Dell Computer Corporation v. Diabetes Education Long Life-DELL (Trademark)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life

Case No. D2002-0363

1. The

Parties

The Complainant is Dell

Computer Corporation of One Dell Way, Round Rock, Texas 78682, United States of

America.

The Respondents are MTO

C.A. of Mariedy #2, P. Fijo, Falcon Estade Falcon, Venezuela and Diabetes

Education Long LifeÔ - DellÔ,

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. The

Domain Name and Registrar

The domain names at

issue are:

<bancondell.com>

<dellaboutus.com>

<dellafrica.com>

<dellamerica.com>

<dellamericas.com>

<dellargentina.com>

<dellaruba.com>

<dellaustralia.com>

<dellaustria.com>

<dellbahamas.com>

<dellbelgium.com>

<dellbelize.com>

<dellbermuda.com>

<dellbolivia.com>

<dellbrasil.com>

<dellbrazil.com>

<dellca.com>

<dellcaribbean.com>

<dellcaribe.com>

<dellcentralamerica.com>

<dellchile.com>

<dellcolombia.com>

<dellcontact.com>

<dellcostarica.com>

<dellcuba.com>

<dellcustomer.com>

<delldenmark.com>

<dellearth.com>

<dellecuador.com>

<dellelsalvador.com>

<dellengland.com>

<dellequator.com>

<delleuro.com>

<dellfinland.com>

<dellgermany.com>

<dellgreece.com>

<dellguatemala.com>

<dellhawaii.com>

<dellhongkong.com>

<dellindonesia.com>

<dellinvestors.com>

<dellisrael.com>

<dellitaly.com>

<delljapan.com>

<dellkuwait.com>

<dellmex.com>

<dellmexico.com>

<dellmiddleeast.com>

<dellna.com>

<dellnetherlands.com>

<dellnewzealand.com>

<dellnicaragua.com>

<dellnorthamerica.com>

<dellnorway.com>

<delloffers.com>

<dellpakistan.com>

<dellpanama.com>

<dellparaguay.com>

<dellperu.com>

<dellpoland.com>

<dellportugal.com>

<dellpuertorico.com>

<dellrussia.com>

<dellsa.com>

<dellscotland.com>

<dellsingapore.com>

<dellsouthafrica.com>

<dellsouthamerica.com>

<dellspain.com>

<dellsweden.com>

<dellswitzerland.com>

<delltaiwan.com>

<delluae.com>

<delluk.com>

<dellunitedkingdom.com>

<delluruguay.com>

<dellvenezuela.com>

<dellwww.com>

<usadell.com>

<usdell.com>

<dellchina.com>

<delleurope.com>

<dellfrance.com>

The Registrar is

Tucows.com, Inc., Toronto, Canada.

3. Procedural

History

The WIPO Arbitration and

Mediation 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 the

Complaint on April 23, 2002 [electronic version] and on April 26, 2002 [hard

copy]. The Center received Amendment

(2) to the Complaint on May 14, 2002 [electronic version] and on

May 16, 2002 [hard copy]. By

Amendment (2) to the Complaint the Complainant added three further domain

names, 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 the

Complaint and Amendment (2) to the Complaint are hereinafter collectively

referred to as "the Complaint".

The Center verified that

the Complaint satisfies the formal requirements of the ICANN 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]. The Complainant made the required payment to

the Center.

The formal date of the

commencement of this administrative proceeding is April 24, 2002.

On April 22, 2002 the

Center transmitted via email to Tucows.com, Inc. a request for registrar

verification in connection with the eighty domain names at issue in the

Complaint and on the same day Tucows.com, Inc. transmitted by email to the

Center Tucows' verification response confirming that the registrant is Diabetes

Education Long Life - Dell (trademark) and that the contact for administrative,

billing and technical purposes is Dell™ <diabetes@dellwww.com> all of the

same address at Estado Falcon, Venezuela.

On May 23, 2002 the

Center transmitted via email to Tucows.com, Inc a request for registrar

verification in connection with the additional three domain names at issue in

Amendment (2) to the Complaint and on the same day Tucows.com, Inc transmitted

by email to the Center Tucows' verification response confirming that the

registrant is Diabetes Education Long Life - DELL and that the contact for

administrative billing and technical purposes is DELL™

<diabetes@dellwww.com> all of the same address at Estado Falcon,

Venezuela.

Having verified that the

Complaint satisfied the formal requirements of the Policy and the Rules, the

Center transmitted by on April 24, 2002 to Respondent the Notification of Complaint

and Commencement of the Administrative Proceeding. The Center advised that the Response was due by May 14,

2002. On the same day the Center

transmitted by fax and by mail copies of the foregoing documents to Respondent

at the addresses provided by the Complaint and Tucows.com, Inc.

The Center received the

Respondent's Response on May 9, 2002 [electronic version] and on May 15, 2002

[hard copy]. On May 10, 2002 the Center

transmitted Acknowledgement of Receipt of Response to the Respondent and to the

Complainant.

Having received on May

15, 2002 Mr. David Perkins' Declaration

of Impartiality and Independence and his Statement of Acceptance, the Center

transmitted to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date, in which Mr. David Perkins was formally

appointed as the Sole Panelist. The

Projected Decision Date was June 11, 2002.

The Sole Panelist finds that the Administrative Panel was properly

constituted and appointed in accordance with the Rules and the Supplemental

Rules.

On May 23, 2002 the

Panel issued a Procedural Order admitting Amendment (2) to the Complaint and

providing the Respondent with an opportunity to submit a supplemental Response

by May 27, 2002, such Response to be limited to the issues raised in Amendment

(2) to the Complaint. On May 28, 2002

the Respondent duly filed a Supplemental Response.

