Alienware Corporation v. James Dann
Claim Number: FA0910001290045
Complainant is Alienware Corporation (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alienlaptop.com>, registered with 1 & 1 Internet Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
Additional Submission from the Complainant was received on December 14, 2009. The Respondent submitted also to NAF a Reply to the Complainant’s Additional Written Statement pursuant to NAF Supplemental Rule 7 (c) on December 21, 2009. Both Submissions are considered to be submitted in a timely manner according to NAF Supplemental Rule 7.
On December 15, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that:
· It is a wholly-owned subsidiary of Dell, Inc.
the owner of the distinctive and well known ALIENWARE trademarks (the
“Marks”). Complainant commenced use of
its Marks in 1997 and has continually used the Marks in connection with its
products since that time in the
· Complainant generates much of its revenues from sales over the Internet and Complainant’s web site, “alienware.com”, appears in a number of different languages.
· It uses and has registered other domain names that contain its ALIENWARE marks, including “alienware.de”, “alienware.fr” and “alienware.co.uk”. Internet users who type or search for these various domain names expect to and do arrive at Complainant’s website.
· Its Marks are aggressively protected through registration and international enforcement. Amongst others, Complainant owns United States Federal Trademark Registrations for the Marks as follows:
Goods and Services
IC 009. US 021 023 026 036 038. G & S: COMPUTERS. FIRST USE: 19970115. FIRST USE IN COMMERCE: 19970115
IC 042. US 100 101. G & S: COMPUTER INSTALLATION AND SET-UP SERVICES. FIRST USE: 19970115. FIRST USE IN COMMERCE: 19970115
September 10, 2002
IC 036. US 100 101 102. G & S: Financial services, namely, financing the purchase of computers, facilitating and arranging for the financing of computers, lease-purchase financing. FIRST USE: 20070715. FIRST USE IN COMMERCE: 20070715
April 15, 2008
· Respondent has no rights or legitimate interest in the disputed domain name as
- it is not commonly known by the name “ALIENWARE” or “AlienLapTop” nor does Respondent operate a business or other organization under these marks or names.
- Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain,
- Respondent is using the disputed domain name to confuse and misleadingly divert consumers, with constructive notice of Complainant’s rights in the Mark through Complainant’s Federal trademark applications and registrations,
- Searchers for Complainant’s goods and services branded with its Marks, who typed in the disputed domain name, would be confused and think they were attempting to visit a site of the Complainant,
- Respondent’s use of the disputed domain name has diluted the Marks, by diminishing consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a domain name which does not resolve to any web content. Respondent’s use creates the very real risk that Complainant’s trademarks are being associated with a non-resolving website over which Complainant has no quality control.
· Respondent registered and is using the disputed domain name in bad faith under Policy since Respondent cannot demonstrate that it has made a bona fide use of, and has a legitimate interest in the disputed domain name or the Marks under Policy.
To the Complainant’s contentions, in his Response the Respondent replies that:
· The Complainant however does not own a trademark for the mark ALIENLAPTOP.
· The Complainant does not own a trademark for the mark “ALIEN”.
· The term “ALIEN” is generic and there is a natural and historic semantic relatedness between the term “ALIEN” and technology-related devices and services, as evidenced by the popularity of pairing the term “ALIEN” with various technological wares.
· The disputed domain name is entirely composed of common, descriptive terms and as such can not be found to be identical to the Complainant's mark
· There is no confusing similarity between the term “ALIENWARE” and “ALIENLAPTOP”.
· He finds the claim of intentionally trying to “confuse, misleadingly divert consumers, or to tarnish the Marks” unfounded as:
- the term “ALIEN” is generic and the Complainant does not own a registered trademark for “ALIENLAPTOP”.
- Dell Inc, of which the Complainant is a wholly owned subsidiary, owns the domain name <ALIENCOMPUTER.COM>. which takes the user to an empty web page.
· The Respondent aspires to both establish an independent software consultancy as well as develop out his various web properties using his advanced skills as both a Software Engineer and as a Computational Linguist. In this sense, the Respondent has registered other domain names related to software consultancy, and a number of domains in line with his intentions to build “semantic mash-ups” of freely available internet knowledge resources.
· Although the Respondent has not produced a demonstrable website with his domain <alienlaptop.com>, this does not amount to bad faith registration.
· The Complainant has failed to demonstrate “use in bad faith”. The arguments used to support a claim of “bad faith” are not applicable to the current case and therefore there is no “bad faith”.
· Complainant's delay for over 20 months in bringing the Complaint is evidence of the bona fide nature of the Respondent's use of the terms and that the Complainant did not have a problem with the disputed domain name.
C. Additional Submissions
By the Additional Written Statement the Complainant further asserts:
· The <alienlaptop.com> domain incorporates the most dominant and distinctive portion of Complainant’s trademarks and corporate name – the word “ALIEN” which creates a strong likelihood of confusion between Complainant’s marks and the <alienlaptop.com> domain.
· Respondent engaged in bad faith, with regard to the <alienlaptop.com> domain, by failing to make even the most cursory inquiry into whether this name, or any others he owns, is confusingly similar to a trademark owned by another, despite his experience with domain names and his profession within the computer industry,
· Respondent’s bad faith my also be demonstrated by his request for an extraordinary sum of money in exchange for the transfer of the <alienlaptop.com> domain. In this sense the Complainant refers to the conversation referenced in Mr. Lodico's affidavit occurred between the Respondent and Mr. Lodico.
· Use of the disputed domain as an email address, cannot be viewed as providing Respondent protection under 4(c)(i) as legitimate use.
· In the UDRP forum laches are not a recognized defense and has no bearing on Respondent’s bad faith.
