL [Spanish] and DELL [Italian] mean"from". So, in Italy thereare very many businesses whose names incorporate DELL. In Spanish, using the prefix DEL with a wordbeginning with the letter L will produce a phonetic "dell"; forexample Del Lago [from the lake]. 5.2.7 In the light of the forgoing, theRespondent's case is that the Complainant cannot assert its DELL trademarks -which are registered in relation to computer goods and services - to preventuse of the word / mark DELL in respect of quite disparate activities such asdiabetes education or diabetes supplies. It follows, the Respondent says, that the domain names in issue cannotbe confusingly similar to the Complainant's DELL trademark. 5.2.8 Rights or Legitimate Interests Here the Respondent'scase is as follows. First, before beingput on notice of this dispute [by the cease & desist letter dated February12, 2002 - see, paragraph 5.1.3 above] the Respondent had been using the DELLacronym for its diabetes education etc activities [i.e. February 1999 - see,paragraph 4.5.2 above]. This use was bona fide since it bore no relation tothe Complainant's use of the DELL mark for its wholly disparate business andbecause, as demonstrated in paragraphs 5.2.1 to 5.2.7 above, DELL is generallyused in business by very many other individuals and companies and DELL and/ormarks incorporating DELL are registered by proprietors other than theComplainants for different goods and services. 5.2.9 Even though the Respondent has noregistered trademark rights in DELL, it is known by the domain name<dell.www.com> [see, paragraphs5.1.3 and 5.1.4 above]. The Responsestates: "The Respondent'sBusiness Operations, Communications, Customer Support, Customer Services,Sales, Purchasing, Accounting etc are done mainly by use of the Internet. The Respondent's Business rely on theInternet. The Respondent created thebusiness with the purpose to run it exclusively from the Internet." 5.2.10 Registeredand Used in bad Faith The Respondent's case isas follows. The other domain names inissue, which are not as yet used, were registered so as to secure all thedomains needed for the Respondent's businessplan and strategies. The Respondentdescribes its strategy as being to build: "… several webpages and interconnect them with hyperlinks. Also to point all the remaining domain's URL to the main URL that is http://www.dellwww.com. By this way the search engines will directour customers to our main page or to any other direction decided by ourStrategy Department." The Respondent describesits Business Plan as being: "… to secure allcountries, cities and states or words needed for their global expansion." The Response explainsthat it is necessary to have the TLD .comfor each country, so that residents of each country can readily reach the mainwebsite. For example, a person inFrance searching for the Respondent website need only type DELLFRANCE and witha .com suffix the search engine willdirect that person to that main website. 5.2.11 This,the Response says, is precisely how the Complainant uses its domain names. For example, <dellcomputers.com>;<delldirect.com>; <dellbrowser.com>; <dellfactory.com>;<dellplus.com>; <dellwebpc.com>; <dell4me.com>;<dellexchange.com>; <dellpoweredge.com>; <dellprecision.com>;<delldimension.com> and <dellselectcare.com> [see, paragraph 4.3above] all resolve to the Complainant's main website at <dell.com>. 5.2.12 Further,the fact that prior to notice of this dispute [in February 2002] theRespondent's domain names in issue - other than <dellwww.com> - wereneither active nor linked to <dellwww.com> is not an indication of badfaith registration and use. TheComplainant too has domain names, for example <delllaptop.com>;<dellnews.com>; <dellhelp.com>; <delldvd.com>;<delltips.com>; <dellhostings.com>; <delltv.com>; <dellorders.com>;<dellfinance.com> ; and<dellparts.com> which are neither active nor linked to another of theComplainant's websites. 5.2.13 The Respondent did not register or acquire the domain names in issue primarily forthe purpose of selling them to the Complainant for consideration in excess ofits costs directly related to those domain names. Mr. McShand made it clear in his telephone conversations onFebruary 19, 2002 [see, paragraph 5.1.3 above] that the domain names were notfor sale. Mr. McShand goes on tosay in the Response that, in reply to questions from Ms Brockmeyer / Mr.Dreitler asking if he was willing to sell or accept an offer for those domains,he stated "If you want tomake us an offer, that is up to you. Ialready told you that our business has no intention of selling its trademarksor domains. Do whatever you wish. Any communication will be discussed by ourdirectors." 