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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Dell, Inc v Djamel [2008] DRS 6242 (28 July 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6242.html Cite as: [2008] DRS 6242 |
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Complainant
Respondent
1. The Parties
The Complainant
1.1 The Complainant is Dell, Inc.United States, represented by Field Fisher Waterhouse LLP.
The Respondent
1.2 The Respondent is Djamel, Russia.
2. The Domain Name
2.1 The disputed domain name is("the Domain Name").
3. Procedural Background
3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").
3.2 The Complaint entered Nominet's system on 2 June 2008. It was validated on 4 June 2008 and Complaint documents were generated on the same day. Although a Response was due by 27 June 2008, none was received. Mediation not being possible and the Complainant having paid the relevant fee on 11 July 2008, the matter was referred to me for a Decision on 14 July 2008. I have confirmed that I am independent of the parties and that I am not aware of any matters that might call my impartiality or independence into question.
4. Outstanding Formal/Procedural Issues
4.1 There are no such issues in this case.
5. The Facts
5.1 The Respondent registered the Domain Name on 6 August 2007.
6. The Parties' Submissions
The Complaint
6.1 The Complainant makes the following submissions in its Complaint.
6.1.1 The Complainant is a Delaware Corporation which was founded in 1984. It conducts operations worldwide and offers a broad range of product categories, including desktop PCs, servers and networking products, storage, mobility products, software and peripherals, and services. It is the number one supplier of personal computer systems in the United States and the number two supplier worldwide. In the fiscal year to 1 February 2008, its net revenue was in excess of US$ 61 billion.
6.1.2 The Complainant has used the name and mark DELL as a trade mark since 1987. It is the registered proprietor of numerous trade marks worldwide, including registrations for the word mark DELL and a DELL logo. It is the owner of Community Trade Mark registration numbers 3087641 (registered on 17 January 2005) and 83345 (registered on 26 March 1988) and UK trade mark registration numbers 2344330 (registered on 3 December 2004) and 1504488 (registered on 16 September 1994). It is also the proprietor of numerous domain names incorporating the DELL mark including
6.1.3 The Complainant's DELL brand is one of the most widely known and recognised brands in the world, and has established enormous goodwill and reputation in the UK and worldwide. In 2007 it was independently ranked at number 31 in a list of the top 100 global brands. The Complainant has made extensive and prominent use of the DELL brand in connection with a wide range of computer-related goods and services, including by using the DELL mark and logo on its products distributed around the world and on its official website at www.dell.com.
6.1.4 The Complainant sells its products and services directly to customers through dedicated sales representatives, telephone-based sales and online through a number of domain names including
6.1.5 The Domain Name is similar to the Complainant's DELL marks. This is because the Domain Name is comprised of the DELL mark as the dominant element followed by the words "master" and "password", which are descriptive terms in the computer industry. The term "master password" is sometimes used by the computer industry to refer to a password held by the manufacturer which can be used to unlock a computer when a user has forgotten their BIOS password.
6.1.6 BIOS, which stands for Basic Input Output System, is the built-in software in a computer which determines certain of its functions. It typically contains all the code required to start the operating system and communicate with the various hardware devices in a computer such as the keyboard, the monitor and disk drives. BIOS is typically on a separate chip. As a security measure, the owner of a computer can prevent his machine from being operated by unauthorised third parties by including a BIOS password. It is for this reason that the information required to unlock Dell BIOS passwords is not publicly available. The Complainant provides the service of unlocking Dell BIOS passwords exclusively to its customers free of charge as long as they can provide the Complainant with proof of ownership. The ownership qualification is in place to prevent resellers of stolen computers or unauthorised third parties from gaining access to a computer's operating system.
6.1.7 The Complainant first became aware of the Respondent through the Respondent's domain name registration of another domain name,
6.1.8 Typing the Domain Name as a URL resolved to Spunlock Website II.
6.1.9 For the Respondent to offer the service of unlocking Dell BIOS passwords he must have either: (a) a copy of the Complainant's confidential BIOS password decoder program; (b) reverse engineered the Dell BIOS password decoder; and/or (c) physically dismantled Dell models to clear the information on the chip containing the Dell BIOS password (or, in the alternative, provided a service assisting others to do the same).
6.1.10 The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C) of the Policy). Any physical manipulations of Dell machines to gain access to Dell BIOS chips in order to clear the BIOS password could potentially cause damage to Dell machines. Customers unsatisfied with the Respondent's services may wrongly blame the Complainant for their difficulties, unfairly causing detriment to the Complainant's reputation.
6.1.11 Confusion (paragraph 3(a)(ii) of the Policy). Given the similarity between the Domain Name and the Complainant's marks, the Domain Name will be understood by internet users as referring to a master password (i.e. BIOS password) provided by the Complainant to unlock Dell password-protected machines. This is the natural meaning of the Domain Name and will lead internet users to believe that the Domain Name is owned and/or operated by the Complainant, or authorised and/or approved and/or endorsed by the Complainant, which is not the case. This enables the Respondent to capitalise on internet users who use the Domain Name to visit the Respondent's website searching for the Complainant and/or for the Complainant's services and this confusion will cause inevitable damage to the Complainant's goodwill.
6.1.12 The Respondent has placed the DELL mark and the DELL logo at numerous locations on Spunlock Websites I and II. This will have inevitably caused confusion amongst internet users and given the impression of a commercial connection between the Complainant and the Respondent. (The exhibits produced by the Complainant show that the names and logos of other major computer manufacturers are also featured.) The Respondent has taken advantage of this confusion to appropriate the goodwill associated with the Complainant's trade marks and brand for its own financial benefit at the detriment of the Complainant.