Having verified the

communication records in the case file, the Administrative Panel finds that the

Center has discharged its responsibility under para. 2(a) of the Rules "to

employ reasonably available means calculated to achieve actual notice to

Respondents". Therefore, the

Administrative 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 Supplemental

Rules.

4. Factual

background

4.1 The

Complainant's Business

The Complainant was founded in 1984. It is the world's largest direct seller of

computer systems. In its fiscal year

[February 1, 2001 to January 31, 2002] it had revenues of approximately US$31.2

billion.

4.2 The

Complainant's DELL trademark

4.2.1 The Complainant began using the name and

mark DELL as a tradename, trademark and service mark in 1987. The Complainant is the proprietor of more

than 30 US trademark registrations and applications containing the mark

DELL. Copies of the following are annexed

to the Complaint:

Country

Registration No.

Mark

Class(es)

Application/

Registration Dates

USA

1,498,470

DELL

9

Filed:

December 9, 1987

Registered: August 2, 1986

USA

1,616,571

DELL

9

Filed:

January 19, 1990

Registered: October 9, 1990

USA

1,860,272

DELL

(Stylised)

9

Filed:

February 27, 1992

Registered: October 25, 1994

USA

2,236,785

DELL

40

Filed:

March 19, 1998

Registered: April

6, 1999

USA

2,390,851

WWW.DELL.COM*

9

Filed:

August 26, 1998

Registered: October 3, 2000

*The WWW.DELL.COM

mark 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:

Country

Registration No.

Mark

Class(es)

Application/

Registration Dates

USA

2,030,084

DELL

DIMENSION

9

Filed:

January 11, 1996

Registered: January 14, 1997

USA

2,284,782

DELL

PRECISION

9

Filed:

March 5, 1998

Registered October 12, 1999

USA

2,333,902

DELL

FINANCIAL SERVICES

42

Filed:

August 13, 1997

Registered: March 21, 2000

4.2.3 The DELL mark and variations of it are

also 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 for

DELL for use in relation to computer products and services. These include:

Registration Number Mark

P-208279 DELL

P-208280 DELL

P-208281 DELL

P-208284 DELL

P-175192 DELL (stylised)

P-217855 WWW.DELL.COM

S-13926 WWW.DELL.COM

N-41282 WWW.DELL.COM

4.2.5 The Complainant extensively advertises and

promotes its trademarks, products, services and image. During the 2001 fiscal year alone, the

Complainant spent over US$431 million in advertising and promotion. The Complainant states that as a result of

these activities and of its business, the DELL mark has become an asset of

incalculable value to the Corporation.

4.3 The Complainant's Internet Business

The Complainant conducts business

on the Internet through numerous DELL domain names. The earliest of these, <dell.com>, was registered on

November 22, 1988. By the end of the

fiscal year 2000 [February 1, 2000 to January 1, 2001] online internet sales by

the Complainant accounted for almost 50% of its revenue and averaged

US$40 million per day. The domain

names used by the Complainant include:

<dell.com>

<e-dell.com>

<dellcomputers.com>

<delldirect.com>

<dellnet.com>

<dellfoundation.org>

<dell rowser.com>

<dellfactory.com>

<dell webpc.com>

<dellhost.com>

<dell auction.com>

<dell auctions.com>

<dellplus.com>

<dell4me.com>

<dellexchange.com>

<dellpoweredge.com>

<dellprecision.com>

<dellattitude.com>

<delldimension.com>

<dellselectcare.com>

4.4 Complainant's Patronage of diabetes

The Complainant believes

that medical education about diseases, including diabetes, is an important and

worthy cause. The Complainant is a

supporter of the Juvenile Diabetes Research Foundation's annual walk to cure

diabetes. Over 1500 of the

Complainant's employees, including the corporation's founder [Michael Dell] and

its President [Kevin Rollins], participated in the 2001 Austin Walk for the

cure, 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 Master

Tec Corporation - also of Naples, Florida - which is described in the Response

as;

"… a very well known

engineering firm that serves the petroleum and mining industry worldwide."

Master Tec Occidente

C.A. [MTO C.A.] of Venezuela is described as a sister company of Master Tec

Corporation. The Response states:

"Master Tec

Corporation and Master Tec Occidente C.A. have hundreds of trademarks well

known by the Petroleum, Mining, Aerospace, Government, Health, Medical and

general industry"."

4.5.2 In February 1999 "DellÔ Diabetes Education Long LifeÔ" was founded as a Division of MTO C.A. The parties involved were America Tec

Corporation: Tec Corporation: Master Tec Corporation [all of the USA]; MTO C.A.

[of Venezuela] and Mr. McShand. The

Response explains that in August 1995 Mr. McShand's infant son, Ian (21 months

old), was diagnosed with Type I diabetes.

Mr. McShand and his wife started to help other families struck with

that disease through education, support and counselling. It appears that the concept behind the

Respondent organization is to provide assistance worldwide to diabetes suffers

and/or their families.

4.5.3 The original registrant of 79 of the 80

domain names in issue was MTO C.A. The

original registrant of the domain name in issue, BANCONDELL.COM, was AZTEC of

Naples, Florida. The Original Complaint

was filed on April 17, 2002. The next

day [April 18, 2002] all 80 domain names were transferred from MTO C.A. to

Diabetes Education Long Life - DELL (Trademark), which is now the effective

Respondent 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 The

Parties' Contentions

5.1 The Complainant's Case

5.1.1 The Complainant's case is that the domain names

in issue are identical or confusingly similar to its DELL and DELL family of

trademarks and service marks, that the Respondent has no rights or legitimate

interest in respect of those domain names, and that such domain names were

registered and are being used in bad faith.

