Dell Inc. v. Wu Yu
Claim Number: FA2202001983598
Complainant is Dell Inc. (“Complainant”), represented by Kimberly Arriola, Virginia, USA. Respondent is Wu Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienwaredell.com>, registered with Dynadot, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2022; the Forum received payment on February 8, 2022.
On February 8, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <alienwaredell.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2022 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@alienwaredell.com. Also on February 9, 2022, 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 March 3, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the DELL and ALIENWARE marks established by its ownership of the trademark and service mark registrations described below and its extensive use of the marks in its business in computers, computer accessories, and other computer-related and technology products and services which it sells in over 180 countries, generating $94.2 billion in revenue in fiscal year 2021 and being listed as #28 on the Fortune 500.
Complainant submits that the disputed domain name <alienwaredell.com> is confusingly similar to its DELL and ALIENWARE marks as it incorporates both marks in their entirety, adding that the presence of the generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant in an analysis for Policy ¶ 4(a)(i). Citing Trip Network Inc. v. Alviera, Case No. FA914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name, and Complainant has not licensed or otherwise permitted Respondent to use its DELL or ALIENWARE marks, or any other mark owned by Complainant.
Referring to screen captures of the web page to which the disputed domain name resolves, which have been annexed to the Complaint, Complaint submits that they illustrate that Respondent is using the disputed domain name to forward visitors to different websites, some that are associated with malicious software.
Complainant submits that when the disputed domain name is entered into the Microsoft Edge browser, the internet user is forwarded to different websites that inform the user to download software to their computer. In one instance, as evidenced by an exhibited screen capture, when Complainant has attempted to visit the disputed domain name Complainant was redirected to a webpage where the Complainant was told that its “McAfee Security Subscription have (sic) expired” in a pop-up window with the option to install on another device.
Complainant contends that, given the incorporation of Complainant’s famous DELL marks into the disputed domain name, consumers visiting the website to which it resolves, may presume that clicking the “OK” button in the pop-up window and installing the advertised software is safe and required to reach their intended destination. Complainant states that it has not clicked the “OK” button as it suspected that it would cause unwanted, and perhaps malicious, software to be installed. This suspicion is supported by the fact that the address of the website to which the link redirects does not appear to be affiliated with McAfee. (The Panel notes that Complainant has provided this address in the Complaint, but does not repeat it in this decision for security reasons).
Complainant submits that it therefore appears that Respondent is using the disputed domain name in a scheme designed to trick Internet users into installing the malicious software posing as MacAfee. Complainant asserts that such use of the disputed domain name to distribute malicious software online is evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
Complainant adds that when the disputed domain name was entered into a Google Chrome browser the Internet user was forwarded to different websites, seemingly at random. Complainant provides examples of the destination websites which include a parking page and the websites of well-known third-party businesses. Complaint states that it suspects and submits that Respondent may receive a commission for forwarding traffic to certain websites in this manner.
Complainant contends that the evidence adduced shows therefore, that Respondent is not making a legitimate noncommercial or fair use of the domain name.
Complainant next alleges that Respondent registered and is using the disputed domain name in bad faith, arguing that registrant of the disputed domain name was aware of Complainant’s marks because the disputed domain name consists of both Complaint’s DELL and ALIENWARE marks.
Complainant adds that Respondent’s use of the disputed domain name to forward visitors to a website that attempts to install malware on Internet user’s devices, and also forwards users to other websites for which Respondent presumably receives a commission constitutes bad faith use for the purposes of the Policy.
Additionally, Complainant contends that bad faith use is evidenced by Respondent’s apparent use of the disputed domain name to distribute malicious software and argues that Respondent’s use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent’s bad faith.
In conclusion, Complainant submits that Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the disputed domain name; the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the disputed domain name in connection with a bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the disputed domain name; and Respondent’s domain name incorporates exactly Complainant’s famous DELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the well-known manufacturer and supplier of computers and related goods and services on which it uses the DELL trademark and service mark.
Complainant provided evidence of its ownership of the following United States registrations:
· United States of America registered trademark DELL (stylized), registration number 1,860,272, registered on the Principal Register on October 25,1994 for goods in international class 9;
· United States of America registered service mark DELL, registration number 2,236, 785, registered on the Principal Register on April 6, 1999 for services in international class 40;
· United States of America registered trademark DELL, registration number 2,794,705, registered on the Principal Register on December 16, 2003 for goods in international class 9;
· United States of America registered trade mark DELL, registration number 2,806,769, registered on the Principal Register on January 20, 2004 for services in international class 37;
· United States of America registered trade mark DELL, registration number 2,806,770, registered on the Principal Register on January 20, 2004 for services in international class 42;
· United States of America registered trademark DELL, registration number 2,808,852, registered on the Principal Register on January 27, 2004 for goods in international class 2;
· United States of America registered trademark and service mark DELL (stylized), registration number 3,215,023 registered on the Principal Register on March 6,2007 for goods and services in international classes 2, 9, 36, 37, 40 and 42.
