Alienware Corporation v.
James Dann
Claim Number: FA0910001290045
PARTIES
Complainant is Alienware Corporation (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienlaptop.com>, registered with 1 & 1
Internet Ag.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Beatrice Onica Jarka as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
Additional Submission from the Complainant was received on December 14,
2009. The Respondent submitted also to NAF a Reply to the Complainant’s
Additional Written Statement pursuant to NAF Supplemental Rule 7 (c) on
December 21, 2009. Both Submissions are considered to be submitted in a timely
manner according to NAF Supplemental Rule 7.
On December 15, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that:
·
It is a
wholly-owned subsidiary of Dell, Inc.
·
It is
the owner of the distinctive and well known ALIENWARE trademarks (the
“Marks”). Complainant commenced use of
its Marks in 1997 and has continually used the Marks in connection with its
products since that time in the
·
Complainant
generates much of its revenues from sales over the Internet and Complainant’s
web site, “alienware.com”, appears in a number of different languages.
·
It uses
and has registered other domain names that contain its ALIENWARE marks,
including “alienware.de”, “alienware.fr” and “alienware.co.uk”. Internet users who type or search for these
various domain names expect to and do arrive at Complainant’s website.
·
Its Marks
are aggressively protected through registration and international
enforcement. Amongst others, Complainant
owns United States Federal Trademark Registrations for the Marks as follows:
|
Mark |
Goods and Services |
Reg. No. |
Reg. Date |
|
ALIENWARE |
IC 009. US 021 023
026 036 038. G & S: COMPUTERS. FIRST USE: 19970115. FIRST USE IN
COMMERCE: 19970115 IC 042. US 100
101. G & S: COMPUTER INSTALLATION AND SET-UP SERVICES. FIRST USE:
19970115. FIRST USE IN COMMERCE: 19970115 |
2616204 |
September 10, 2002 |
|
ALIENWARE |
IC 036. US 100 101
102. G & S: Financial services, namely, financing the purchase of
computers, facilitating and arranging for the financing of computers,
lease-purchase financing. FIRST USE: 20070715. FIRST USE IN COMMERCE:
20070715 |
3412384 |
April 15, 2008 |
·
Respondent has no rights or legitimate interest
in the disputed domain name as
-
it is not
commonly known by the name “ALIENWARE” or
“AlienLapTop” nor does Respondent operate a business or other organization
under these marks or names.
-
Respondent
is not making a legitimate non-commercial or fair use of the disputed domain
name without intent for commercial gain,
-
Respondent
is using the disputed domain name to confuse and misleadingly divert consumers,
with constructive notice of Complainant’s rights in the Mark through
Complainant’s Federal trademark applications and registrations,
-
Searchers
for Complainant’s goods and services branded with its Marks, who typed in the disputed
domain name, would be confused and
think they were attempting to visit a site of the Complainant,
- Respondent’s use of the disputed domain name has diluted the Marks, by diminishing consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a domain name which does not resolve to any web content. Respondent’s use creates the very real risk that Complainant’s trademarks are being associated with a non-resolving website over which Complainant has no quality control.
·
Respondent registered and is using the disputed domain
name in bad faith under Policy since Respondent cannot demonstrate that it has
made a bona fide use of, and has a
legitimate interest in the disputed domain name or the Marks under Policy.
B. Respondent
To the Complainant’s
contentions, in his Response the Respondent replies that:
·
The
Complainant however does not own a trademark for the mark ALIENLAPTOP.
·
The
Complainant does not own a trademark for the mark “ALIEN”.
·
The term
“ALIEN” is generic and there is a natural and historic semantic relatedness
between the term “ALIEN” and technology-related devices and services, as
evidenced by the popularity of pairing the term “ALIEN” with various
technological wares.
·
The disputed
domain name is entirely composed of common, descriptive terms and as such can
not be found to be identical to the Complainant's mark
·
There is
no confusing similarity between the term “ALIENWARE” and “ALIENLAPTOP”.
·
He has
acquired a right and legitimate interest in the domain name
<alienlaptop.com> as he uses the email address <jdann@alienlaptop.com>,
which can be considered a bona fide use of the domain name.
·
He finds
the claim of intentionally trying to “confuse, misleadingly divert consumers,
or to tarnish the Marks” unfounded as:
-
the term
“ALIEN” is generic and the Complainant
does not own a registered trademark for “ALIENLAPTOP”.