By its Reply to the Complainant’s Additional Written Statement the Respondent contends that:
· On page 2, the Complainant attempts to amend the original Complaint by citing a case that was pending when the current complaint was initially registered, in clear violation of UDRP Supplemental Rule 7(f).
· The Respondent does not play video games nor does he write software related to video games nor is the Respondent a member of the video game community. The Respondent is a highly specialized software engineer and computational linguist with no interest in video games and therefore he could have not known about the Complainant’s Marks
· The Complainant’s assertion regarding the Respondent’s bad faith demonstrated by his request for an extraordinary sum of money in exchange for the transfer of the disputed domain name, is not founded. Mr. Lodico's attempt to acquire the domain “in exchange for a settlement payment” after receiving the Respondent's truthful response demonstrates implicit acknowledgment of both the Respondent's absence of bad faith and the Respondent's bona fide right to the domain.
· The Respondent does not assert that the Complainant “slept on his rights”, but simply that the Complainant's interest in the search terms “alien laptop” has changed over the last 20 months and that the current dispute is related to a change in the consumer behavior that has occurred between the time the domain name was registered 20 months ago and the time that the Complainant first contacted the Respondent.
Complainant, Alienware Corporation, is a leader in producing computers designed for gaming and other graphically intense applications. Complainant owns two trademark registrations for the ALIENWARE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 2,616,204 issued September 10, 2002).
Respondent registered the <alienlaptop.com> domain name on April 4, 2008. Respondent’s disputed domain name does not resolve to any web content.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 finds that
the Complainant has established rights in the ALIENWARE mark (Reg. No.
Respondent’s <alienlaptop.com> domain name is composed of (1) the word “alien,” which is the first and dominant part of Complainant’s ALIENWARE mark, (2) the generic word “laptop,” and (3) the generic top-level domain (“gTLD”) “.com.”
In the case Alienware Corporation v. Optimize My Site, FA0910001290038, (Nat. Arb. Forum December 2, 2009), quoted by the Complainant in its Additional Written Statement, the Panel found that domain name “alienlaptops.com” is confusingly similar to Complainant’s ALIENWARE mark pursuant to Policy ¶ 4(a)(i). The Respondent has requested in the Reply to the Complainant’s Additional Written Statement, that the indication of this case is to be considered an amendment of the Complaint and therefore disregarded under NAF Supplementary Rule 7 (f). The Panel finds that the quotation of a case, even decided after the filling of the Complaint cannot be considered amendment of the Complaint as it does not in any way change the arguments of the Complainant and is publicly available.
This Panel, as the one in the case just quoted, considers that the disputed domain name “alienlaptop.com” is also confusingly similar with the Complainant Marks. The disputed domain name contains a part of the Complainant’s Marks the word ALIEN, which is the dominant portion. The addition of the term “laptop,” to the dominant portion of the Complainant’s mark in the disputed domain name, is the one creating a confusing similarity between Complainant’s Marks and the disputed domain name because the term “laptop” has an obvious relationship to Complainant’s business. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
Lastly, the Panel
finds that the addition of a gTLD fails to distinguish a disputed domain name
from a registered mark. See Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
contends that the <alienlaptop.com> domain name
is comprised of common, descriptive terms and as such cannot be found to be
identical to Complainant’s mark, the Panel considers that such a determination
is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers
only whether Complainant has rights in the mark and whether the disputed domain
name is identical or confusingly similar to Complainant’s mark See Tammy Upwall & Michael Upwall v. Kam Yaghobian, FA 1122960 (Nat. Arb.
Therefore, the Panel finds that Respondent’s <alienlaptop.com> domain name is confusingly similar to Complainant’s ALIENWARE marks pursuant to Policy ¶ 4(a)(i).
The 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.
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Respondent has failed to make any active use of the <alienlaptop.com> domain name. The Panel finds that this failure to make any
active use of the <alienlaptop.com> domain name is not
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See George
Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum
Respondent contends that it has used the <alienlaptop.com> domain name for the email address email@example.com since his registration of the disputed domain name. Respondent contends that this use qualifies as a bona fide use of the <alienlaptop.com> domain name under Policy ¶ (a)(ii). The Panel cannot consider that the Respondent’s use of the disputed domain name by itself establishes rights and interests in the disputed domain name under Policy ¶ 4(a)(ii). If the use of the disputed domain name by itself as an email address for the Respondent amounted to bona fide use, UDRP would become easily avoidable.
Respondent further argues that he registered the disputed domain name along with a series of other domain names as part of an eventual plan to start a software consulting business and gives examples of the registered domain names. Even though the registration of the some other domain names in the field might be related with the prospective software consulting business contemplated by the Respondent, the Panel does not consider it sufficently persuasive evidence of demonstrable preparations to use the disputed domain name in connection with 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). The Respondent could have registered the mentioned domain names as well as for other activities than 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).
Respondent also argues that the terms of the <alienlaptop.com> domain name are generic and of common use and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. One may be under a first impression that alienlaptop presents a certain generic ness. Nevertheless in these proceedings, the Panel finds that, considering the leader status of the Complainant as producer of computers designed for gaming and other graphically intense applications and popularity of ALIENWARE trademarks in the computer field, the disputed domain name is one which points directly to the Complainant business and relates with the Marks it uses.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith.
The Panel agrees with the Complainant that the Respondent knew or ought to know the existence of the Complainant’s Marks. The leader status of the Complainant as a producer of computers designed for gaming and other graphically intense applications under ALIENWARE trademarks and the profession of the Respondent as Software Engineer and Computational Linguist are sufficient arguments to support a finding of the Respondent’s prior knowledge of the Complainant’s Marks.
In addition, since registering the <alienlaptop.com>
domain name on
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alienlaptop.com> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka Panelist
Dated: December 28, 2009
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