5.1.2 The Complainant states that it first

became 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 the

second in March 2002 which identified the remaining 18 domain names. After filing the Original Complaint [on

April 8, 2002], the Complainant became aware of 3 additional

registrations, namely:

<dellfrance.com>;

and <dellchina.com> registered April 20, 2001 and

<delleurope.com>

registered May 1, 2002

and these were added in Amendment (2) to the Complaint.

5.1.3 The Complaint exhibits the following inter

partes correspondence with the Respondents:

February 12, 2002: The

Complainant's attorneys addressed a cease

and desist letter to Mr. McShand in relation to 62 domain names [identified

in their January 2002 domain names Watch Report] and 4 of the 5 US

registered trademarks [referred to in paragraphs 4.2.1 above].

February 19, 2002: The

Complaint exhibits an affidavit from Jennifer Brockmeyer relating to two

conversations with Mr. McShand on that date.

Ms Brockmeyer is a project assistant with the Complainant's

attorneys [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 the

domain names were not for sale, the Complainant could make an offer and he

would discuss any such offer with his partners.

- Mr. McShand said that if the Complainant

persisted with threats or legal action, he would post on his websites the fact

that Dell Computer Corporation was trying to shut down a children's diabetes

website.

- She was also present in a conversation

on 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 62

sites complained of in the cease and

desist letter.

- The Complaint also exhibits an affidavit

from Mr. Dreitler, which refers to a follow-up conversation which he had later

the same day with Mr. McShand. His

testimony is as follows:

- Mr. McShand stated that he would not

transfer the 62 domain names in issue to the Complainant.

- Mr. McShand said he was entitled to use

DELL as his worldwide domain name.

There was, therefore, no need for him to use a domain name incorporating

the word diabetes.

- When asked if he was putting so much

work into the domain names with no expectation of making money, Mr. McShand

replied:

"Of course I intend

to use them to make money"

Mr. McShand volunteered

that he now had more than 80 DELL domain names.

February 20, 2002: email to

Jones 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 generic

word. It’s dictionary definition means

"A small, secluded, wooded valley."

- Many hundreds of companies are doing

business under names which include the word "dell". For example, dell purse book, dell crossword

puzzles etc.

- The Complainant has no entitlement to

claim exclusive ownership of the word "dell".

- The Respondent is not in the business of

manufacturing computers.

- DELL is an acronym for "Diabetes

Education Long Life".

- The Respondent's web pages are directed

to 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 were

not for sale.

The letter then reads in

the final paragraph:

"If your client is

interested in my domains, he or his representatives should approach me in a

better way. I am always open to

help."

5.1.4 The Respondent's <dellwww.com>

website

The front page of this

website is exhibited to the Complaint.

It is captioned:

"Children with

Diabetes Type I

The Dell or wooded

valley is fragile like our children.

Education is key for long life."

The web page then gives

a synopsis of Mr. McShand's story of his son's illness [see, paragraph 4.5.2

above] under the caption.

"Ian's Story"

Then under another caption

"Our DELL

Sites"

the web page lists over

60 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, the

Complaint 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 domain

name in issue from the Complainant's DELL trademark. Second, it is clearly intended to trap those wishing to visit the

Complainant'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 in

accepting the Complainant's submission that the only distinctive element of the

Domain Name is the very well known mark NIKE, the Complainant's trade

mark. The addition of the letters

"www" as a prefix in the context of a domain name is wholly

non-distinctive… . The Domain Name is

undoubtedly 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's

Domain Names each differs from Complainant's domain names by a single

character, a period between the common third level domain, "www", and

the second level domain name. The Panel

agrees 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 at

issue, in order to take advantage of and profit from the unavoidable fact that

typographical errors occur."

5.1.6 Further, the Complainant states that none

of the domain names in issue relate, ex

facie, to diabetes or education.

The Complaint exhibits, for example, an available domain name which is

appropriately descriptive of the Respondent's asserted aims, namely:

<diabeteseducation.net>.

Where

circumstances such as this prevail, it is an indication of bad faith intent in

registering the confusingly similar trademark.

Here, the Complaint cites:

Virtual Works Inc .v. Volkswagen of American Inc., 57 USPQ 2d., 1547 (4th Cir. 2001).This

is a decision of the US Court of Appeals for the Fourth Circuit. The domain name in issue was vw.net, which Volkswagen said

constituted a bad faith intent to profit from the famous VW trademark. At the time Virtual Works Inc registered the

domain name in issue, available alternative domain names more closely

describing its business were available, these included:

<vwi.net>:

<vwi.org>: ><irtualworks.net>: and <virtualworks.org>.

The Appeal Court upheld

the District Court's decision granting summary judgment to Volkswagen, the

Court citing as an indicia of bad faith intent under the 1999

Anticybersquattering Consumer Protection Act [ACPA] the availability of

<vwi.net> and .org at the time

Virtual Worlds Inc registered <vw.net>.

5.1.7 February 21, 2002: following receipt of Mr. McShand's email

dated February 20, 2002 [paragraph 5.1.3 above], Mr. Dreitler replied by

email advising him that, although the Complainant had hoped to resolve the

dispute informally, his cybersquatting activities would result in the matter

being dealt with at "… a more formal forum".

5.1.8 February 21, 2002: later that day Mr. McShand replied by email

reiterating his position that the Complainant could not:

"… claim exclusive

ownership in the entire planet, all services and/or goods with the generic word

dell."

The Complaint states

that, adopting Mr. McShand's theory, it would not be possible to obtain

registered trademarks in dictionary words such as "coke";

"delta"; "sprite"; "ivory" etc. En

passant, the Panel would observe that Mr. McShand did not in his email

of February 20, 2002 appear to deny the Complainant's rights in the DELL

trademark for computers and computer related goods and services but was saying

that the Complainant could not assert rights in that trademark over other

non-computer related services, such as the Respondent's educative website for

diabetes sufferers and those involved with diabetes sufferers. That said, the Complainant points to the fact

that the Policy does not require a Complainant to demonstrate exclusive rights

to a trademark for each and every good and service.

