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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Inc. v. Radvar Computers LLC

Case No. D2007-1420

1. The Parties

The Complainant is Dell Inc. of Round Rock, Texas, United States of America, represented by Abu-Ghazaleh Legal Office in the Hashemite Kingdom of Jordan.

The Respondent is Radvar Computers LLC, of Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name is <iran-dell.com> (the “Domain Name”), registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2007 electronically and in hardcopy. On September 26, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On September 26, 2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center dated October 8, 2007 that the Complaint was administratively deficient in a number of respects, the Complainant filed an amendment to the Complaint on October 15, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2007.

3.3 The Center appointed Matthew S. Harris, Mohamed-Hassam Loutfi and Colin Yee Cheng Ong as panelists in this matter on December 12, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The language of the proceeding is English, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

4. Factual Background

4.1 The Complainant was founded in 1984 and is the world’s largest direct seller of computer systems. The Complainant began using the name DELL in 1987. Since then it has made extensive and prominent use of its DELL name in connection with a wide range of computer related goods and services, including offering its goods and services online through such websites as “www.dell.com”.

4.2 The Dell name has been registered by the Complainant as a trademark in various forms in various countries. The Complainant has annexed to its Complaint a long list of the trademarks, which include the following (all of which appear to be simple word marks):

Country

No.

Mark Text

Registration Date

Class

Iran

82003

DELL

25/12/1997

9, 16, 35, 42

Jordon

3982

DELL

19/02/1994

9

Jordon

80599

DELL

29/06/2005

2

Kuwait

38057

DELL

03/09/2001

9

Oman

16348

DELL

02/11/2002

9

Oman

36448

DELL

21/06/2006

2

Pakistan

133178

DELL

04/12/1995

9

Qatar

29158

DELL

09/10/2006

2

Qatar

29159

DELL

21/11/2006

9

Saudi Arabia

531/60

www.dell.com

01/07/2000

40

Saudi Arabia

531/61

www.dell.com

01/07/2000

9

UAE

24883

DELL

13/06/2000

9

Yemen

9077

DELL

15/11/1997

9

4.3 Interbrand and BusinessWeek Magazine had ranked the DELL brand as the 25th most valuable global brand in 2006.

4.4 The Respondent appears to be a Limited Liability Company based in Dubai, United Arab Emirates. The Respondent registered the Domain Name with the Registrar on May 16, 2007.

4.5 At some point after the date of registration and prior to the commencement of these proceedings, the Domain Name resolved to a page purportedly operated by “Iran Laptop”. The web page showed a picture of a lap top and there were links under the headings “Homepage”, “Note Books”, “Parts”, “Services” and “Contacts”. Further down the page under the heading “Hits of Season” was a reference to a “Dell Latitude D630 laptop computer”.

4.6 However, since a more recent date (and possibly only after the commencement of these proceedings) the Domain Name has resolved to a web page that bears all the tell tale signs of being a page generated by a “domain name parking service”. It contains various links with subjects as varied as “Persian Women”, “Dell D800” and “Computer Companies”. This domain name parking page continues to be displayed at the date of this decision.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:

(i) The dominant part of the Domain Name is the word “Dell”, which is identical to the “registered trademark DELL” which has been registered in numerous countries “all over the world”. The addition of the geographical term “Iran” as a prefix to the name Dell does not “have any impact on the overall impression of the dominant part of the name”. In this respect it relies upon the decision of C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc, WIPO Case No. D2004-0466.

(ii) As a result of the Complainant having spent “millions of dollars each year in advertising and promoting its trademarks, products, services and image”, it has “created substantial goodwill around the world” in the “DELL mark”.

(iii) There is an obvious association with the Complainant’s well-known trademark and with the “official domain of the Complainant in Iran”.

5.2 The Complainant contends that the Respondent has no legitimate rights and interests in the Domain Name for the following reasons:

(i) The Domain Name has been used to promote the same services offered by the trademark owner.

(ii) The Respondent has not been licensed nor authorized to use the DELL trademark.

(iii) The Respondent is using the Domain Name to promote the services of the “website owner”.

(iv) The website was created and is used by the Respondent for commercial purposes and is also misleading consumers and tarnishing the trademark at issue.

(v) The Respondent is not a distributor of the Complainant.

5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:

(i) Given the fame of the Complainant’s trademarks and business, the Respondent was aware of the existence of the “DELL” trademark when he registered the Domain Name.

(ii) This is further evidenced from the fact that he is selling DELL products through the Domain Name.

(iii) The content of the website at issue shows both the trademarks and the logos of the Complainant which by itself constitutes a case of infringement of IP rights. This makes it obvious that the Respondent was, and is, completely aware of the

existence of the Complainant’s rights.

(iv) The Respondent did not reply to a “cease and desist letter” that was sent to him. This failure to respond is said of itself to evidence bad faith and the Complainant relies in this respect upon the decision in America Online, Inc v. Viper, WIPO Case No. D2000-1198.

B. Respondent

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

6. Discussion and Findings

6.1 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response

6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

6.5 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

A. Identical or Confusingly Similar

6.6 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

6.7 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.8 The Complainant has appended to the Complaint a long list of trademarks. Many of the trademarks listed are irrelevant to this dispute as they do not incorporate the “Dell” name in any form. In addition, many of the marks would appear to have only “pending” status. It would have been helpful if the Complainant had been a little more discriminating in identifying those marks upon which it relies that are most relevant to this dispute.