5.2.14 TheResponse concludes in the following terms: "The Respondentregistered the domains and is using them in the best faith, best values andbest belief. The Respondent's missionis not only to make a profit. TheRespondent's mission is to give the best service, the best product, and thebest education in diabetes. And as aconsequence of all this, there is a profit left. A profit that will be used to serve even better the Respondent'scustomers or anyone in the need." 5.3 Other cases under the Policy involving theComplainant's DELL trademark 5.3.1 These are not cited in the Complaint or the Response. In WIPO Case No. D2001-0285, Parmi Phull of Valencia, Spain had registered <dellonline.net> and <dellonline.org>. No Response was filed. From the Decision it seems clear that the Respondent had engaged in a pattern of conduct of registering domain names incorporating the famous trade marks of third parties. The Complaint was upheld [Decision dated April 11, 2001]. 5.3.2 In WIPO Case No. D2001-0361 Logo Excellence of Houston, Texas [the alter ego of Mr. Bryron Hoffmann] had registered 10 domain names incorporating the DELL mark. For example, <dellpower.com> and <dellconnect.com>. That Complaint was also upheld [Decision dated May 7, 2001]. 5.3.3 WIPO Case No. D2000-0659 involved 9 domain names incorporating the DELL mark registered by Got Domain Names for Sale. These included <dellpalm.com> , .net and .org; <dellwireless.net> etc. As in WIPO Case No. D2001-0285, the Respondent here had registered numerous other domain names incorporating the trademarks of various entities, such as CNN, Bell South, Alcatel etc. The Complaint was upheld [Decision dated August 15, 2000]. 5.3.4 The most notorious of these cases, WIPO Case No. D2000-1087 , was decided on November 17, 2000. It concerned 122 DELL domain names including <dellcomputersystem.com>; <dellinsurance.com>; <dell-mobile.com>; <dellservices.com> etc registered by Alex and Birgitta Ewaldsson of Sweden. No Response was filed. Again the Respondents were found to have registered numerous other domain names incorporating the trademarks of other parties, including the Swedish Company, TELIA and others including PHILIPS: SIEMENS: IKEA: BENTLEY and JAGUAR. The Complaint was upheld. 5.3.5 The Panel has cited these cases under thePolicy, since all of the domain names in issue in this administrative proceedingwere registered subsequent to the Decisions in those cases. The registration by AZTEC was onDecember 29, 2001, the registrations by MTO CA were variously made onDecember 3, 5, 6, 7, 12, 14, 16 and 31, 2001 and on February 20, 2002, and theregistrations by Diabetes Education Long Life - DELL - on April 20 andMay 1, 2002. It is to benoted that the Respondent's only active website <dellwww.com> wasregistered by MTO CA on December 14, 2001, the Respondent Diabetes EducationLong Life - DELL having been formed in February 1999.
6. Discussionand Findings 6.1 The Policy paragraph 4(a) provides thatthe Complainant must prove each of the following: (i) that the Respondent's domain name isidentical or confusingly similar to a trademark or service mark in which theComplainant has rights; and (ii) the Respondent has no rights or legitimateinterests in respect of the domain name; and (iii) the domain name has been registered and isbeing used in bad faith. 6.2 Paragraph 4(c) of the Policy identifiescircumstances which, in particular, but without limitation, if found by thePanel to be proved based on its evaluation of all the evidence presented, shalldemonstrate the Respondent's rights or legitimate interests for the purpose ofparagraph 4(a)(ii) of the Policy. 6.3 Paragraph 4(b) of the Policy sets outcircumstances which, if found by the Panel to be present, shall be evidence ofthe registration and use of a domain name in bad faith. 6.4 Identicalor Confusingly Similar 6.4.1 The Panel finds the domain name<dellwww.com> to all intents and purposes identical to the Complainant'sDELL trademark. 6.4.2 The remaining 82 domain names fall intotwo categories. The majority comprisesthe prefix DELL with the suffix being the name of a country (for example,<dellbrazil.com>), the name of a geographical area [for example,<dellcaribbean.com>] or the abbreviation of a country or geographicalarea [for example, <dellmex.com> and <dellcaribe.com>]. These total 74 domain names. To them should be added 2 further domainnames where the country abbreviation precedes the DELL mark, namely<usadell.com> and <usdell.com>. They are what will be termed DELL country / geographical domain names inissue and total 76 domain names in all. 6.4.3 There are then 6 domain names where theDELL mark is used with a generic wordor words. These are<dellaboutus.com>; <dellcontact.com>; <dellcustomer.com>;<delloffers.com>; <dellinvestors.com> and <bancondell.com> . Theywill be termed the DELL generic domain names. 