5.1.9 April 12, 2002: Mr. McShand implemented the threat made in

his conversation on February 19, 2002 with Ms Brockmeyer [see, paragraph 5.1.3

above] that he would draw the dispute to the attention of computer

magazines. There is exhibited to the

Complaint an article entitled "Dispute over Dell Domains".

April 18, 2002: the

Respondent sent an email to the Complainant in, inter alia, the following

terms:

"Your company Dell

Computer Corporation must stop harassing our business. Your actions are going to oblige us to take

further actions. We will communicate

this issue to all news and editors around the globe."

5.1.10 Identical

or Confusingly Similar

The Complainant's case

is that all the 83 domain names in issue are likely to be confused with the

Complainant's family of DELL trademarks and domain names. All those domain names contain the DELL

trademark combined with generic terms or the name of a country where the

Complainant carries on business under or by reference to the DELL name and

mark. 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 of

those 54 countries.

5.1.11 As to

the Respondent's <dellwww.com> domain name, the Complainant's case is

that it is to all intents and purposes identical [see, paragraph 5.1.5 above].

5.1.12 In

support of its case that domain names comprising a trademark with a generic

term 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 In

support of its case that a domain name comprised of the Complainant's trademark

followed by country designations has been held to be confusingly similar, the

Complainant refers to the following cases.

America Online, Inc .v. Asia On-Line This Domain for

Sale, NAF Case No. FA0004000094636, where the domain names

in issue included <ao-laustralia.com>; <ao-lchina.com>;

<ao-leurope.com>; <ao-lhonkong.com> etc were found to be

confusingly 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 names

in issue, <bloombergchina.com> and <bloombergjapan.com> were held

to be confusingly similar with the Complaint's BLOOMBERG name and trademark,

the Panel stating:

"The mere addition

of a geographic identifier does not render the distinctive trademark BLOOMBERG

diminished, nor does an addition of the words CHINA and JAPAN controvert the

ownership of trademark or service mark rights in the Complainant."

5.1.14 Rights

or Legitimate Interests

The Complainant's case

is that it is inescapable from the evidence that the Respondent registered the

83 DELL domain names in issue without any legitimate right or interest in respect

of them. Specifically, there is no

evidence of the Respondent's use, or demonstrable preparations to use 82 of the

83 domain names in issue. As to the

only domain name in issue in use, namely <dellwww.com>, it purports to be

a "strained acronym" for "Diabetes Education Long

Life". There is no rational

connection between the DELL trademark and a site devoted to diabetes

education. This is the more so when

other domain names that contain the word "diabetes" are available for

registration [see, paragraph 5.1.6 above].

Further, neither Mr. McShand nor MTO C.A. are commonly known as

DELL. Put shortly, the domain names in

issue 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 become

a famous trademark of the Complainant and with full knowledge of the

Complainant's superior and prior rights in the DELL trademark.

5.1.15 Registered

and Used in Bad Faith

Here, the Complainant

points, as evidence of bad faith, to transfer of 80 of the domain names from

MTO C.A. to the Respondent shortly after [April 18, 2002] first being contacted

by the Complainant's attorneys [the cease

and desist letter dated February 12, 2002] - see, paragraphs

4.5.3 and 5.1.3 above respectively].

The Complainant asserts that Mr. McShand took this step to transfer the

domain names away from the United State to Venezuela being

"… apparently

insecure in his stated beliefs that he had an absolute right to own the domains

… ."

5.1.16 The

Complainant points as further evidence of bad faith to the April 2002 Press

Release by Mr. McShand [see, paragraph 5.1.9 above] in which he;

- identifies himself as the owner of the

disputed domain names, making no mention of MTO C.A.; and

- tried to muddy the Complainant's name in

connection with this dispute.

5.1.17 As

other bad faith evidence, the Complainant states that the address provided by

MTO C.A. was incomplete and the telephone number provided in Wisconsin is not a

working 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 the

Complainant for the domain names in issue is nothing less than extortion, the

Respondent clearly banking on the Complainant not wanting to risk adverse

publicity.

April 18, 2002: the

Respondent sent an email to the Complainant in, inter alia, the following

terms:

"Your company Dell

Computer Corporation must stop harassing our business. Your actions are going

to oblige us to take further actions.

We will communicate this issue to all news and editors around the

globe."

5.2 The

Respondents 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 of

the Respondents' case is as follows:

- The word "Dell" is a generic

word meaning "a small, secluded, wooded valley". As such it is available for any one to use

provided that such use does not conflict with prior use by a business for the

same goods and services.

- There are many other registered

trademarks in the United State and in other countries also for the word DELL

and for marks including the word DELL which do not belong to the Complainant.

- Because the Complainant and the

Respondents are engaged in very different activities, use by the Respondents of

the domain names in issue for its diabetes education project cannot give rise

to any misrepresentation or confusion in relation to the Complainant's goods or

activities.

5.2.2 The Response then lists the following US

and EC Community registered trademarks and trademark applications for DELL and

for marks in which DELL is a component, none of which belong to the

Complainant. [Where the Class(es) and

registration dates are not shown in the table, it is because such information

is not provided in the Response.]

Country

Registration

No.