-
Dell
Inc, of which the Complainant is a wholly owned subsidiary, owns the domain name <ALIENCOMPUTER.COM>.
which takes the user to an empty web page.
·
The
Respondent aspires to both establish an independent software consultancy as
well as develop out his various web properties using his advanced skills as
both a Software Engineer and as a Computational Linguist. In this sense, the Respondent has registered
other domain names related to software consultancy, and a number of domains in
line with his intentions to build “semantic mash-ups” of freely available
internet knowledge resources.
·
Although
the Respondent has not produced a demonstrable website with his domain
<alienlaptop.com>, this does not amount to bad faith registration.
·
The
Complainant has failed to demonstrate “use in bad faith”. The arguments used to support a claim of “bad
faith” are not applicable to the current case and therefore there is no “bad
faith”.
·
Complainant's delay for over 20 months in
bringing the Complaint is evidence of the bona fide nature of the Respondent's
use of the terms and that the Complainant did not have a problem with the
disputed domain name.
C. Additional Submissions
By the Additional Written
Statement the Complainant
further asserts:
· The <alienlaptop.com> domain incorporates the most dominant and distinctive portion of Complainant’s trademarks and corporate name – the word “ALIEN” which creates a strong likelihood of confusion between Complainant’s marks and the <alienlaptop.com> domain.
· Respondent engaged in bad faith, with regard to the <alienlaptop.com> domain, by failing to make even the most cursory inquiry into whether this name, or any others he owns, is confusingly similar to a trademark owned by another, despite his experience with domain names and his profession within the computer industry,
· Respondent’s bad faith my also be demonstrated by his request for an extraordinary sum of money in exchange for the transfer of the <alienlaptop.com> domain. In this sense the Complainant refers to the conversation referenced in Mr. Lodico's affidavit occurred between the Respondent and Mr. Lodico.
· Use of the disputed domain as an email address, cannot be viewed as providing Respondent protection under 4(c)(i) as legitimate use.
· In the UDRP forum laches are not a recognized defense and has no bearing on Respondent’s bad faith.
By its Reply to the
Complainant’s Additional Written Statement the Respondent contends that:
·
On page
2, the Complainant attempts to amend the original Complaint by citing a case
that was pending when the current complaint was initially registered, in clear
violation of UDRP Supplemental Rule 7(f).
·
The
Respondent does not play video games nor does he write software related to
video games nor is the Respondent a member of the video game community. The Respondent is a highly specialized
software engineer and computational linguist with no interest in video games
and therefore he could have not known about the Complainant’s Marks
·
The Complainant’s assertion regarding the
Respondent’s bad faith demonstrated by his request for an extraordinary sum of
money in exchange for the transfer of the disputed domain name, is not founded. Mr. Lodico's attempt to acquire the domain
“in exchange for a settlement payment” after receiving the Respondent's
truthful response demonstrates implicit acknowledgment of both the Respondent's
absence of bad faith and the Respondent's bona fide right to the domain.
·
The
Respondent does not assert that the Complainant “slept on his rights”, but
simply that the Complainant's interest in the search terms “alien laptop” has changed
over the last 20 months and that the current dispute is related to a change in the
consumer behavior that has occurred between the time the domain name was
registered 20 months ago and the time that the Complainant first contacted the
Respondent.
FINDINGS
Complainant, Alienware Corporation, is a leader in producing computers
designed for gaming and other graphically intense applications. Complainant owns two trademark registrations
for the ALIENWARE mark with the United States Patent and Trademark Office
(“USPTO”) (e.g., 2,616,204 issued September 10, 2002).
Respondent registered the <alienlaptop.com> domain name on April 4, 2008. Respondent’s disputed domain name does not resolve to any web content.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that
the Complainant has established rights in the ALIENWARE mark (Reg. No.
2,616,204 issued
Respondent’s <alienlaptop.com> domain name is composed of (1) the word “alien,” which is the first and dominant part of Complainant’s ALIENWARE mark, (2) the generic word “laptop,” and (3) the generic top-level domain (“gTLD”) “.com.”
