Dell Inc. v. liu ying jun / zhou lei
Claim Number: FA2104001942987
Complainant is Dell Inc. (“Complainant”), represented by Caitlin Costello, Texas, USA. Respondent is liu ying jun / zhou lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2021; the Forum received payment on April 27, 2021. The Complaint was received in both English and Chinese.
On April 29, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2021, the Forum served the English and Chinese Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of May 24, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@alienwaredesktop.com, postmaster@alienwarelaptops.shop, postmaster@alienwaremonitors.com, postmaster@delldesktopcomputers.shop, postmaster@delllaptop.net, postmaster@delllaptopsonsale.shop, postmaster@dellmonitor.net. Also on May 3, 2021, the Chinese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities controlling the disputed domain names are the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names are controlled by the same entity because the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delllaptopsonsale.shop>, and <delldesktopcomputers.shop> domain names all have identical registrant information. The <delllaptop.net> and <dellmonitor.net> domain names also have identical registrant information. Complainant shows that all the websites associated with the disputed domain names resolve to the same Terms of Use pages and list the same company, TrafficPoint Ltd., as the owner of the websites. The Panel accepts this unopposed proof that the disputed domain names are controlled by the same entity and will refer to all registrants as Respondent.
A. Complainant
1. Respondent’s <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names are confusingly similar to Complainant’s DELL and ALIENWARE marks.
2. Respondent does not have any rights or legitimate interests in the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names.
3. Respondent registered and uses the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> names in bad faith.
B. Respondent did not file a Response.
Complainant offers wide-ranging computer products and services and holds registrations for the DELL and ALIENWARE marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,616,571, registered October 9, 1990; Reg. No. 2,616,204, registered September 10, 2002).
Respondent registered the <delllaptop.net> and <dellmonitor.net> domain names December on October 10, 2020; the <delldesktopcomputers.shop>, <delllaptopsonsale.shop> on December 6, 2020; the <alienwaredesktop.com> on December 29, 2020; and the <alienwarelaptops.shop> and <alienwaremonitors.com> on March 26, 2021. Respondent uses the above disputed domain names to pass off as Complainant and direct consumers to purchase Complainant’s products on Amazon via hyperlinks.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the DELL and ALIENWARE marks based on registration of the marks with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names all use Complainant’s marks and simply add a generic term, such as “laptop,” “desktop,” etc., and a gTLD. The addition of generic terms and a gTLD to a mark does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus, the Panel finds that Respondent’s <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names are confusingly similar to the DELL and ALIENWARE marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names because Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the DELL and ALIENWARE marks. The WHOIS information for the domain names identifies “liu ying jun / zhou lei” as the registrant of the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names); see also SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
Complainant also argues that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domains to pass off as Complainant and direct consumers to purchase Complainant’s products on Amazon via hyperlinks. Using a disputed domain name to pass off as a Complainant and offer competing goods or services via pay-per-click links does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving websites for the disputed domain names showing that they feature Complainant’s marks, logos and product images, along with hyperlinks to purchase Complainant’s products from Amazon. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names in bad faith because Respondent uses the domains to attract users for commercial gain by passing off as Complainant and directing consumers to purchase Complainant’s products on Amazon via hyperlinks. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent had knowledge of Complainant’s rights in the DELL and ALIENWARE marks, based on the fame of the marks and Respondent’s inclusion of the marks and Complainant’s logos and products on the resolving websites. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the DELL and ALIENWARE marks when it registered the disputed domain names, in bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see additionally Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienwaredesktop.com>, <alienwarelaptops.shop>, <alienwaremonitors.com>, <delldesktopcomputers.shop>, <delllaptop.net>, <delllaptopsonsale.shop>, and <dellmonitor.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 27, 2021
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