Mark and Class(es)

Proprietor

Registration

Date

United States

681,510

DELL

…

Random

House Inc

July

7, 1959

United States

532.275

DELL

CROSSWORD PUZZLES 16

Dell

Publishing Company Inc

October

24, 1947

United States

676,728

DELL

CROSSWORD ANNUAL 31

Dell

Publishing Company Inc

April

7, 1959

United States

779,077

DELL

PURSE BOOK …

Dell

Publishing Company Inc

October

27, 1964

United States

792,637

THE

FARMER IN THE DELL …

Farmer

in the Dell [of Neenah, Wisconsin]

July

13, 1965

United States

App.

No. 76376273

FARM

IN THE DELL 43

Farm

in the Dell International Inc [of Mountain]

…

United States

1,111,026

Mr

DELL 29

Mr

Dell Foods Inc

January

9, 19??

United States

1,224,455

SUNNY

DELL 32

Southland

Corporation

January

18, 1982

United States

2,357,754

DELL

LAND …

Jacob

Joseph Dell

…

United States

App.

No. 78107555

DELL

LAND 41

Jacob

Joseph Dell [of Seguin Texas]

…

United States

App.No.

76283960

SUSAN

DELL 25

Susan

Dell Inc [of Austin, Texas]

…

United States

App.

No. 76284277

SUSAN

DELL 25

Susan

Dell Inc

…

United States

1,762,728

VAN

DELL 14

Park

Lane Associates Inc

April

6, 1993

United States

1,818,586

ALP

AND DELL 42

Roth

Kase USA Ltd

January

25, 1994

United States

1,773,774

ALP

and DELL 29

Roth

Kase USA Ltd

May

25, 1993

United States

1,827,104

DELL's

SECRET GARDEN 1

Dell's

Secret Garden Inc [of Albany, Georgia]

March

23, 1994

United States

1,862,895

DELL

RHEA's CHICKEN BASKET 42

Dellco

Inc [of Illinois]

November

15, 1994

United States

2,482,604

DELL-COMM

9

Dell-Comm

Inc [of Minnesota]

August

28, 2001

United States

App.

No. 75186301

DELL

COMM 37 & 42

Dell-Comm

Inc

…

United States

2,089,203

BLUE

DELL 29

Northwest

Packing Co [of Vancouver]

August

19, 1997

United States

2,288,289

ROCCA

DELL'ULIVETO …

…

…

United States

2,158,291

SIGILLO

DELL'ARTE …

…

…

United States

2,206,921

MOUNTAIN

DELL …

Mountain

Craft Inc

…

United States

2,457,353

THE

DELL …

Dell

Enterprises Inc [of Nebraska]

…

United States

2,461,824

DUNDEE

DELL …

Dell

Enterprises Inc

…

United States

App.

No. 76234415

FARMER

IN THE DELL 28

Hasbro

Inc

…

United States

App.

No. 76240735

THE

DELL GROUP 35

The

Skill Bureau Inc [of Boston]

…

United States

1,932,995

GUERNSEY

DELL 11

Guernsey

Dell Inc [of Chicago]

November

7, 1995

United States

2,017,988

DELLWOOD

…

Dellwood

Financial Services Company [of Minneapolis]

November

19, 1996

United States

2,079,798

THE

O'DELL GROUP …

O'Dell

July

15, 1997

United States

App.No.

76374207

DELL'ARTE

CHOCOLATE CAFÉ …

Arthur

Newman

…

United States

2,474,604

DELLS

RIVER DISTRICT …

City

of Wisconsin Dells

…

United States

2,503,474

DELLS

RIVER DISTRICT …

City

of Wisconsin Dells

…

United States

1,929,736

DELLS

BOAT TRIP …

Dels

Boat Co Inc

…

EC Community

166,058

DELL

16

Random

House Inc

April

1, 1996

EC Community

1,411,801

DELL

16

Random

House Inc

September

19, 1997

EC Community

1,475,929

DELL

d. 30

Kerry

Group plc

…

EC Community

1,390,157

DELL'OLMO

24

Ratti

S.p.A.

…

EC Community

1,552,477

'DELLS

29

Largo

Food Exports Ltd

August

4, 1995

EC Community

2,045,500

DELL

UGO 29 & 30

Dellugo

Ltd

September

20, 1994

EC Community

1,163,781

DELLORTO

12

Dell'Orto

S.p.A.

…

EC Community

1,163,780

DELLORTO

7

Dell'Orto

S.p.A

…

5.2.3 The Response also lists companies which

have the name / mark DELL or include it as a component in their business names.

Corporation

/ Business

Activities

Date of First

Use

Dell Corporation

[of Rockville, MD]

Speciality

contracting firm

1972

O'Dell Engineering

Inc [of Modesto, CA]

Land

Development Projects

1983

Dell Services Inc

[of Michigan]

Service

Centre for home electronics and computers

pre

1977

Dell Quay Sailing

Club

Sailing

Club

…

5.2.4 The Response lists domain names that use

or incorporate the mark DELL.

Domain Name

Registrant

Business [where

stated]

<dellcorp.com>

Dell

Corporation [of Rockville, MD]

Speciality

Contracting firm

<dellspace.com>

Rackspace

Ltd [of San Antonio, Texas]

<delltech.com>

Dell

Tech Laboratories Ltd [of Ontario, Canada]

<delllab.com>

Michael

Richardson [of Chesapeake, VA]

<dellsex.com>

Unused

Domain [of New Orleans]

<dellfamilty.com>

Nick

Dell [of Los Angeles]

<mzdells.com>

Mr.

