DECISION

 

Dell Inc. v. Protection of Private Person / Privacy Protection

Claim Number: FA1606001681432

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA.  Respondent is Protection of Private Person / Privacy Protection (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alienware-service.info>, registered with Limited Liability Company "Registrar of domain names REG.RU".

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 27, 2016; the Forum received payment on June 27, 2016. The Complaint was submitted in both Russian and English.

 

On June 29, 2016, Limited Liability Company "Registrar of domain names REG.RU" confirmed by e-mail to the Forum that the <alienware-service.info> domain name is registered with Limited Liability Company "Registrar of domain names REG.RU" and that Respondent is the current registrant of the name.  Limited Liability Company "Registrar of domain names REG.RU" has verified that Respondent is bound by the Limited Liability Company "Registrar of domain names REG.RU" 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 June 29, 2016, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of July 19, 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@alienware-service.info.  Also on June 29, 2016, the Russian language 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 July 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and determines the remainder of the proceedings may be conducted in English absent a Response.

 

RELIEF SOUGHT

Complainant requests the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant Dell Inc. (“Complainant” or “Dell”) is a world leader in computers, computer accessories, and other computer-related products and services.  Over the years, Dell has invested heavily in marketing under its marks, devoting hundreds of millions of dollars to advertising and promoting its products and services through many media in many countries.  Dell has used television, radio, magazines, newspapers, and the internet as marketing media.  Dell has been, and continues to be, extremely successful.  Dell sells its products and services in over 180 countries, including Russia.  For several years, Dell has been the world’s largest direct seller of computer systems.  As a consequence of Dell’s marketing and sales success, Dell and its marks have become famous in the United States and many other countries.  More information about Dell can be found at www.dell.com and www.dell.ru, Dell’s official website for Russia.  Moreover, Dell was recently named by Adweek as #15 of the “Most Loved Companies” in the world.  See http://www.adweek.com/news/advertising-branding/check-out-top-100-beloved-brands-last-decade-153026.

           

Alienware Corporation (“Alienware”) is a wholly owned subsidiary of Dell specializing in custom computer gaming hardware, including laptops, desktops, and computer peripherals.  Dell and/or Alienware has used the mark ALIENWARE, marks incorporating ALIENWARE, the ALIENWARE logo (the “ALIENWARE Marks”) for many years in connection with computers and other computer-related products and services, such as warranty, repair, and maintenance services. More information about the ALIENWARE products and services may be found at www.alienware.com, Alienware’s official website.  Dell owns a number of U.S. trademark registrations for its ALIENWARE Marks, many of which are incontestable, as well as registrations in other jurisdictions around the world.  See, e.g., U.S. Reg. Nos. 2,616,204; 2,823,037; 3,250,427; 3,804,387; 3,804,388; 3,874,293; 4,304,843; 4,757,424; 4,846,453; and 4,853,666 and Russian Federation Reg. Nos. 420533 and 422345.

                                     

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds:

 

a.            The disputed domain name is identical or confusingly similar to Complainant’s ALIENWARE Mark.  Specifically, the domain name incorporates the mark ALIENWARE in its entirety, merely appending a hyphen and the generic term “service,” which is highly likely to be associated with Complainant and its ALIENWARE Marks.  The presence of a generic top-level domain (“.info”) is irrelevant in a UDRP 4(a)(i) analysis.^[1]

 

b.         Respondent has no rights or legitimate interests in the domain name. 

 

i.          Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  Rather, the domain name is being used for a website that attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant. 

 

For example, Respondent’s website prominently displays the mark ALIENWARE on its homepage along with the text “Specialized Service Center”,

 

Respondent’s website also prominently features a picture of Complainant’s Alienware product and refers to Respondent in ways that are highly likely to cause visitors to believe that Respondent is affiliated with, or endorsed by, Complainant. For instance, while promoting its competing computer repair and support services Respondent’s website states that “All work performed shall be granted a guarantee Alienware Service^TM. 

 

Representative printouts of the website at the disputed domain name in the original Russian, as well as in English (as translated by Microsoft Translator) are attached.

 

ii.         After falsely creating an association with Complainant as described in paragraph 7(b)(i) above, Respondent is attempting to gather Internet users’ personal information through its “ЗАЯВКА НА РЕМОНТ “ or “Application for Repair” form, which asks visitors to enter their name and telephone number.  Respondent may then commercially benefit by abusing that information and/or by selling that information to third parties.^[2]

 

iii.        Respondent is not an authorized retailer of Complainant’s computer products or services.  In addition, Complainant has not licensed or otherwise permitted Respondent to use its ALIENWARE Marks, or any other mark owned by Complainant.^[3]

iv.        Respondent is not commonly known by the domain name at issue.

 

v.         Respondent is not making a legitimate noncommercial or fair use of the domain name.

 

c.         Respondent registered and is using the domain name in bad faith.

 

i.          It is clear that Respondent knew of Complainant’s ALIENWARE Marks and rights based on Respondent’s use of the disputed domain name to host a website which copies Complainant’s ALIENWARE logo, features pictures of Complainant’s products, and offers repair services for Complainant’s products.

