Dell Inc. v. Clayton Williams c/o Boost Services Llc
Claim Number: FA1607001685901
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas. Respondent is Clayton Williams c/o Boost Services LLC (“Respondent”), Virginia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienware.club>, registered with NameSilo, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2016; the Forum received payment on July 28, 2016.
On August 01, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <alienware.club> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 August 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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.club. Also on August 2, 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.
A timely Response was received and determined to be complete on August 2, 2016.
On August 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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 Dell Inc. is a world leader in computers, computer accessories and other computer-related products and services. For several years, Dell has been the world’s largest direct seller of computer systems, which are sold in over 180 countries.
Dell also offers custom computer gaming hardware, including laptops, desktops, and computer peripherals using the mark ALIENWARE and marks incorporating such term. Dell owns a number of U.S. trademark registrations for its ALIENWARE marks, as well as registrations in other jurisdictions around the world.
Dell encourages ALIENWARE owners and enthusiasts to share their experiences with Dell and other customers through many media, including its ALIENWARE CLUB forum, which has been active since at least August 2010.
Complainant alleges that the disputed domain name, alienware.club, is identical or confusingly similar to Complainant’s ALIENWARE marks. It notes that the domain name incorporates the mark in its entirety and that the inclusion of the top-level domain .club exacerbates the likelihood of confusion as consumers may believe that the top-level domain relates to a group that is authorized by Complainant or is connected or related to Complainant or its ALIENWARE CLUB forum.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant points out that the disputed domain name resolves to a parking page advertising the services of the registrar. Complainant also indicates that it has not licensed or otherwise permitted Respondent to use its ALIENWARE marks and that Respondent is not commonly known by the domain name at issue. Complainant also contends that Respondent is not making a legitimate noncommercial or fair use of the domain name.
With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondent was aware of Complainant’s ALIENWARE marks at the time he registered the disputed domain name, that Respondent’s passive holding of the domain name is evidence of bad faith, and that Respondent does not own a trademark or other intellectual property rights in the disputed domain name and has not used the domain name in connection with the bona fide offering of any goods or services.
B. Respondent
Respondent, in his Response, maintains that he “only wanted to use Alienware.club to create a club for me and my friends to connect Alienware LAN Parties, use to communicate about issues with our Alienware computers something like a forum but faster like a chatroom, and have ease of access to all new products in the Alienware world because I don’t have much capital and felt that this was the most affordable way because we all have Alienware computers and we associate with each other for help because it’s hard to get the help we need with customer services seem as they never played with Alienware computers before.” Respondent indicates that he now understands that he cannot use the alienware.club domain name and must release the domain now, “so I would like to know how I can cancel or transfer domain to Dell Inc and be removed from case.”
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the 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.
The Panel determines that the disputed domain name, alienware.club, is identical or confusingly similar to the ALIENWARE mark. As noted by Complainant, the disputed domain name incorporates the mark in its entirety. The addition of the generic top-level domain .club does not dispel the Panel’s determination on this element of the Policy.
The Panel finds that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that any of the circumstances set forth in paragraph 4(c) of the Policy is present; that is, there is no evidence that Respondent has used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the domain name, or that Respondent is making a noncommercial or fair use of the domain name. Rather, the evidence indicates that the domain name resolves to a parking page which indicates, in part, that the domain name “may be for sale.” Prior panels have found that use of a domain name to host a parking page does not give rise to rights under the Policy. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007).
The Panel concludes that the disputed domain name was registered and is being used in bad faith. It is clear from Respondent’s response that he was aware of Complainant’s ALIENWARE products at the time he registered the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration). It is also clear that Respondent is engaged in passive holding of the domain name. This is further evidence of the requisite bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that respondent’s failure to make active use of its domain name in the three months after registration indicated that respondent registered the disputed domain name in bad faith). The Panel also notes that Complainant sponsors an ALIENWARE CLUB forum and, thus, that consumers may believe that the owner of the alienware.club domain name is somehow connected with Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienware.club> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: August 15, 2016
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