The Complainant is Dell Inc., of Texas, United States of America, represented by Perley-Robertson, of Canada.
The Respondent is ASTDomains, of Manitoba, Canada, represented internally.
2. The Domain Name and Registrar
The disputed domain name <dellvista.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2007. On December 10, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 10, 2007, eNom 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 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 12, 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”).
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 December 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2008. The Response was filed with the Center on January 2, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 9, 2008. 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
The Complainant, Dell Inc., is the world’s largest direct seller of computer systems, with revenues in 2006 of approximately $56 billion. Founded in 1984 by Michael Dell, Complainant first began using the name and trademark DELL in 1987. Since that time, 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 websites such as “www.dell.com”, “www.dell.ca”, and “www.dellvistaupgrade.com”.
Complainant owns a number of trademark registrations around the world for the word “dell”, as well as the DELL logo, including in the place of residence of the Respondent, Canada. The trademarks are registered for a wide range of goods and services including but not limited to on computer-related products and services.
The Panel has not been presented with any substantial information on the Respondent or of the Respondent’s business activities.
5. Parties’ Contentions
A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to its registered DELL mark. The disputed domain name thus contains the mark DELL in its entirety with the addition of “vista”. VISTA is according to the Complainant a trademark owned by Microsoft Corporation.
Complainant further maintains that there is no evidence that Respondent has rights or legitimate interests in any of the disputed domain name. There is no evidence, Complainant asserts, that Respondent uses the disputed domain name in connection with a bona fide offering of goods and services. Complainant also indicates that Respondent is not commonly known by any of the disputed domain name, is not making a legitimate non-commercial or fair use of the disputed domain name, and is not a licensee of, or otherwise affiliated with Complainant.
To establish the requisite of registration and use in “bad faith”, Complainant contends that, Respondent has registered the domain name primarily for the purpose of selling the domain name to the Complainant for more that the documented out-of-pocket costs related to the domain name. The Complainant refers to the e-mail correspondence between the parties in which the Respondent offers to sell the domain name to the Complainant for USD 4,510.
The Complainant further alleges that the disputed domain name has been registered with the purpose of disrupting the business of the Complainant and that such disruption actually has occurred in practise.
Finally, the Complainant alleges that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, thereby creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of such sites or of the products or services on such sites. Reference is made to the content of the corresponding website as it appeared until shortly before the initiating of this procedure. The website contained several pay-per-click links as well as commercial ads.
B. Respondent
In its short reply the Respondent denies any wrongdoing. The domain name was chosen to optimize search engine results and due to the allegations of disruption of the Complainants business the corresponding website was closed and the domain name is now pointing at the website for Dell City, Texas USA.
The Respondent further claims that the Complainant is performing what is known as a “reverse domain hijacking” since they are trying to acquire this domain name from a smaller company with less resources than them.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive trademark DELL in its entirety, but also incorporates the term “vista”, which the Panel understands is also a trademark belonging to a third party, namely Microsoft Corporation.
UDRP Panels have consistently found that the Respondent’s inclusion of a third party’s trademark in its domain name does not necessarily eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing,
WIPO Case No. D2002-0793; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793 and F.Hoffmann-La Roche AG v. Bob, WIPO Case D2006-0751.
Also, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark to apply for the domain name incorporating the Complainant’s mark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has in effect not rebutted this and, based on the record of this case it is unlikely that any such rights or interests may exist.
Even if the Respondent was authorized to sell products bearing the Complainant’s mark DELL or to provide services or information on the same, and in the absence of other factors, this would not necessarily give the Respondent the right to incorporate this trademark into its domain name. See, inter alia, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenial & More Online Pharmacy,WIPO Case No. D2003-0793; Oki DataAmericas, Inc v. ASD, Inc,WIPO Case No. D2001-0903. This is particularly so when the disputed domain name, as it is the case here, is used for a website that also contains information on and links to products unrelated to the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration anduse of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.
Given the notoriety of the Complainant’s trademark, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
As described above, the disputed domain name was initially used for a website containing links to computer related articles but also pay-per-click links to other websites of a more commercial nature apparently offering a variety of different goods and services as well as commercial ads. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
In addition, the Panel finds that the Respondent’s offer to sell the domain name to the Complainant for USD 4,510 as well as the fact that the business of the Complainant apparently has been disrupted by the registration and use of the disputed domain name are also indications of bad faith.
Therefore, the Panel finds that the domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are fulfilled in this case.
The Panel notes that this results in the transfer to the Complainant of a domain name that includes the word “vista”, which the Panel understands is a dominant part of a trademark owned by a third party, Microsoft Corporation, that is not a party to the current proceeding. In other cases under the UDRP procedure, the Complainants have presented evidence of the consent of other trademark owners with a potential interest in the transferred domain name. See inter alia, Pfizer, Inc. v. Martin Marketing,
WIPO Case No. D2002-0793 and Yahoo! Inc. v. M & A Enterprises,
WIPO Case No. D2000-0748; also NVT Birmingham, LLC dba CBS 42 WIAT-TV v. ZJ,
WIPO Case No. D2007-1079. However, while in good practice neither the Policy nor the Rules expressly require such consent. Accordingly, the Panel orders that the domain name be transferred to the Complainant without prejudice to any rights, which may be asserted by Microsoft Corporation.
D. Reverse Domain Name Hijacking
Respondent has asked that a finding be made against Complainant of Reverse Domain Name Hijacking.
Paragraph 15(e) of the Rules provides inter alia:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
It follows from the findings above that the Panel finds that the Complaint is justified and well founded, and consequently there is no basis for finding has Reverse Domain Name Hijacking.
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, <dellvista.com> be transferred to the Complainant
Knud Wallberg Sole Panelist
Dated: January 23, 2008
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