6.9 Nevertheless, it is quite clear that the Complainant is the owner of a large number of trademarks in various jurisdictions that simply comprise the word “Dell”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the pre-fix “iran-” in the Domain Name does not, in this case, avoid a finding of confusing similarity. As the panel in C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466 stated: “The addition of a geographical suffice to a trademark […] is a common way of indicating the geographical area that goods are offered under a trademark”.

6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.11 At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the name of the Complainant with a view to attracting internet users to its website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the Domain Name.

6.12 There is a slight complication in this case in that it looks as if the Respondent may in part be using the Domain Name to sell genuine Dell products. The Complainant asserts that the Respondent is “not a distributor of” the Complainant, but exactly what is meant by that statement is not clear. The Complainant certainly does not go so far as to assert that the Dell product prima facie advertised on the Respondent’s website is not a genuine Dell product. In the absence of any further evidence or explanation from the Complainant in this respect, the Panel is prepared to assume in the Respondent’s favour that to some degree in the past it has dealt in one or a number of Dell products.

6.13 However, even if this assumption is correct, it does not assist the Respondent. As paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions makes clear, the question of whether a reseller can have a right or legitimate interest in a disputed domain name that incorporates the name of the products he sells has been the subject of much debate.

6.14 As the Overview records, a minority of panelists contend that a reseller does not have such an interest unless he has the express permission of the relevant rights holder. In this case the Complainant contends that the Respondent has never received any permission or license from the Complainant to use the DELL trademark. These statements are not disputed by the Respondent. Therefore, if the minority view is correct, the Respondent’s assumed activities in this case cannot provide a legitimate interest.

6.15 A majority of panelists contend that a reseller may have a legitimate interest but the reseller must satisfy a number of requirements first set out in the decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In the words of the Overview:

“These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”

6.16 Further, as the panel held in the recent case of Owens Corning v. NA, WIPO Case No. D2007-1143, if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).

6.17 In the case currently before the Panel, the Respondent has brought forward no argument or evidence to the effect that it has a legitimate interest in the Domain Name for these reasons. Further, the website page provided by the Complainant suggests that the Respondent could not do so even if it wanted to. The page suggests that if there were a genuine “Iran Laptop” business ever operated by the Respondent, it dealt in various computer related goods and services unrelated to the Complainant. Also there appears to be no attempt to disclose the exact nature of the relationship between Dell and the Respondent. Therefore, even if the majority view is correct, the Respondent still cannot claim a legitimate interest on that basis.

6.18 In addition, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services.

6.19. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

6.20 It is also worth commenting that it is hard to reconcile any contention on the part of the Respondent that it had a legitimate interest in the Domain Name with what appears to be the most recent use of the Domain Name; i.e. to gain revenue from parking the Domain Name with a domain name parking service. However, since the issue of this use was not raised by the Complainant in the Complaint, the Panel has not relied upon this use in coming to its conclusion on this aspect of the case.

C. Registered and Used in Bad Faith

6.21 The Panel accepts the Complainant’s contention that the Respondent registered the Domain Name in the knowledge of the Complainant’s business and its use of the “Dell” name. This is inherently probable given the undisputed fame of the Dell name worldwide. Further, it is difficult to interpret the Domain Name as anything other than as a reference to Dell’s business in Iran. Lastly, the Panel also accepts that it is also reasonable to infer such knowledge from the recent prima facie advertisement of Dell products on the Respondent’s website in circumstances where the Domain Name was only registered a few months ago.

6.22 Given this finding, the Panel also infers and accepts the Complainant’s undisputed contention that the Respondent registered the Domain Name with a view to diverting internet users with an interest in Dell products and services to its website for its own commercial gain.

6.23 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.24 Given that the Respondent has failed to show (for the reasons set out under the heading of legitimate interests above) that it was using the Domain Name exclusively to deal in genuine Dell products and has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant’s mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.25 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add two further points before drawing this decision to a close.

6.26 First, the recent use by the Respondent of the Domain Name in connection with a domain parking service appears to provide yet further evidence of bad faith use in this case (see for example the recent decisions of Carrefour v Iwana, WIPO Case No. D2007-1522, Charlotte Russe Holding Inc v WhoisID Theft Protection, WIPO Case No. D2007-0371, and Express Scripts, Inc. v. Windgather Investments Limited/Mr Cartwright, WIPO Case No. D2007-0267). However, since the issue of this use was not raised by the Complainant in the Complaint, the Panel has again not relied upon this use in coming to its conclusion on this aspect of the case.

6.27 Second, in coming to its decision the Panel has not given any weight to the Complainant’s contention that the failure on the part of the Respondent to respond to its “cease and desist letter” is also evidence of bad faith. The Panel accepts that the decision of the panel in America Online Inc. v. Viper, WIPO Case No. D2000-1198 suggests that this was one of a number of factors that was taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case.

6.28 Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to a “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. The Complainant has failed to do this in this case. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith without reliance on this material.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <iran-dell.com> be transferred to the Complainant.


Matthew S. Harris
Presiding Panelist


Mohamed-Hassam Loutfi
Panelist


Colin Yee Cheng Ong
Panelist

Dated: December 24, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1420.html

 

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