6.4.4 As to the 76 DELL country / geographicaldomain names in issue, the Panel considers that the America Online, Inc .v. Asia On-Line This Domain for Sale, NAF Case No. FA0004000094636 andthe Bloomberg L.P. .v. Sein M.D., NAFCase No. FA0101000096487cases [see, paragraph 5.1.13 above] were correctlydecided. 6.4.5 As to the 6 DELL generic domain names inissue, the Panel also regards them as confusingly similar to the DELL trademarkand family of trademarks. The Panelrefers in this respect not only to the cases under the Policy cited by theComplainant [see, paragraph 5.1.12 above] but also to the Decisions under thePolicy involving the Complainant's DELL trademarks [see, paragraph 5.3 above]. 6.5 Rights or Legitimate Interests 6.5.1 The nub of the Respondent's case, boileddown to its essentials, is that the Complainant's DELL trademark and family oftrademarks are relevant only to itscomputer goods and services. It isabundantly clear that there are DELL registered trademarks for other goods andservices, that many individuals and companies do business under the DELL nameor a name incorporating DELL, so why in relation to a diabetes educationwebsite should the Respondent not be free to use the acronym DELL [DiabetesEducation Long Life] for its DELL country / geographic domain names? The rationale for registering those domainnames is explained in paragraph 5.2.10 above. 6.5.2. The Policy is, however, concerned withwhether on the facts of a particular dispute the Respondent can demonstrate rightsto or legitimate interests in the domain name in issue. In this case, the DELL trademark is wellknown internationally in the context of the Complainant and its products. Searches of national trademark databases,such as the TESS US Patent and Trademark Office database referred to in theResponse, will reveal the extent of the Complainant's registered rights in theDELL trademark and family of trademarks. In addition, cases decided under the Policy - such as the earlier DELLcases noted in paragraph 5.3 above - are readily accessible from the Center'swebsite and were so accessible in December 2001 when the earliest of the domainnames in issue were registered. Thereis, therefore, no question of the Respondent being taken by surprise in relation to the existence of the Complainantand its DELL trademarks and the way in which those trademarks have been used inearlier cases under the Policy. 6.5.3 The Respondent Diabetes Education LongLife - DELL was formed in February 1999 [see, paragraph 4.5.2 above]. Its business is "done mainly by use ofthe Internet" [see, paragraph 5..2.9 above]. The only active website is at <dellwww.com> [see, paragraph5.1.5 above] and that domain name was not registered until December 14, 2001[see, paragraph 5.3.5 above]. So theactual use made of that domain name in issue pre dates by less than 2 monthsthe Complainant's cease and desistletter of February 12, 2002 [see, paragraphs 5.1.2 and 5.1.3 above]. As to the Respondent's preparations to usethat domain name and the other 82 domain names in issue the Response is silent,except to explain its strategy to direct them to the main website at<dellwww.com> [see, paragraph 5.2.10 above]. 6.5.4 The question is whether such use orintended use can be said to be in connection with a bona fide offering of goods or services. In that connection, there is - as the Complaint says - norational connection between the DELL trademark and a site devoted to diabeteseducation. The natural domain name forsuch a site would be to include the word "diabetes", not a strainedacronym. The Panel is persuaded by theComplainant's case in this respect and by the Decision of the US Court ofAppeals for the Fourth Circuit under the ACPA [see, paragraph 5.1.6 above]. 6.5.5 Further, the Respondent's description ofits existing business and future business is not, in the Panel's view,convincing. The Response refers to theRespondent's "Business Operations, Communications, Customer Support, CustomerServices, Sales, Purchasing, Account etc" but no examples of any of theseactivities are given [see, paragraph 5.2.9 above]. If the Respondent is, as the Response claims, using the domainnames in issue "… in the bestfaith, best values and best belief" it is strange that noconcrete examples of such use are provided. 