Dell Foods Inc

Processed

potatoes

<dellpharmacy.com>

Dell

Pharmacy [of Ontario, Canada]

<odellengineering.com>

O'Dell

Engineering Inc

Land

development projects

<highlanddell.com>

Dell

Schaefer P.A. [of Hollywood, FL]

Attorneys

<dellscentral.com>

Wisconsin

Dells Central

<dellman.com>

Larry

Mile [of Wisconsin]

<dellservice.com>

Dell

Service Inc

Service

center for home electronics and computers

<dellsbank.com>

Bank

of Wisconsin Dells

<dellstar.com>

Dell

Star Technologies Inc [of Tulsa]

Video

and surveillance systems

<wisconsindells.com>

Family

Fun in the Wisconsin Dells

<dellboy.com>

Jason

Conway [of Middlesex, United Kingdom]

<dellsleatherworks.com>

Dells

Leather Works

<dellink.com>

Mun

Young Gu [of Seoul, Korea]

<riodell.com>

City

of Rio Dell, California

<thendell.com>

Dells

on Anderson Island Vacation Rental

<seversondells.org>

Severson

Dells

Non

profit Nature Reserve & Environmental Education & Research Facility

<dellscoupons.com>

Wisconsin

Dells

<dellalpe.com>

Dell

Alpe

Italian

Foods

<dellschamber.com>

Wisconsin

Dells Chamber of Commerce

<jeuniferodell.org>

Jennifer

O'Dell

Actress

<design-dell.com>

Dell

Point Technologies Inc

Manufacturers

of gas and fire wood pellet stoves

<delliran.com>

Delliran

Company [of Tehran]

<dellmedia.com>

DigitaLive.com

[of Los Angeles]

<dellonline.com>

Andrew

Dell [of Westminster, CA]

<wisdells.com>

Wisconsin

Dell Visitors & Convention Bureau

<dellarteoperaensemble.org>

Dell'Arte

Opera Ensemble

<wdell.com>

Walton

Dell's Website

<dellbrothers.com>

Dell

Brothers

Formal

Clothing

<westfallodell.com>

Westfall

O'Dell Motors

<dellgames.com>

Talkshop

Ltd [of Dublin, Ireland]

<delldigital.com>

Superfly

Inc [of Stockton, CA]

<dellphoto.com>

Dell

Photography Incorporation [of Atlanta, GA]

<dellsonline.com>

Wisconsin

Dells Hotel

<delltrack.com>

Eric

Simpson [of Walnut Creek, CA]

<dells-inn.com>

Rodeway

Inn

<dellus.com>

Laurent

Dellus [of Illinois]

<dellme.com>

Mercabe

Continental SA de CV [of Monterrey, Mexico]

<dellcustomerservice.com>

Interwise

Inc, doing business as Itsyourdomain.com

<dellbank.com>

DigitaLive.com

[of Los Angeles]

<dellengineering.com>

Dell

Engineering P.A. [of Bayville, NJ]

<dellglonbal.com>

S

Hadi [of Los Angeles]

<dellhome.com>

Internet

Hosting [of Montreal, Canada]

<dellbusiness.com>

Internet

Hosting [of Montreal, Canada]

<dellenglish.com>

Dell

International English [of Beijing, PRC]

International

Information Technology

<dellnetwork.com>

Jong-Hyun

Lee [of Korea]

<dellwireless.com>

Centrade

Corp

<dellcom.com>

Shin-Webxist

Hyun [of Korea]

<dellcompany.com>

Boukhaili

Hamdaoui [of Paris, France]

<delldisk.com>

Kyu

Lee

<doctordell.com>

BulkRegister.com

<dell1.com>

Raphael

Afilalo [of St. Laurent, Canada]

<eurodell.com>

Meta

Domains.com [of Birmingham, AL]

5.2.5 The Response cites the following uses of

the generic word "Dell":

- Several companies in the United Kingdom.

- Several companies in Switzerland.

- 12 registered trademarks in Austria.

WIPO's Madrid Express

database contains "30 records with the generic word DELL".

Various businesses and

individuals in addition to those listed in paragraphs 5.2.2 to 5.2.4 above,

including:

Dell Tech Laboratories Ltd:

Dell Road Gospel Church:

Dell'Osso Farms:

Various departments of Rio Dell City:

Law Office of Susan Dell:

Casa Dell Angolo:

<Salon dell area.com>;

<widells.com>;

<dellarte.com>;

<dellwilliams.com>;

>olivedellranch.com>:

Bruce Dell Law Firm:

Compagnia Dell Olio, United States of America:

Dell & Schaefer [Attorneys];

<dellhouse.co.uk>:

John Odell Emergency Operation Centers; and

Judith Chaffee's Commedia Page [<commedia-dell-arte.com>]

5.2.6 The Response asserts that the above

examples comprise only a sample of the very many uses of the word DELL by

individuals, companies and organizations other than the Complainant. For example,

- there are many more companies and

individuals using the word DELL as their trademark or service mark in other

countries;

- in the United States alone there are

over 100 attorneys with the surname DELL;

- DEL [Spanish] and DELL [Italian] mean

"from". So, in Italy there

are very many businesses whose names incorporate DELL. In Spanish, using the prefix DEL with a word

beginning with the letter L will produce a phonetic "dell"; for

example Del Lago [from the lake].

5.2.7 In the light of the forgoing, the

Respondent's case is that the Complainant cannot assert its DELL trademarks -

which are registered in relation to computer goods and services - to prevent

use of the word / mark DELL in respect of quite disparate activities such as

diabetes education or diabetes supplies.

It follows, the Respondent says, that the domain names in issue cannot

be confusingly similar to the Complainant's DELL trademark.

5.2.8 Rights or Legitimate Interests

Here the Respondent's

case is as follows. First, before being

put on notice of this dispute [by the cease & desist letter dated February

12, 2002 - see, paragraph 5.1.3 above] the Respondent had been using the DELL

acronym 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 to

the Complainant's use of the DELL mark for its wholly disparate business and

because, as demonstrated in paragraphs 5.2.1 to 5.2.7 above, DELL is generally

used in business by very many other individuals and companies and DELL and/or

marks incorporating DELL are registered by proprietors other than the

Complainants for different goods and services.

