Dell Inc. v. Simao Fernandes / BurnoutParadiseCommunity
Claim Number: FA1605001673659
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Simao Fernandes / BurnoutParadiseCommunity (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienwaregiveaway.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2016; the Forum received payment on May 6, 2016.
On May 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alienwaregiveaway.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 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@alienwaregiveaway.com. Also on May 6, 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 June 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Dell Inc., is a world leader in computer and computer accessories. Complainant has rights in the ALIENWARE mark through wholly owned subsidiary Alienware Corporation who registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,616,204, registered Sept. 10, 2002). Respondent’s domain <alienwaregiveaway.com> is identical or confusingly similar to the ALIENWARE mark as it incorporates the entire mark and merely differs through addition of the generic top-level domain “.com” and the generic term “giveaway.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized to use the ALIENWARE mark in any manner, nor has Respondent been commonly known by the disputed domain name. Further, Respondent’s use of the domain, to create an association with Complainant and attempt to solicit personal information from unsuspecting Internet users, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered or is using the disputed domain name in bad faith. Respondent’s attempt to illegitimately receive personal information from Internet users through purporting to giveaway Complainant’s products constitutes bad faith. Respondent also knew of the ALIENWARE marks prior to registration and thus registered the domain name in bad faith.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that Respondent submitted an email to Forum indicating a willingness to “do what needs to be done,” but has not explicitly consented to transfer the domain name. The Panel also notes that the disputed domain name was created on February 18, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 (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 asserts rights in the ALIENWARE mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,616,204, registered Sept. 10, 2002). Panels routinely find, and this Panel finds, that registration of a mark with the USPTO is sufficient to demonstrate rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant next claims that Respondent’s domain is identical or confusingly similar to the ALIENWARE mark. The domain, <alienwaregiveaway.com>, includes the entire ALIENWARE mark and merely adds the gTLD “.com,” and the generic term “giveaway.” Panels have consistently concluded that the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Previous panels have also concluded that generic terms do not distinguish a domain from a mark when the mark is the prominent part of the domain. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel is of the view that the term ‘giveaway’ of the disputed domain name is descriptive and non-distinctive. Taken together, this Panel finds that Respondent’s <alienwaregiveaway.com> domain is confusingly similar to the ALIENWARE mark under 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 (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 (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 argues that Respondent is not authorized to use the ALIENWARE mark in any manner, nor has Respondent been commonly known by the disputed domain name. WHOIS information associated with the disputed domain identifies Respondent as, “Simao Fernandes,” of the organization, “BurnoutParadiseCommunity.” Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). This Panel concludes that the Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s use of the domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant believes that Respondent uses the domain to solicit personal information through creating a false association with Complainant. Respondent’s website claims that it is giving away Complainant’s products and is, “supported by Alienware.” Respondent’s website prompts users to enter personal information such as a user’s full name, email, phone number, address, and country. Panels have held that using the possibility of payment through goods to encourage users to enter personal information is not bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Accordingly, this Panel finds that Respondent’s use is not within the permitted uses under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims that Respondent has demonstrated bad faith through attempting to confuse and attract Internet users for commercial gain. Again, Respondent’s domain holds itself out as a website that is “supported by” Complainant and gives away Complainant’s products to users that enter personal information and complete a survey. Panels have found bad faith on the part of respondents who use another’s mark without permission for the purposes of promoting surveys. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). The Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of Respondent’s extensive use of Complainant's ALIENWARE marks and logos at the disputed domain, it is inconceivable that Respondent could have registered the <alienwaregiveaway.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel notes that UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers from the Respondent’s extensive use of Complainant's ALIENWARE marks and logos at the disputed domain coupled with the well-known status of Complainant’s mark, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienwaregiveaway.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 9, 2016
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