WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

A Whois.Net search records that the domain name <dellrebatestatus.com> under challenge in this proceeding was created by its Registrar on March 19, 2003.

5. Parties’ Contentions

A. Complainan

The Complainant, Dell Inc., (“Dell”) claims to be the world’s largest direct seller of computer systems. Founded in 1984, the Complainant began using the name and mark DELL as a trade name, trademark and service mark in 1987. Since that time, it 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.”

Dell claims to spend millions of dollars each year in advertising and promoting its trademarks, products, services and image. As a result of these efforts it maintains that it has created substantial goodwill around the world and that the DELL mark has become an asset of incalculable value to it.

Dell conducts business on the Internet through numerous “DELL” domain names, including <dell.com>, <dellsupport.com>, <wwwdell.com>, <e-dell.com>, <dellcom>puters.com>, <delldirect.com>, <dellnet.com>, <dellbrowser.com>, <dellfactory.com>, <dellwebpc.com>, <dellhost.com>, <dellauction.com>, <dellauctions.com>, <dellplus.com>, <dellexchange.com>, <dellpoweredge.com>, <dellprecision.com>, <delllatitude.com>, <delldimension.com>, <dellselectcare.com> and others. The earliest domain name, <dell.com>, was registered on November 22, 1988. Dell has established to the satisfaction of the Panel that its online Internet presence is a matter of considerable commercial importance. It has initiated many proceedings pursuant to its entitlement under the UDRP to enforce its rights in this regard.

Dell offers a wide variety of rebates on products it sells. Consumers are sometimes interested in tracking the status of their rebate submissions. Accordingly, Dell has set up a website called “www.dell.rebatestatus.com” that allows its customers to do just that.

In May of 2004, Dell became aware that Asia Ventures, Inc. (“Asia Ventures” or “Respondent”) had registered the domain <dellrebatestatus.com>.

Asia Ventures’ illegitimate registration and use of domain names has been documented in the past. Asia Ventures registers websites and links them to a search engine, Rocket Search, which Asia Ventures owns and operates. The search engine, however, is claimed by Dell to be nothing more than a front for the search engine of a third party that enables Asia Ventures to make money every time an Internet surfer clicks on a sponsored link. This activity was discussed in The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116.

If an Internet user reaches <dellrebatestatus.com> and performs a search using the search box in the middle of the page, Dell claims, and it has not been contested, that the user is taken to search results produced on the servers of Oingo.com. Oingo.com is said to be the home page of Applied Semantics, a subsidiary of Google, Inc., in whose name Oingo.com is registered. Google/AdSense is a “Domain Park” service which the Registrant is utilizing. The Domain Park service “delivers targeted, conceptually related keywords and advertisements to parked domain pages by using Google’s semantic technology to ‘understanding’ the intent/purpose of each domain name.”

By ‘understanding’ what confused consumers will be looking for when they type in <dellrebatestatus.com>, the Domain Park service created a webpage full of sponsored links to companies offering unrelated rebates, or selling competitive products, and even links to some Dell authorized sites. Asia Ventures then makes more money every time someone follows those links.

According to Dell’s unchallenged contentions, in order to join the Domain Park network, a domain must receive over 750,000 page views per month. To generate that volume of traffic without offering any legitimate service, the domain parker must choose a domain name that, in and of itself, will generate traffic. <dellrebatestatus.com>, by combining Dell’s famous trademark with the name of a popular service offered by Dell to its customers, may be able to generate that volume of traffic.

Dell further contends that bad faith is established by the flagrant violation of the Google/AdSense’s terms which state that the parked domain name may not contain any violation of “trademark (and related rights).”

As in the The Sportsman’s Guide case (supra), the Complainant contends that Asia Ventures has registered the <dellrebatestatus.com> domain to make money out of Dell’s customers’ interest in tracking the status of their rebate submissions. This is neither legitimate, nor good faith, use. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, paragraph 4(b)(iv). See also Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

Moreover, this is not the first time Asia Ventures has improperly registered domain names that use Dell’s famous trademarks, a matter which, so it is claimed, can be used to support the finding of bad faith registration. In October 2003, Dell filed the UDRP proceeding Dell Inc. v. Asia Ventures, Inc., WIPO Case No. D2003-0853, with the Center over the improper registration of the domain name <delljukebox.com>. Asia Ventures subsequently transferred the <delljukebox.com> domain name to Dell in November of 2003 thereby bringing the proceeding to an end before any decision was delivered.