In the case Alienware
Corporation v. Optimize My Site, FA0910001290038, (Nat. Arb. Forum
December 2, 2009), quoted by the Complainant in its Additional Written
Statement, the Panel found that domain
name “alienlaptops.com” is confusingly similar to Complainant’s ALIENWARE mark
pursuant to Policy ¶ 4(a)(i). The Respondent has requested in the
Reply to the Complainant’s Additional Written Statement, that the indication of
this case is to be considered an amendment of the Complaint and therefore disregarded
under NAF Supplementary Rule 7 (f). The Panel finds that the quotation of a case, even decided
after the filling of the Complaint cannot be considered amendment of the
Complaint as it does not in any way change the arguments of the Complainant and
is publicly available.
This Panel, as the one in the
case just quoted, considers that the disputed domain name
“alienlaptop.com” is also confusingly
similar with the Complainant Marks. The disputed domain name contains a part of
the Complainant’s Marks the word ALIEN, which
is the dominant portion. The addition of the term “laptop,” to the dominant portion of
the Complainant’s mark in the disputed
domain name, is the one creating a confusing similarity between Complainant’s Marks
and the disputed domain name because the term “laptop” has an obvious relationship
to Complainant’s business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding
confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum
June 8, 2007) (finding that by adding the term “security” to the complainant’s
VANCE mark, which described the complainant’s business, the respondent “very
significantly increased” the likelihood of confusion with the complainant’s
mark).
Lastly, the Panel
finds that the addition of a gTLD fails to distinguish a disputed domain name
from a registered mark. See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
While Respondent
contends that the <alienlaptop.com> domain name
is comprised of common, descriptive terms and as such cannot be found to be
identical to Complainant’s mark, the Panel considers that such a determination
is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers
only whether Complainant has rights in the mark and whether the disputed domain
name is identical or confusingly similar to Complainant’s mark See Tammy Upwall & Michael Upwall v. Kam Yaghobian, FA 1122960 (Nat. Arb.
Forum
Therefore, the Panel finds that Respondent’s <alienlaptop.com> domain name is confusingly similar to Complainant’s
ALIENWARE marks pursuant to Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show
it does have rights or legitimate interests.
See Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Respondent has failed to make any active use of the <alienlaptop.com> domain name. The Panel finds that this failure to make any
active use of the <alienlaptop.com> domain name is not
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See George
Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum
Respondent contends that it has used the <alienlaptop.com> domain name for the email address jdann@alienlaptop.com
since his registration of the disputed domain name. Respondent contends that this use qualifies
as a bona fide use of the <alienlaptop.com> domain name
under Policy ¶ (a)(ii). The Panel cannot
consider that the Respondent’s use of the disputed domain name by itself establishes
rights and interests in the disputed domain name under Policy ¶ 4(a)(ii). If the use of the disputed domain name by
itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable.
Respondent further argues that he registered the disputed domain name along
with a series of other domain names as part of an eventual plan to start a
software consulting business and gives examples of the registered domain names.
Even though the registration of the some other domain names in the field might
be related with the prospective software consulting business contemplated by
the Respondent, the Panel does not consider it sufficently persuasive evidence
of demonstrable
preparations to use the disputed domain name in connection with 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). The Respondent could have registered the mentioned
domain names as well as for other
activities than 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).
Respondent also argues
that the terms of the <alienlaptop.com> domain name are generic and of common use and
therefore, Complainant does not have an exclusive monopoly on the terms on the
Internet. One may be under a first
impression that alienlaptop presents a certain generic ness. Nevertheless in
these proceedings, the Panel finds that, considering the leader status of the
Complainant as producer of computers
designed for gaming and other graphically intense applications and popularity of ALIENWARE trademarks in the
computer field, the disputed
domain name is one which points directly to the Complainant business and
relates with the Marks it uses.
Therefore, the Panel finds that the Respondent does not have rights or
legitimate interests in the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith.
The Panel agrees with the Complainant that the Respondent knew or ought to know the existence of the Complainant’s Marks. The leader status of the Complainant as a producer of computers designed for gaming and other graphically intense applications under ALIENWARE trademarks and the profession of the Respondent as Software Engineer and Computational Linguist are sufficient arguments to support a finding of the Respondent’s prior knowledge of the Complainant’s Marks.
In addition, since registering the <alienlaptop.com>
domain name on
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienlaptop.com> domain name be TRANSFERRED
from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: December 28, 2009
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