Dell Inc. v. Navinder Sharma / Alienwareparts
Claim Number: FA1810001812039
Complainant is Dell Inc. ("Complainant"), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is Navinder Sharma / Alienwareparts ("Respondent"), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienwareparts.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2018; the Forum received payment on October 16, 2018.
On October 18, 2018, Tucows Domains Inc. confirmed by email to the Forum that the <alienwareparts.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@alienwareparts.com. Also on October 24, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 November 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant sells computers and related products and services in over 180 countries. Complainant has used the ALIENWARE mark for many years in connection with computers and related products and services, such as warranty, repair, and maintenance services. Complainant owns various U.S. trademark registrations for ALIENWARE and related marks, including a standard character mark registration indicating that the mark was first used in commerce in 1997. Complainant also owns various trademark registrations for DELL and related marks.
The disputed domain name <alienwareparts.com> was registered in the name of a privacy registration service in October 2018. The domain name is being used for a website that prominently displays Complainant's ALIENWARE mark at the top of each page, and includes images of Complainant's products, offering them for sale alongside products of Complainant's competitors. The website also includes Complainant's DELL logo and uses a shade of blue similar to that used on Complainant's own website. The website requests that visitors provide a name and email address. Complainant alleges that this information is sought for Respondent's commercial benefit, and that Respondent's website attempts to deceive consumers into thinking that the site is authorized by or affiliated with Complainant. Complainant states that Respondent is not an authorized reseller of Complainant's products; that Complainant has not licensed or otherwise permitted Respondent to use its ALIENWARE or DELL marks; and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <alienwareparts.com> is confusingly similar to its ALIENWARE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Management, Inc. v. webnet-marketing, inc., FA 95095 (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.").
The disputed domain name <alienwareparts.com> incorporates Complainant's registered ALIENWARE trademark, adding the generic term "parts" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Dell Inc. v. iLap co., ltd, FA 1512326 (Forum Aug. 28, 2013) (finding <alienware‑store.com> confusingly similar to ALIENWARE); Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding <caterpillarparts.com> confusingly similar to CATERPILLAR). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered ALIENWARE mark without authorization, and it is being used for a misleading website that uses Complainant's marks to promote products that include those of Complainant's competitors, and to collect personal information from users. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., United States Postal Service v. Uspsx Account / USpsx, FA 1786048 (Forum June 8, 2018) (finding lack of rights or interests where website mimicked complainant's site to promote competing products, collect personal information from users, or both).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's trademark for a website that mimics Complainant's own site for the apparent purpose of promoting competing products, collecting personal information from users, or both. Such conduct is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See United States Postal Service v. Uspsx Account / USpsx, supra (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienwareparts.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 21, 2018
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