Dell Inc. v. Brian Lindquist
Claim Number: FA1603001666179
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Brian Lindquist (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dellalienware1010.com>, registered with Register.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 17, 2016.
On March 18, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <dellalienware1010.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 March 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2016 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@dellalienware1010.com. Also on March 18, 2016, the 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 April 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant:
1. Complainant is a world leader in computers, computer accessories, and other computer-related products and services. Complainant uses its ALIENWARE mark in connection with custom computer gaming hardware, including laptops, desktops, and computer peripherals. Complainant has rights in the DELL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,860,272, registered on October 25, 1994). Complainant also has rights in the ALIENWARE mark through registration with the USPTO (e.g., Reg. No. 2,616,204, registered on September 10, 2002). The <dellalienware1010.com> domain name is confusingly similar to the DELL and ALIENWARE marks. The domain name incorporates Complainant’s marks in full, inserts the generic number “1010,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s DELL and/or ALIENWARE marks. Respondent is not licensed or permitted by Complainant to use Complainant’s mark. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that attempts to deceive consumers into thinking that Respondent is Complainant. Respondent is attempting to gather Internet users’ personal information at the “Contact Us” section of Respondent’s website. Further, Respondent purports to sell Complainant’s products through the disputed domain name.
3. Respondent uses the resolving website to disrupt Complainant’s legitimate business purpose under Policy ¶ 4(b)(iii) and capitalize on the confusion of Internet users as to Respondent’s identity in order to profit commercially as per Policy ¶ 4(b)(iv). Respondent used the disputed domain name in order to pass itself off as Complainant. Respondent registered the <dellalienware1010.com> domain name with actual and/or constructive knowledge in Complainant’s rights in the DELL and ALIENWARE marks. Respondent uses the disputed domain name in order to engage in phishing, which constitutes bad faith.
B. Respondent:
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <dellalienware1010.com> domain name is confusingly similar to Complainant’s ALIENWARE and DELL marks.
2. Respondent does not have any rights or legitimate interests in the <dellalienware1010.com> domain name.
3. Respondent registered or used the <dellalienware1010.com> domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the DELL mark in conjunction with its development and sale of computers and computer parts. Complainant uses the ALIENWARE mark in conjunction with a specific brand of computer that Complainant manufactures and sells. Complainant alleges it has rights in the DELL mark through its registration with the USPTO (e.g., Reg. No. 1,860,272, registered on October 25, 1994). See Compl., at Attached Ex. D (USPTO registrations for the DELL mark). Complainant also alleges it has rights in the ALIENWARE mark through its registration with the USPTO (e.g., Reg. No. 2,616,204, registered on September 10, 2002). See Compl., at Attached Ex. D (USPTO registrations for the ALIENWARE mark). Panels have held that registration with the USPTO is sufficient to establish Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has rights in the DELL and ALIENWARE marks under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <dellalienware1010.com> domain name is confusingly similar to Complainant’s DELL and ALIENWARE marks because it is a combination of the marks with the mere additions of the number “1010” and the gTLD “.com.” Panels have found that when a mark is combined with another mark in the creation of a domain name, the resulting domain name is confusingly similar to those marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Panels have also determined that neither the addition of numbers nor the gTLD “.com” serve to adequately distinguish a respondent’s domain from a complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <dellalienware1010.com> domain is confusingly similar to Complainant’s DELL and ALIENWARE marks pursuant to Policy ¶ 4(a)(i).
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 Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name nor by Complainant’s DELL and/or ALIENWARE marks. Complainant urges that Respondent is not licensed or permitted by Complainant to use Complainant’s mark. Further, the Panel notes that the WHOIS information for the disputed domain name refers to “Brian Lindquist” as the registrant of record. Lacking any evidence from Respondent that might negate these allegations, the Panel finds that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Further, Complainant alleges that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent’s disputed domain name resolves to a website that attempts to deceive consumers into thinking that Respondent is Complainant. See Compl., at Attached Ex. E. According to Complainant, Respondent’s website copies the look and feel of Complainant’s official <alienware.com> website while featuring images of Complainant’s ALIENWARE products. See Compl., at Ex. C. Complainant asserts that the site uses colors and fonts similar, if not identical, to those used by Complainant on its official website. Panels have found that this conduct constitutes “passing off,” which fails to rise to the level of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent’s attempt to pass itself off as Complainant is not 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).
Complainant contends that Respondent is using the disputed domain name to sell Complainant’s products. The selling of a complainant’s goods by a respondent has been held to be a competing use, and therefore, not a bona fide offering of goods or noncommercial or fair use. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
Complainant claims that Respondent is attempting to gather Internet users’ personal information at the “Contact Us” section of Respondent’s website. Complainant explains that Internet users are invited to enter their e-mail addresses and other contact information. See Compl., at Attached Ex. F. Prior panels have found that use of a disputed domain name to phish for users’ personal information is evidence that a respondent lacks rights or legitimate interests in the disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii).
Complainant argues that Respondent is in violation of Policy ¶ 4(b)(iii) bad faith because Respondent’s efforts to sell Complainant’s products disrupts Complainant’s own sales. The Panel recalls Complainant’s Ex. E showing Respondent’s resolving page, which promotes Complainant’s products. In Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005), the panel reasoned, “The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).” Here, the Panel agrees that Respondent’s operation of a website offering the sale and servicing of tires is done in competition with Complainant and amounts to bad faith disruption under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant explains that not only is the disputed domain name itself highly likely to cause confusion, but is being purposefully used to deceive consumers into thinking that Respondent is associated with Complainant. The Panel is reminded that Respondent’s disputed domain name allegedly copies the look and feel, fonts, images, and logos of Complainant’s official website as well Respondent’s purported offering of Complainant’s products for sale. See Compl., at Attached Ex. E. Past panels have found that “passing off” activities, for commercial gain, constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). This Panel finds that Respondent has engaged in bad faith behavior in violation Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the DELL and ALIENWARE marks. Complainant argues that because of Respondent’s attempt to pass itself off as Complainant, as described above, it would be impossible for Respondent to not know of Complainant’s rights in the DELL and ALIENWARE marks at the time of registration. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the DELL and ALIENWARE marks at the time of registration, and finds that Respondent registered the <dellalienware1010.com> domain in bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent uses the resolving website to engage in a phishing scheme to acquire Internet users’ personal information. Respondent allegedly provides Internet users with an “Email Contact” form, which invites Internet users to divulge personal information on the belief that they are giving this information to Complainant in order to receive information. Past panels have found phishing to constitute bad faith under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel finds that Respondent uses the <dellalienware1010.com> domain to engage in phishing, and finds that Respondent registered and uses the domain name in bad faith under 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 <dellalienware1010.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 25, 2016
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