On May 28, 2004, attorneys for Dell sent Asia Ventures a letter requesting that Asia Ventures immediately turn the <dellrebatestatus.com> domain over to Dell. See Annex I. The letter was returned as undeliverable as Asia Ventures has apparently used a non-existent address in its WHOIS information — another indication of bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Asia Ventures has no legitimate interest in the <dellrebatestatus.com> domain. Asia Ventures is not a licensee of, or otherwise affiliated with, Dell. “Dell” is not a part of Asia Ventures’ name, and Asia Ventures has absolutely no connection with the processing of Dell rebate submissions. Rather, Asia Ventures capitalizes on the trademarks of others by registering domains that include well-known trademarks and then profiting from the resulting confused traffic that gets misdirected to those domains.

The Complainant contends that Asia Ventures’ activities have already been deemed illegitimate and in bad faith by UDRP panels. See The Sportsman’s Guide, supra.

The Respondent’s use of <dellrebatestatus.com> is likely to be confused with Dell’s family of DELL marks and domain names. Given the strength and fame of the DELL marks and the fact that Dell processes hundreds of rebate submissions every year, the Respondent’s use of <dellrebatestatus.com> will confuse consumers into believing that domain name is associated with Dell.

The Respondent has no rights or legitimate interests in respect to his use of <dellrebatestatus.com>. The Respondent’s use of this domain, operating a pass-through search engine to profit from confusion and misdirected domain traffic, is not a legitimate use. In short, the Respondent is not using <dellrebatestatus.com> in connection with a bona fide offering of goods or services. Rather, this domain was registered and is being used in bad faith, with a clear intent by the Respondent to profit from its actions.

The Respondent registered <dellrebatestatus.com> long after DELL had become a famous trademark of Dell Inc., and long after Dell began offering and processing rebates, with full and complete knowledge of Dell’s superior and prior rights.

In all of the above circumstances Dell maintains that the domain name in question should be transferred to it by reason of the fact that:

(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) The Respondent has no rights or legitimate interests in respect of the domain name; an

(c) The domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Respondent failed to file a Response to the Complaint within the time limits allowed and, as far as the Panel is aware, has not filed a Response subsequently. Accordingly, all assertions in the Complaint are uncontested and, under paragraph 5(e) of the Rules, the Panel is required to decide the dispute based on the Complaint. The Panel nevertheless needs to be independently satisfied that the three elements set out in paragraph 4(a) of the Policy have been made out on the evidence available to it.

The Policy requires the Complainant to prove each of the following three elements, in order to prevail in this proceeding:

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

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name <dellrebatestatus.com> registered by the Respondent is confusingly similar to the domain name for the website established by Dell for the benefit of its customers named <dell.rebatestatus.com>, contrary to the Policy, paragraph 4(a)(i). The omission of the full stop ‘.’ between ‘dell’ and ‘rebatestatus’ does not render the Respondent’s domain name distinctive from the one used by the Complainant. In Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, the domain name under challenge was <s-m-i-r-n-o-f-f.com>. The Panel found that the addition of dashes between the letters of a single word did not alter the way the domain name was pronounced and could not, in context, differentiate it from the same word absent the dashes. Likewise no substantive distinction is created by the removal of the full stop in the present case. The Panel also finds the domain name confusingly similar to the Complainant’s DELL trademark since it incorporates the Complainant’s trademark and two generic non-distinctive words.

B. Rights or Legitimate Interests

None of the contentions advanced by Dell have been contradicted by the Respondent, notwithstanding that it has had the opportunity to do so. The Panel finds that the Respondent has no rights or legitimate interests in the domain name <dellrebatestatus.com>, and it thereby is in breach of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Contrary to the Policy, paragraph 4(a)(iii), the Respondent has registered and has and is using the domain name <dellrebatestatus.com> in bad faith. The conduct of the Respondent falls squarely within that proscribed by paragraph 4(b)(iv) of the Policy, namely that by using the domain name, it intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Panel accepts the uncontraverted evidence that the Respondent registered <dellrebatestatus.com> long after DELL had become a famous trademark of Dell Inc., and long after Dell began offering and processing rebates. Moreover Asia Ventures has on a previous occasion registered a domain name that use Dell’s famous trademark. In October 2003, Dell filed the UDRP proceeding Dell Inc. v. Asia Ventures, Inc., WIPO Case No. D2003-0853, with the Center in relation to what was alleged to be the improper registration of the domain name <delljukebox.com>. Asia Ventures subsequently transferred the <delljukebox.com> domain name to Dell in November of 2003, prior to any Panel determination.

The use of an address in its registered particulars which is non-existent is also supportive of the conclusion that it is using the domain name in bad faith.

However the Panel does not accept that the alleged violation of the Google/AdSense’s contractual terms (which require that a parked domain name may not contain any violation of “trademark (and related rights)” is itself evidence of use of the domain name in bad faith.

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 <dellrebatestatus.com> be transferred to the Complainant.

David Levin Q.C.
Sole Panelist

Dated: July 30, 2004