Dell Inc. v. Intercardnetwork/Jairo Jonathan Huertas Aguirre

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Dell Inc. v. Intercardnetwork/Jonathan Jairo Aguirre Huertas

Case No. D2004-0788

1. The Parties

The Complainant is Dell Inc., Round Rock, Texas, United States of America, represented by Jones Day, United States of America.

The Respondents are Intercardnetwork/ Jonathan Jairo Aguirre Huertas, Sanford,

Florida, United States of America; Oxon Hill, Maryland, United States of America.

2. The Domain Names and Registrar

The disputed domain names <dellinspironrepair.com> and <dellspecialist.com>

(the “Domain Names”) are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2004. On October 1, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Names. On October 1 and 8, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on October 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 4, 2004.

The Center appointed Harrie R. Samaras as the sole

panelist in this matter on November 22, 2004. The Panel finds that it was properly

constituted. 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.

4. Factual Background

Complainant was founded in 1984, and is a well-known seller of computer systems throughout the world. Since 1987, Complainant has made extensive and prominent use of its DELL mark 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”. Complainant spends millions of dollars yearly to advertise and promote its trademarks, products, services and image, thereby creating substantial goodwill in the marketplace. During the 2003 fiscal year alone, Complainant spent over $426 million in advertising and promotion.

Complainant owns more than thirty United States trademark registrations and applications for the DELL mark or marks containing the DELL mark as well as for the INSPIRON mark (collectively, “the Marks”). (See registration documents attached to the Complaint as Annex C.) In addition to the DELL mark, Complainant uses a family of marks consisting of the mark “DELL” combined with other terms. These include the registered marks DELL DIMENSION, DELL PRECISION and DELL FINANCIAL SERVICES. (See registration documents attached to the Complaint as Annex D.) Complainant has also registered the DELL mark and variations of the mark in more than 130 countries worldwide.

Complainant conducts business on the Internet through numerous “DELL” domain names, including <dell.com>, <dellcomputers.com>, <dellsupport.com>, <wwwdell.com>, <e-dell.com>, <dellcomputers.com>, <delldirect.com>, <dellnet.com>, <dellbrowser.com>, <dellfactory.com>, <dellwebpc.com>, <dellauction.com>, <dellauctions.com>, <dellplus.com>, <dellexchange.com>, <dellpoweredge.com>, <dellprecision.com>, <delllatitude.com>, <delldimension.com>, and <dellselectcare.com> the earliest domain name, <dell.com>, was registered on November 22, 1988. Since at least as early as 1994, Complainant, which operates its website at “www.dell.com”, receives hundreds of thousands of “hits” daily. Complainant spends millions of dollars each year operating and maintaining its website, and hundreds of millions of dollars each year promoting and advertising the website. Complainant’s online presence is extremely important to its business. By the end of fiscal year 2000, online Internet sales to Complainant’s customers reached nearly 50 percent of the Company’s revenue and averaged $40 million per day.

In addition to selling computer products, Complainant offers a wide variety of support services, including maintenance and repair, installation of computers and computer systems, and troubleshooting. Among the services Complainant offers at its “www.dell.com” website are extended warranty packages and information on obtaining repairs from technicians certified by Dell. Complainant also offers an extensive certification program for persons interested in maintaining and servicing Dell computer hardware and peripherals.

Complainant’s Inspiron family of laptop computers are among the best-selling laptop computers in the world, generating net revenue of $4.36 billion dollars in fiscal year 2004, and more than 3.5 million units sold in the past two years alone.

Respondents’ “www.dellspecialist.com”

website is used to advertise and promote Respondents’ laptop computer

repair business. The <dellinspironrepair.com> domain name redirects to

the “www.dellspecialist.com” site.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Names are confusingly similar to its marks, that Respondents have no rights or legitimate interests in the Domain Names, and that the Respondents registered and are using the Domain Names in bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s

contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under Paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain names in issue are identical or confusingly similar to the complainant’s trademark or service mark; and

(ii) the respondent(s) has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established rights in the Marks insofar

as it holds many federal registrations for them and Complainant uses the Marks

in conjunction with a wide array of computer and computer related products and

services, including technical support and repair services. The primary element

of the Domain Names <dellinspironrepair.com> and <dellspecialist.com>

is Complainant’s registered DELL mark and, in the former, Complainant’s

registered INSPIRON mark. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For