6.1.13 Although a disclaimer is used in certain Spunlock websites, this is inadequate and does not render the use of the Domain Name as non-abusive or in accordance with honest practices as it does not prevent confusion amongst internet users. By the time it is seen, the Respondent will unfairly have achieved a business opportunity. Even where initial confusion is rectified by a disclaimer, such users may then decide to use the services of the Respondent rather than the Complainant's (free) services. This also takes unfair advantage of the Complainant's trade mark.
6.1.14 Furthermore, the Respondent has provided false contact details to Nominet (Paragraph 3(a)(iv) of the Policy) as has been independently verified by the Complainant's solicitors. The Complainant produces a certified translation of a report from the Russian postal service to the effect that the Moscow address given by the Respondent is not in a recognisable format.
6.1.15 The Complainant also claims that the Respondent has admitted in correspondence to providing false contact details. It relies on an email received from [email protected] in response to correspondence from the Complainant's solicitors in which the sender states:
"i do apologize but I don't know who mr james carter is or this djamel you speak of
this operation is not illegel in any way and you don't have proof that it is its just threats and in reality its nonsense
dell think they have bigger balls than me because they have more money?
you may or may not realize this but do you really think I would use my real details and not that of freinds or paid proxy?
please don't insult my intelligence
gratzi"
6.1.16 The Complainant claims that, in the light of the above, (i) it has rights in respect of a name and mark that is identical or similar to the Domain Name and (ii) that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complainant seeks a transfer of the Domain Name.
The Response
6.2 No Response has been filed in this case.
7. Discussion and Findings
Relevant Provisions of the Policy
7.1 Under paragraph 2 of the Policy:
"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:
(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."
7.2 Under paragraph 1 of the Policy the term "Rights":
"includes, but is not limited to, rights enforceable under English law…"
7.3 Also under paragraph 1 of the Policy, the term "Abusive Registration" means a domain name which either:
"i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a domain name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
Rights
7.5 I am satisfied on the evidence submitted by the Complainant that it has trade mark rights in the name DELL in connection with computer-related products and services. I also accept the Complainant's submission that the distinctive part of the Domain Name is "dell", which is identical to the Complainant's mark, and that the remaining components "master" and "password" are descriptive in nature. In the circumstances I find that the Complainant has Rights in a mark that is similar to the Domain Name. The first limb of the test under paragraph 2 of the Policy is therefore satisfied.
Abusive Registration
7.6 Having regard to the Complainant's evidence, and the lack of any rebuttal by the Respondent, I find on the balance of probabilities that the Respondent has used the Domain Name (among others) to resolve to the various "Spunlock" websites where he offers unlocking services relating to Dell computers. I also accept that he has prominently displayed the Complainant's name and logo, along with those of other major computer manufacturers, in connection with those services.
7.7 I do not believe that these circumstances point to the Respondent having registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C) of the Policy).
7.8 I am of the view, however, that these circumstances are capable of giving rise to confusion for the purposes of paragraph 3(a)(ii) of the Policy, namely, that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7.9 First, it is arguable that internet users will access the Respondent's site in the expectation of accessing a password unlocking site operated or authorised by the Complainant. This may be abusive to the extent that the Respondent has gained a business opportunity by way of a misrepresentation and has therefore taken unfair advantage of the Complainant's goodwill. (I agree with the Complainant's submission that a disclaimer that is displayed once the website is reached is, in general, insufficient to dispose of with any "initial interest confusion" that has been caused, or any commercial advantage that has been gained, thereby.)
7.10 Secondly, it is arguable that internet users viewing the Respondent's site may believe that the unlocking services offered by the Respondent are in fact provided or authorised by the Complainant. If and insofar as the services offered may be of poor quality, or even damaging to a customer's computer, this may be unfairly detrimental to the Complainant's Rights.
7.11 While I have indicated that confusion is arguable in two ways, I express no view on the strength or weakness of any such argument save to say that the Complainant has established a prima facie case, i.e. a case to answer. In circumstances such as this, it is open to a respondent to argue that, while he has used a domain name to refer to a complainant's trade mark, he is providing legitimate goods or services relating to that complainant's goods and his conduct is not unfairly detrimental to the rights of that complainant. In this case, however, the Respondent has failed to file a Response and has, therefore, made no such argument. I therefore find, on the balance of probabilities, that the Respondent is using the Domain Name in a manner which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7.12 The Complainant also submits that the Respondent has submitted false contact details to Nominet and has admitted doing so in correspondence. However, I find the relevant email from [email protected] to be ambiguous and am not certain that it necessarily makes any such admission: the sender may be saying that, if he was doing anything unlawful, which he denies, he would not then provide his real contact details. However, on the basis of the report from the Moscow postal authorities, which states in effect that the Respondent's address is non-existent, I do find it to have been independently verified that the Respondent has provided false contact details to Nominet. I find that this factor is supportive of a conclusion of abusive registration in this case.
7.13 It is therefore my finding that the Domain Name was registered and/or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and, accordingly, that the Domain Name in the hands of the Respondent is an Abusive Registration.
8. Decision
8.1 The Complainant has established on the balance of probabilities that it has Rights in respect of a name or mark which is similar to the Domain Name. It has also established that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant.
