DECISION

 

Dell Inc. v. Suchada Phrasaeng

Claim Number: FA1708001745812

 

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA.  Respondent is Suchada Phrasaeng (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.

 

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 August 23, 2017; the Forum received payment on August 23, 2017.

 

On August 23, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names.  GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2017 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@alienwareindia.com, postmaster@alienwaremena.com, postmaster@alienwarethailand.com, and postmaster@alienwaretw.com.  Also on August 28, 2017, 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 September 20, 2017, 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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Trademark/Service Mark Information:

                       

i.              Dell and its Business

 

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.  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, including India, Thailand, Taiwan, and several countries in the Middle East and North African region (commonly referred to as “MENA”).  More information about Dell can be found at www.dell.com, www.dell.com/in/en, www.dell.com/th/p, and www.dell.com.tw, Dell’s official websites for the U.S., India, Thailand, and Taiwan, respectively.   Dell also maintains official sites specifically intended to serve consumers in countries commonly accepted as being within the MENA region, including its Dell Middle East website - http://www.dell.com/ae/p, Dell Israel website - www.dell.co.il, and Dell Libya website - www.dell.ly.  Moreover, Dell was recently ranked #68 by Brand Finance in its “Global 500 – The Most Valuable Brands of 2017” list.  See (http://brandirectory.com/league_tables/table/global-500-2017).

 

Dell also offers custom computer gaming hardware, including laptops, desktops, and computer peripherals using the mark ALIENWARE, marks incorporating ALIENWARE, and the ALIENWARE logo (the “ALIENWARE Marks”).  Examples of the ALIENWARE Marks are shown in the Complaint.  Dell has used 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 Dell’s official websites, referenced above, or at www.alienware.com or www.alienware.co.in, Dell’s official websites for its ALIENWARE offerings in the U.S. and India, respectively. 

 

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; and 4,304,843; see also India Reg. Nos. 1194187, 1424837, and 1424838; Taiwan Reg. Nos. 01550214 and 01716358; Saudi Arabia Reg. Nos. 143109507, 143109508; and United Arab Emirates Reg. Nos. 144451 and 144452.

 

            FACTUAL AND LEGAL GROUNDS

 

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

 

a.            The disputed domain names are identical or confusingly similar to Complainant’s ALIENWARE Marks.  Specifically, the domain names incorporate the mark ALIENWARE in its entirety.  Respondent merely appends the geographic abbreviations and terms “india,” “mena,” “thailand,” and “tw.”  Each of these terms, when used in combination with the mark ALIENWARE, are likely to be associated by consumers with Complainant, its goods and services, and its offerings in the referenced geographical areas.  The presence of a generic top-level domain (“.com”) is irrelevant in a UDRP 4(a)(i) analysis.[1]

 

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

 

i.          Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.  Rather, the domain names have been used for websites that attempt to deceive consumers into thinking that Respondent or Respondent’s business is, or is affiliated or connected with, or authorized by, Complainant, and are currently being passively held, displaying only the text “Index of /.” 

 

Until recently, Respondent’s websites prominently displayed the mark ALIENWARE at the top of their homepages.Further, Respondent’s home pages included a series of large pictures, featuring the ALIENWARE mark and depictions of Complainant’s ALIENWARE products.  Respondent’s websites also copied many of the design elements of Complainant’s official websites for its ALIENWARE products including utilizing similar headers and footers, fonts, chart layouts for product details, and alternating black and white backgrounds.

 

Many of the links on each of Respondent’s websites redirected visitors to Dell’s official websites.  For instance, upon clicking the “Support” or “Deals” links in the menus of Respondent’s websites or “Privacy Policy” link, near the bottom of the webpages, users were redirected to pages on Complainant’s official www.dell.com website, while consumers who clicked on the “Disclaimer” link were sent to Complainant’s official www.alienware.com website.  In addition, Respondent’s websites contained Facebook and Twitter icons which linked to Complainant’s official social media accounts for its ALIENWARE brand.  The inclusion of links to Complainant’s official websites exacerbated the likelihood that consumers would assume a connection between Respondent and Dell.

 

Recently, however, all of the content was removed from the websites at the subject domain names.  Currently, the domain names are being passively held, displaying only the text “Index of /.”

 

Respondent’s previous use of the domain names to host websites that used Complainant’s marks and imitated Complainant’s official www.alienware.com website was not a bona fide use of the domain names and did not establish rights or legitimate interests on the part of Respondent in the domain names.  Moreover, Respondent’s current passive holding of the subject domain names is evidence that Respondent has no rights or legitimate interests in the domain names.[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 names at issue.

 

v.         Respondent is not and was not making a legitimate noncommercial or fair use of the domain names.

 

c.         Respondent registered and is using the domain names 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 names to host websites which copied Complainant’s logos, featured pictures of its products, were apparently set up to sell Complainant’s products, and provided links to Complainant’s official webpages and social media accounts.

 

ii.         Not only are the disputed domain names 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 names were being used for websites which attempted to deceive consumers into thinking that Respondent or Respondent’s business is, or is associated with, Dell.[4]

 

iii.        By using the disputed domain names for websites 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 Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.