Sale, WIPO Case No. D2000-0662 (holding

that the first element of the Policy is satisfied where the domain name wholly

incorporates complainant’s mark). Moreover the Domain Names are similar

in structure to Complainant’s marks and domain names that use DELL together

with another term.. The sole difference between the Marks and the Domain Names

is descriptive terms “repair” and “specialist.” Previous

panels have held that if a domain name incorporates a complainant’s mark

in its entirety, it is confusingly similar to that mark despite the addition

of other words. See, e.g., Volvo Trademark Holding AB v. Nick Bauer,

WIPO Case No. D2002-1025 (June 16, 2003)

(“new parts” added to VOLVO held confusingly similar); Volvo

Trademark Holding AB v. Peter Lambe, WIPO

Case No. D2001-1292 (January 20, 2002) (“exhausts” added to

VOLVO held confusingly similar). Furthermore, adding the term “repair”

which describes services that both Complainant and Respondents provide is likely

to increase the likelihood of confusion. That is, the likely reaction of Internet

users seeing the Domain Name would be that the site is operated by, or on behalf

of, Complainant or a related company and they would be confused. See Educational

Testing Service v. Park Jeong Foreign Language Institute, WIPO

Case No. D2001-1064 (November 15, 2001).

Also, it is well settled that the use of lower case

letter format and the addition of the gTLD “.com” are not significant

in determining whether a domain name is identical or confusingly similar to

a mark at issue. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO

Case No. D2000-0834 (September 4, 2000).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Complainant must prove that Respondents have no rights

to or legitimate interests in the Domain Names. Once a Complainant makes a prima

facie showing that a Respondent has no legitimate interests or rights in the

domain names at issue, the burden of production on this factor shifts to the

Respondents to rebut the showing. The burden of proof, however, remains with

Complainant. See Document Technologies, Inc. v. International Electronic

Communications, Inc., WIPO Case No. D2000-0270

(June 6, 2000). Pursuant to Paragraph 4(c) of the Policy, “[a]ny of the

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

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

demonstrate [Respondents’] rights or legitimate interests to the domain

name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainants have carried their burden of proving that Respondents have no rights to or legitimate interests in the Domain Names. It is undisputed that Complainant has not licensed or otherwise authorized Respondents to use the Marks for any purpose, nor does Dell certify its principals to perform repair work on Complainant’s products. Indeed, Respondents have no affiliation with Dell whatsoever. Furthermore, there is no evidence that Respondents have been commonly known by the Domain Names.

Furthermore, Respondents have not rebutted Complainant’s proof that Respondents

did not use the Domain Names in connection with a bona fide offering of goods

or services. “[C]onsideration of good faith is a key issue in determining

whether use is bona fide under the Policy.” San Francisco Museum

of Modern Art v. Joshua S. Drapiewski, WIPO

Case No. D2000-1751 (April 25, 2001). Respondents’ repair services

are not limited to Dell laptop computers. Nevertheless, Respondents are clearly

capitalizing on the DELL and INSPIRON trademarks by registering domain names

that include these well-known trademarks for the express purpose of luring persons

interested in repairs or service on Dell laptop computers to their competitive

site. See Dell Inc. v. Horoshiy, Inc., WIPO

Case No. D2004-0721 (November 18, 2004) (use that specifically targets the

Complainant’s famous DELL mark, without the Complainant’s permission,

to derive revenue from it was found not to be a bona fide offering of goods

or services, or a legitimate non-commercial or fair use); Research In Motion

Limited v. Dustin Picov, WIPO Case No.

D2001-0492 (June 25, 2001) (when a domain name is obviously connected with

a Complainant and its products, its very use by a Registrant with no connection

to the Complainant suggests “opportunistic bad faith”). Moreover,

the use of the Marks in connection with the offering of laptop computer repair

services will confuse potential customers into thinking that Respondents’

repair services are sanctioned and authorized by Dell. See Sony Kabushiki

Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO

Case No. D2000-1007 (November 16, 2000) (finding no rights or legitimate

interests because complainant’s famous mark “is not one that the

respondent would legitimately choose in the context of provision of goods, services

or information via a website unless seeking to create an impression of an association

with the Complainant”).