Complainant also own and uses the ALIENWARE mark and has provided evidence of its ownership of the following registrations:
· United States of America registered trademark and service mark ALIENWARE, registration number 2,616,204, registered on the Principal Register on September 10, 2002 for goods and services in international classes 2, 9, 36, 37, 40 and 42;
· United States of America registered trademark and service mark ALIENWARE and device, registration number 2,823,037, registered on the Principal Register on March 16, 2004 for goods and services in international classes 16, 25 and 35;
· United States of America registered trademark ALIENWARE TACTX, registration number 3.804,387, registered on the Principal Register on June 15, 2010 for goods in international class 9;
· United States of America registered trademark ALIENWARE and device, registration number 4,952,160, registered on the Principal Register on May 3, 2016 for goods and services in international class 25.
Additionally Complainant has an established Internet presence and maintains its official website at <www.dell.com>.
The disputed domain name <alienwaredell.com> was registered on September 20, 2021 and resolves to numerous websites more particularly described below and include a parking page and third party websites from which Respondent presumably receives commercial gain as well as a web location which displays a pop-up warning that a virus protection service has expired and suspiciously invites Internet users to click through to a download.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details for the disputed domain name.
The Registrar has confirmed that Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence that rights in the DELL and ALIENWARE marks, established by its ownership of the United States trademark registrations described above and extensive use of the marks in its computers and technology business marketing products in in over 180 countries across the world. generating $94.2 billion in revenue in Fiscal Year 2021 and being listed as #28 on the Fortune 500.
The disputed domain name <alienwaredell.com> consists of Complainant’s ALIENWARE and DELL marks in their entirety, with no other element, in combination with the generic Top Level Domain (“gTLD”) extension <.com>.
In the circumstances of this case, this Panel accepts Complainant’s submission that the gTLD extension <.com> is irrelevant in an analysis for paragraph 4(a)(i) of the Policy, as it would be understood by Internet users to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the ALIENWARE and DELL marks in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Complainant has not licensed or otherwise permitted Respondent to use its DELL or ALIENWARE marks, or any other mark owned by Complainant;
· the screen capture of the web page to which the disputed domain name resolves, which has been annexed to the Complaint, illustrates that Respondent is using the disputed domain name to redirect visitors;
· some of the web locations to which the disputed domain name redirects Internet traffic appear to be associated with malicious software because when Complainant, using the Microsoft Edge browser, made a search for a website associated with the disputed domain name, it was redirected to a webpage where the Complainant was told that its “McAfee Security Subscription have (sic) expired” in a pop-up window with the option to install on another device;
· given the incorporation of Complainant’s famous DELL mark into the disputed domain name, consumers visiting Respondent’s website at <alienwaredell.com> may presume that clicking the “OK” button in the pop-up window, and installing the advertised software, is safe and required step to reach their intended destination, risking downloading malware;
· when the disputed domain name was entered into a Google Chrome browser the internet user is forwarded to different, third-party websites, seemingly at random. Complainant provides examples as including a parking page and well-known third party websites from which Respondent may be generating pay-per-click revenue;
· such uses do not constitute legitimate noncommercial or fair use of the disputed domain name;
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name consists of two distinctive trademarks owned by Complainant. It is beyond implausible that anyone would have chosen and registered a domain name that is composed of these two elements DELL and ALIENWARE in combination, without knowledge of Complainant and that Complainant owned both of these marks.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention creating an impression of an association between the disputed domain name and Complainant and targeting and taking predatory advantage of Complainant’s business, reputation and goodwill in the DELL and ALIENWARE marks. There can be no other plausible explanation.
The evidence shows that Respondent is using the disputed domain name for a number of purposes including to resolve to a parking page, to resolve to a page that misinforms the visitor that a virus protection service has expired, and links to third party websites from which it is plausible that Respondent is receiving pay-per-click revenue. There is an unproven but realistic concern that Respondent may be using the disputed domain as a source of malware. These various uses have the common character that in each case Respondent is taking predatory advantage of Complainant’s goodwill in the DELL and ALIENWARE marks in the disputed domain name to attract and misdirect Internet traffic intended for Complainant.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of web locations to which the disputed domain name resolves, constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs and has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <alienwaredell.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 7, 2022
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