6.5.6 In short, the Panel concludes that - onthe evidence before it - the Respondent has not demonstrated circumstanceswithin paragraph 4(c)(i) of the Policy. As to paragraph 4(c)(ii), there is no evidence either that the Respondentbusiness has been commonly known by any of the domain names in issue. Of the 83 domain names, only one has beenused in relation to an active website and then only since mid December 2001 atthe earliest [see, paragraph 6.5.3 above]. 6.5.7 The Panel does not read the Response asadvancing a case under paragraph 4(c)(iii) of the Policy but, in any event, theevidence does not - in the Panel's view - support such a case. 6.5.8 As to the 6 DELL generic domain names[see, paragraph 6.4.3 above] none have, in the Panel's view, the remotestconnection with the stated aims of Mr. McShand, with the possibleexception of <dellabout.us>. Theothers are suited to a commercial enterprise - for example, <dellinvestors.com>- not a website dedicated to the education and help of diabetes sufferers andtheir carers. As to<dellaboutus.com>, in the context of the domain names as a whole and inthe light of the Respondent's strategy [see, paragraph 5.2 10 above] the Panelconcludes that the Respondent cannot demonstrate rights or legitimate interestsin that domain name or in the other 82 domain names in issue. The Complaint, therefore, succeeds insatisfying paragraph 4(a)(ii) of the Policy. 6.6 Registeredand Used in Bad Faith 6.6.1 Having been put on notice of theComplainant's rights [the cease and desist letter of February 12, 2002 -paragraph 5.1.3 above], the Respondent continued to register more DELL country/ geographical names subsequently. OnFebruary 20, 2002 some 13 such domain names [including, for example,<dellportugal.com> etc] were registered, followed by 2 in April 2002 and1 in May 2002 [see, paragraph 5.1.2 above]. 6.6.2 Did the Respondent register the domainnames in issue [between December 2001 and May 2002] primarily for the purposeof selling them to the Complainant for valuable consideration in excess of thecosts directly related to those names? The Respondent denies that he did and that the domain names are forsale. However, the Respondent isprepared to consider an offer from the Complainant to purchase those domainnames [see, paragraph 5.2.13], which is hardly consistent with thephilanthropic aims of the Respondent to educate and support diabetessufferers. Further, the Respondentcould not have been unaware of the Complainant and its well known DELLtrademark. Trademark searches wouldquickly have given the Respondent an idea of the extent of the Complainant'sDELL and DELL family trademark registrations. A WHOIS search would, similarly, have revealed the extent of theComplainant's DELL domain name registrations. Further, in the context of the Respondent's warranties andrepresentations in its Registration Agreements with the Registrar, it wouldhave been prudent to check the Center's website and that of the NationalArbitration Federation [NAF] for any existing cases under the Policy relatingto the Complainant's DELL trademark. Finally, there is the Respondent's conduct after being put on notice ofthe Complainant's case in February 2002 [see, paragraph 6.6.1 above]. 6.6.3 Although there is no evidence of anypattern of conduct by the Respondent of registering as domain names trademarksof either parties, in the Panel's view the weight of evidence points to conductfalling within paragraph 4(b)(i) of the Policy. But, even if that is incorrect, the Panel is not bound by thecircumstances set out in paragraph 4(b) of the Policy [see, paragraph 6.3above] and is entitled to look at all the circumstances presented in theComplaint and the Response. While theaims of Mr. McShand and his wife to assist diabetes sufferers and their carersare acknowledged, the acronym DELL is just too strained to be believable and itis just not credible that using the corporate and brand name of the world'slargest direct seller of computer systems is appropriate to bring suchsufferers to a diabetes help site. 6.6.4 In all the circumstances, the Panel findsthat the Complainant has made out its case under paragraph 4(a)(iii) of thePolicy.
7. Decision For all the foregoing reasons, thePanel decides that the 83 domain names in issue [listed in paragraph 2 above]are identical or confusingly similar to the Complainant's DELL trademark andfamily of trademarks, that the Respondent has no rights or legitimate interestsin respect of those domain names and that they have been registered and arebeing used by the Respondent in bad faith. Accordingly, the Panel directs that registration of the 83 domain namesin issue be transferred to the Complainant.
David Perkins Dated: July 5, 2002
Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0363.html
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