Respondents failed to provide any evidence that it

has rights or legitimate interests in the Domain Names. Therefore, the Panel

may accept all reasonable inferences and allegations included in the Complaint

as true. See Dell Inc. v. Horoshiy, Inc., WIPO

Case No. D2004-0721 (November 18, 2004) (drawing the inference from the

Respondents’ failure to respond to the Complaint that if the Respondent

had any rights or legitimate interests in the disputed domain names it would

have provided evidence of these by way of a response to the Complaint); America

Online, Inc. and AOL International, WIPO

Case No. D2000-0654 (August 21, 2000) (finding no rights or legitimate interests

where Respondent fails to respond and the Complainant had made out a prima facie

case).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following nonexclusive circumstances are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

One factor supporting a finding of bad faith registration

and use is Respondents’ knowledge of the Marks when registering the Domain

Names. It is undisputed that Respondents registered the Domain Names long after

DELL and INSPIRON had become well-known trademarks of Complainant (for, among

other things, computers and computer repair services) with full and complete

knowledge of Complainant’s rights in the Marks. Société des Hôtels

Méridien v. ABC-Consulting, WIPO Case No. D2004-0792

(November 23, 2004) (finding bad faith registration because of the widespread

use and fame of Complainant’s trademarks when Respondent registered the

disputed domain name). Likewise, Respondents had constructive notice of the

registrations insofar as a trademark search on the date Respondents registered

the Domain Names would have revealed Complainant’s registrations with

the United States Patent and Trademark Office. Actual or constructive knowledge

of the Complainant’s rights in the Trademarks is a factor supporting bad

faith. See, e.g., RRI Financial, Inc. v. Ray Chen, WIPO

Case No. D2001-1242 (December 11, 2001).

Furthermore Respondents selected domain names well suited to trade on the fame of Complainant’s marks. There is simply no ignoring the fact that the terms “Dell” and “Inspiron” carry distinction and drawing power for a website that sells competing computer-related services. The Domain Names enable Respondents to benefit from any misdirected or confused consumers looking for Complainant’s services. Accordingly, the Panel finds from the circumstances that Respondents registered and are using the Domain Names to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website and computer related services. Pursuant to Paragraph 4(b)(iv) of the Policy, this constitutes evidence of bad faith registration and use of the Domain Names.

Other evidence of Respondents’ bad faith relates to the incorrect information provided to the Registrar and the way in which Respondents tried to evade Complainant’s contacts. On July 29, 2004, Complainant’s counsel sent a letter to Respondents informing them that the registration of <dellspecialist.com> and <dellinspironrepair.com> violated Dell’s trademark rights and requested that Respondents transfer the domain names to Dell. The letter was sent to the address listed in the Whois for <dellspecialist.com>, which was in Oxon Hill, Maryland but it was returned as undeliverable. The letter was also sent to an e-mail address listed in the Whois for Respondents, but Complainant’s counsel received a report that the e-mail (and letter) could not be delivered. Complainant’s counsel resent the July 29 letter to the address listed in the Whois report for <dellinspironrepair.com> in Sanford, Florida. Although Complainant’s counsel received confirmation that this letter had been delivered, they received no response from Respondents. On or about August 25, 2004, Complainant’s counsel attempted to reach either of the two administrative contacts listed for <dellspecialist.com> and <dellinspironrepair.com>, Aguirre Huertas or Jonathan Jairo, by telephone. In a subsequent voicemail someone (possibly either Mr. Huertas or Mr. Jairo) informed Complainant’s counsel that all legal matters were handled by their attorney, Mr. Merce, and that he would contact Dell’s counsel. That never occurred.

Respondents’ provision of false or incomplete

contact information to the Registrar and/or its failure to update such information

is further evidence of bad faith. See, e.g., Oxygen Media, LLC v. Primary

Source, WIPO Case No. D2000-0362 (June 19, 2000).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii)

has been satisfied.

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 names <dellinspironrepair.com> and <dellspecialist.com> be transferred to the Complainant.

Harrie R. Samaras

Sole Panelist

Date: December 6, 2004

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