5.2.9 Even though the Respondent has no

registered trademark rights in DELL, it is known by the domain name

<dell.www.com> [see, paragraphs

5.1.3 and 5.1.4 above]. The Response

states:

"The Respondent's

Business Operations, Communications, Customer Support, Customer Services,

Sales, Purchasing, Accounting etc are done mainly by use of the Internet. The Respondent's Business rely on the

Internet. The Respondent created the

business with the purpose to run it exclusively from the Internet."

5.2.10 Registered

and Used in bad Faith

The Respondent's case is

as follows. The other domain names in

issue, which are not as yet used, were registered so as to secure all the

domains needed for the Respondent's business

plan and strategies. The Respondent

describes its strategy as being to build:

"… several web

pages 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 direct

our customers to our main page or to any other direction decided by our

Strategy Department."

The Respondent describes

its Business Plan as being:

"… to secure all

countries, cities and states or words needed for their global expansion."

The Response explains

that it is necessary to have the TLD .com

for each country, so that residents of each country can readily reach the main

website. For example, a person in

France searching for the Respondent website need only type DELLFRANCE and with

a .com suffix the search engine will

direct 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 4.3

above] 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] the

Respondent's domain names in issue - other than <dellwww.com> - were

neither active nor linked to <dellwww.com> is not an indication of bad

faith registration and use. The

Complainant 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 the

Complainant's websites.

5.2.13 The Respondent did not register or acquire the domain names in issue primarily for

the purpose of selling them to the Complainant for consideration in excess of

its costs directly related to those domain names. Mr. McShand made it clear in his telephone conversations on

February 19, 2002 [see, paragraph 5.1.3 above] that the domain names were not

for sale. Mr. McShand goes on to

say 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 to

make us an offer, that is up to you. I

already told you that our business has no intention of selling its trademarks

or domains. Do whatever you wish. Any communication will be discussed by our

directors."

5.2.14 The

Response concludes in the following terms:

"The Respondent

registered the domains and is using them in the best faith, best values and

best belief. The Respondent's mission

is not only to make a profit. The

Respondent's mission is to give the best service, the best product, and the

best education in diabetes. And as a

consequence of all this, there is a profit left. A profit that will be used to serve even better the Respondent's

customers or anyone in the need."

5.3 Other cases under the Policy involving the

Complainant'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 the

Policy, since all of the domain names in issue in this administrative proceeding

were registered subsequent to the Decisions in those cases. The registration by AZTEC was on

December 29, 2001, the registrations by MTO CA were variously made on

December 3, 5, 6, 7, 12, 14, 16 and 31, 2001 and on February 20, 2002, and the

registrations by Diabetes Education Long Life - DELL - on April 20 and

May 1, 2002. It is to be

noted that the Respondent's only active website <dellwww.com> was

registered by MTO CA on December 14, 2001, the Respondent Diabetes Education

Long Life - DELL having been formed in February 1999.

6. Discussion

and Findings

6.1 The Policy paragraph 4(a) provides that

the Complainant must prove each of the following:

(i) that the Respondent's 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.

6.2 Paragraph 4(c) of the Policy identifies

circumstances which, in particular, but without limitation, if found by the

Panel to be proved based on its evaluation of all the evidence presented, shall

demonstrate the Respondent's rights or legitimate interests for the purpose of

paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out

circumstances which, if found by the Panel to be present, shall be evidence of

the registration and use of a domain name in bad faith.

6.4 Identical

or Confusingly Similar

6.4.1 The Panel finds the domain name

<dellwww.com> to all intents and purposes identical to the Complainant's

DELL trademark.

6.4.2 The remaining 82 domain names fall into

two categories. The majority comprises

the 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 geographical

area [for example, <dellmex.com> and <dellcaribe.com>]. These total 74 domain names. To them should be added 2 further domain

names 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 in

issue and total 76 domain names in all.

6.4.3 There are then 6 domain names where the

DELL mark is used with a generic word

or words. These are

<dellaboutus.com>; <dellcontact.com>; <dellcustomer.com>;

<delloffers.com>; <dellinvestors.com> and <bancondell.com> . They

will be termed the DELL generic domain names.

6.4.4 As to the 76 DELL country / geographical

domain names in issue, the Panel considers that the America Online, Inc .v. Asia On-Line This Domain for Sale, NAF Case No. FA0004000094636 and

the Bloomberg L.P. .v. Sein M.D., NAF

Case No. FA0101000096487cases [see, paragraph 5.1.13 above] were correctly

decided.

6.4.5 As to the 6 DELL generic domain names in

issue, the Panel also regards them as confusingly similar to the DELL trademark

and family of trademarks. The Panel

refers in this respect not only to the cases under the Policy cited by the

Complainant [see, paragraph 5.1.12 above] but also to the Decisions under the

Policy 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, boiled

down to its essentials, is that the Complainant's DELL trademark and family of

trademarks are relevant only to its

computer goods and services. It is

abundantly clear that there are DELL registered trademarks for other goods and

services, that many individuals and companies do business under the DELL name

or a name incorporating DELL, so why in relation to a diabetes education

website should the Respondent not be free to use the acronym DELL [Diabetes

Education Long Life] for its DELL country / geographic domain names? The rationale for registering those domain

names is explained in paragraph 5.2.10 above.

6.5.2. The Policy is, however, concerned with

whether on the facts of a particular dispute the Respondent can demonstrate rights

to or legitimate interests in the domain name in issue. In this case, the DELL trademark is well

known 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 the

Response, will reveal the extent of the Complainant's registered rights in the

DELL trademark and family of trademarks.

