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:

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:

*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:

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 (4^th 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.]

5.2.3      The Response also lists companies which have the name / mark DELL or include it as a component in their business names.

5.2.4      The Response lists domain names that use or incorporate the mark DELL.

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.

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.