 

ii.         Not only is the disputed domain name highly likely to cause confusion, but Respondent’s bad faith is clearly demonstrated by the evidence explained in paragraph 7(b)(i), above, which shows that the domain name is being used for a website which attempts to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Dell.^[4]

 

iii.        By using the disputed domain name for a website displaying the ALIENWARE Marks Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

iv.        As noted above in Paragraph 7(b)(ii), Respondent is attempting to gather Internet users’ personal information after falsely creating an association with Complainant.  Such facts support a finding of bad faith registration and use of the domain name at issue.^[5]

 

v.         Respondent’s use of a confusingly similar domain name to promote products and services that compete with those of Complainant, as described in Paragraph 7(b)(i) above is further evidence of Respondent’s bad faith.^[6]

 

vi.        Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name; the domain name does not consist of the legal name of or names commonly used to identify Respondent; Respondent has not used the domain name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of the ALIENWARE Marks in a site accessible under the domain name; and Respondent’s domain name incorporates exactly the famous mark ALIENWARE.  See 15 U.S.C. § 1125(d)(1)(B)(i).

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant prove the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(4)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(5)  Respondent has no rights or legitimate interests in respect of the domain name; and

(6)  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.”).

 

Identical and/or Confusingly Similar

Complainant uses the ALIENWARE mark in conjunction with a specific brand of computer Complainant manufactures and sells. Complainant has rights in the ALIENWARE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,616,204, registered Sept. 10, 2002). Registration with the USPTO (or similar governmental authority) is sufficient to establish Policy ¶ 4(a)(i) rights, even if Respondent is located in another country.  See Paisley Park Enters. v. Lawson, FA 384834 (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).  Complainant has rights in the ALIENWARE mark under Policy ¶ 4(a)(i).

 

Complainant claims the <alienware-service.info> domain name is confusingly similar to the ALIENWARE mark. The domain name incorporates Complainant’s mark in full, adds a hyphen, the generic term “service,” and the gTLD “.info.”  A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.  Likewise, the absence of spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶4(a)(i).); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)).  These minor modifications are not sufficient to prevent a finding a disputed domain name is confusingly similar to a mark.  See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).  The disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). 

 

The Panel finds Policy ¶ 4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 claims 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 ALIENWARE mark. Respondent is not licensed by Complainant to use Complainant’s mark. The WHOIS information for the disputed domain name refers to “Protection of Private Person / Privacy Protection” as the registrant of record (indicating the domain name was registered using a privacy service). Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii) due to a lack of contrary evidence in the record. 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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant.  In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).”).

 

Complainant claims 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 Respondent is Complainant, while offering competing services. Respondent’s website copies the look and feel of Complainant’s official <alienware.com> website while featuring images of Complainant’s ALIENWARE products. Such conduct constitutes “passing off.”  Panels have found this kind of conduct constitutes “passing off,” which does not 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 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off 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). This Panel agrees.  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 claims Respondent is attempting to gather Internet users’ personal information by offering a number of ways for Internet users to purportedly contact Complainant.  Using a disputed domain name to phish for users’ personal information is evidence a respondent lacks rights or legitimate interests in the disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (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).”). Respondent lacks rights or legitimate interests in the disputed domain name according to Policy ¶4(a)(ii).

 

Finally, Respondent has acquired no rights to the domain name simply by registering it using a privacy service. Respondent has not publicly associated itself with the domain name.  Therefore, Respondent could not have acquired any rights.

 

The Panel finds Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark and products. Not only is the disputed domain name itself likely to cause confusion, but the manner it is being used is likely to deceive consumers into thinking Respondent is associated with Complainant (or simply is Complainant). Respondent’s disputed domain name prominently display’s Complainant’s trademarked logos. “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 (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.”). Respondent has engaged in bad faith behavior in violation Policy ¶ 4(b)(iv).

 

Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ALIENWARE mark. Respondent’s attempt to pass itself off as Complainant makes it a virtual certainty Respondent knew about Complainant and Complainant’s rights in the ALIENWARE mark at the time of registration. Bluegreen Corp. v. eGo, FA 128793 (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). Respondent had actual knowledge of Complainant’s rights in the ALIENWARE mark at the time of registration.  Respondent registered and uses the <alienware-service.info> domain in bad faith under Policy ¶ 4(a)(iii).

 

Complainant claims Respondent uses the resolving website to engage in a phishing scheme to acquire Internet users’ personal information. Respondent provides Internet users a number of methods for giving their information to Respondent, which is apparently sold to third-parties. Phishing constitutes bad faith under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (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). This Panel finds Respondent uses the <alienware-service.info> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).

 

Finally, Respondent registered the domain name using a privacy service.  In the commercial context, this raises the rebuttable presumption of bad faith registration and use.  Respondent has done nothing to rebut that presumption.  Therefore, the Panel is comfortable finding bad faith registration and use on this ground alone.

 

The Panel finds Policy ¶ 4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <alienware-service.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, August 1, 2016