In addition, cases decided under the Policy - such as the earlier DELL

cases noted in paragraph 5.3 above - are readily accessible from the Center's

website and were so accessible in December 2001 when the earliest of the domain

names in issue were registered. There

is, therefore, no question of the Respondent being taken by surprise in relation to the existence of the Complainant

and its DELL trademarks and the way in which those trademarks have been used in

earlier cases under the Policy.

6.5.3 The Respondent Diabetes Education Long

Life - DELL was formed in February 1999 [see, paragraph 4.5.2 above]. Its business is "done mainly by use of

the Internet" [see, paragraph 5..2.9 above]. The only active website is at <dellwww.com> [see, paragraph

5.1.5 above] and that domain name was not registered until December 14, 2001

[see, paragraph 5.3.5 above]. So the

actual use made of that domain name in issue pre dates by less than 2 months

the Complainant's cease and desist

letter of February 12, 2002 [see, paragraphs 5.1.2 and 5.1.3 above]. As to the Respondent's preparations to use

that 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 or

intended 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 - no

rational connection between the DELL trademark and a site devoted to diabetes

education. The natural domain name for

such a site would be to include the word "diabetes", not a strained

acronym. The Panel is persuaded by the

Complainant's case in this respect and by the Decision of the US Court of

Appeals for the Fourth Circuit under the ACPA [see, paragraph 5.1.6 above].

6.5.5 Further, the Respondent's description of

its existing business and future business is not, in the Panel's view,

convincing. The Response refers to the

Respondent's "Business Operations, Communications, Customer Support, Customer

Services, Sales, Purchasing, Account etc" but no examples of any of these

activities are given [see, paragraph 5.2.9 above]. If the Respondent is, as the Response claims, using the domain

names in issue

"… in the best

faith, best values and best belief"

it is strange that no

concrete examples of such use are provided.

6.5.6 In short, the Panel concludes that - on

the evidence before it - the Respondent has not demonstrated circumstances

within paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii), there is no evidence either that the Respondent

business has been commonly known by any of the domain names in issue. Of the 83 domain names, only one has been

used in relation to an active website and then only since mid December 2001 at

the earliest [see, paragraph 6.5.3 above].

6.5.7 The Panel does not read the Response as

advancing a case under paragraph 4(c)(iii) of the Policy but, in any event, the

evidence 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 remotest

connection with the stated aims of Mr. McShand, with the possible

exception of <dellabout.us>. The

others are suited to a commercial enterprise - for example, <dellinvestors.com>

- not a website dedicated to the education and help of diabetes sufferers and

their carers. As to

<dellaboutus.com>, in the context of the domain names as a whole and in

the light of the Respondent's strategy [see, paragraph 5.2 10 above] the Panel

concludes that the Respondent cannot demonstrate rights or legitimate interests

in that domain name or in the other 82 domain names in issue. The Complaint, therefore, succeeds in

satisfying paragraph 4(a)(ii) of the Policy.

6.6 Registered

and Used in Bad Faith

6.6.1 Having been put on notice of the

Complainant'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. On

February 20, 2002 some 13 such domain names [including, for example,

<dellportugal.com> etc] were registered, followed by 2 in April 2002 and

1 in May 2002 [see, paragraph 5.1.2 above].

6.6.2 Did the Respondent register the domain

names in issue [between December 2001 and May 2002] primarily for the purpose

of selling them to the Complainant for valuable consideration in excess of the

costs directly related to those names?

The Respondent denies that he did and that the domain names are for

sale. However, the Respondent is

prepared to consider an offer from the Complainant to purchase those domain

names [see, paragraph 5.2.13], which is hardly consistent with the

philanthropic aims of the Respondent to educate and support diabetes

sufferers. Further, the Respondent

could not have been unaware of the Complainant and its well known DELL

trademark. Trademark searches would

quickly have given the Respondent an idea of the extent of the Complainant's

DELL and DELL family trademark registrations.

A WHOIS search would, similarly, have revealed the extent of the

Complainant's DELL domain name registrations.

Further, in the context of the Respondent's warranties and

representations in its Registration Agreements with the Registrar, it would

have been prudent to check the Center's website and that of the National

Arbitration Federation [NAF] for any existing cases under the Policy relating

to the Complainant's DELL trademark.

Finally, there is the Respondent's conduct after being put on notice of

the Complainant's case in February 2002 [see, paragraph 6.6.1 above].

6.6.3 Although there is no evidence of any

pattern of conduct by the Respondent of registering as domain names trademarks

of either parties, in the Panel's view the weight of evidence points to conduct

falling within paragraph 4(b)(i) of the Policy. But, even if that is incorrect, the Panel is not bound by the

circumstances set out in paragraph 4(b) of the Policy [see, paragraph 6.3

above] and is entitled to look at all the circumstances presented in the

Complaint and the Response. While the

aims of Mr. McShand and his wife to assist diabetes sufferers and their carers

are acknowledged, the acronym DELL is just too strained to be believable and it

is just not credible that using the corporate and brand name of the world's

largest direct seller of computer systems is appropriate to bring such

sufferers to a diabetes help site.

6.6.4 In all the circumstances, the Panel finds

that the Complainant has made out its case under paragraph 4(a)(iii) of the

Policy.

7. Decision

For all the foregoing reasons, the

Panel decides that the 83 domain names in issue [listed in paragraph 2 above]

are identical or confusingly similar to the Complainant's DELL trademark and

family of trademarks, that the Respondent has no rights or legitimate interests

in respect of those domain names and that they have been registered and are

being used by the Respondent in bad faith.

Accordingly, the Panel directs that registration of the 83 domain names

in issue be transferred to the Complainant.

David Perkins

Sole Panelist

Dated: July 5, 2002

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