 

iv.        Respondent’s preparation to use confusingly similar domain names 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.[5]

 

v.         Respondent’s passive holding of the domain names is evidence of bad faith.[6]

 

vi.        The fact that Respondent registered at least 4 domain names that contain the ALIENWARE marks is also evidence of bad faith.[7]

 

vii.       Respondent registered the domain names using a privacy service and has used the domain names to display commercial content. As past panels have held, this fact alone creates a rebuttal presumption of bad faith registration and use.[8]

 

viii.      Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or names commonly used to identify Respondent; Respondent has not used the domain names 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 names; and Respondent’s domain names incorporate exactly the 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 transferring or cancelling a domain name:

 

(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.”).

 

Preliminary Issue: Language of Proceeding

The language of the Registration Agreement applicable to the disputed domain names is Japanese.  UDRP Rules 10(b) and (c) are taken into consideration in determining the language of the proceedings to ensure fairness and justice to both parties.  The “spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014).  This Panel finds the following factors relevant in reaching this determination:

1.    the disputed domain name contains an English word;

2.    the respondent registered the disputed domain name in connection with the “.com” generic Top-Level Domain, which primarily targets English-speaking Internet users;

3.    the complainant was unable to communicate efficiently in the language of the registration agreement;

4.    Respondent is in a country which would evidence a familiarity with the English language;

5.    filing of a trademark registration with an entity which evidences an understanding of the English language;

6.    any other evidence (or lack thereof) showing Respondent’s understanding of the English language;

7.    the relative time and expense in enforcing the Japanese language agreement, which would result in prejudice toward either party;

8.    Whether or not the case is contested (if the proceeding was commenced in the language of the registration agreement).

 

See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009), and Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006). In this case, the case is uncontested.  Respondent used English words to pick the domain names in question.  The web sites were in English. 

 

Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant to suggest Respondent is sufficiently conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides the proceeding should be in English.

 

Identical and/or Confusingly Similar

Complainant registered the ALIENWARE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,616,204, registered Sep. 10, 2002). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is in another country.  See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established rights in the ALIENWARE mark.

 

Complainant claims Respondent’s <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com> domain names are confusingly similar to Complainant’s mark because they incorporate the entire ALIENWARE mark and merely append the geographical terms “india,” “mena,” “thailand,” and “tw,” along with the gTLD “.com.” Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.  See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.  The disputed domain names are confusingly similar to the ALIENWARE 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 <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com> domain names.  Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names.  See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Suchada Phrasaeng / Suchada Phrasaeng” as the registrant for all of the domain names. No evidence exists to show Respondent was ever legitimately known by the ALIENWARE mark before the domain names were registered. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant and Complainant has not given Respondent permission to use the ALIENWARE mark. Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).

 

Complainant claims the <alienwarethailand.com> disputed domain name resolves to a website displaying its ALIENWARE mark and contains links to redirect users to its own webpage, presumably for commercial gain. Using a domain name to resolve to a website containing a complainant’s mark and design to offer links redirecting users to a complainant’s own website evidences a lack of rights and legitimate interests. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorized audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off… As such the Panelist  finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶4(a)(ii)”). Complainant provided screenshots for the <alienwarethailand.com> domain name’s resolving webpage, which contains Complainant’s products and links such as “Home,” “Menu,” and “ALIENWARE DESKTOPS >,” among others. Respondent has no rights or legitimate interests in the <alienwarethailand.com> disputed domain name.

 

Complainant claims the disputed domain names currently redirect users to a website that lacks any content, except for the message “Index of /” (essentially a directory listing for the domain names). Failure to make active use of a confusingly similar domain name evidences a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website.  The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶4(c)(iii).”). While Respondent could well make an active use of the domain names without a website, Respondent does not claim that here (because Respondent hasn’t answered the complaint).  Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use with the disputed domain names under Policy ¶¶4(c)(i) and (iii).

 

Respondent registered the disputed domain names using a WHOIS privacy service.  This means Respondent has not publicly associated itself with the domain names, which means Respondent could not have acquired any rights simply by registering the domain names.

 

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

 

Registration and Use in Bad Faith

Complainant claims Respondent registered the disputed domain names in bad faith by registering four domain names which are confusingly similar to Complainant’s ALIENWARE mark. The registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith registration. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶4(b)(ii)). Policy ¶4(b)(ii) provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.”  That does not fit the facts here because Complainant owns the <alienware.com> domain name.  However, it does fit under the general penumbra of Policy ¶4(b). Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b) through its registration of multiple confusingly similar domain names.

 

Complainant claims Respondent registered and uses the <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com> domain names in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering hyperlinks which redirect users to Complainant’s own website. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain is evidence of bad faith under Policy ¶4(b)(iv). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant."). Complainant provides screenshots for the <alienwarethailand.com> domain name’s resolving webpage, which contains products of Complainant and links such as “Home,” “Menu,” and “ALIENWARE DESKTOPS >,” among others. While Complainant did not say so, it appears to this Panel Respondent was trying to pass itself off as Complainant on the <alienwarethailand.com> domain name web site.  Respondent attempted to commercially benefit off Complainant’s mark with the <alienwarethailand.com> domain name, constituting bad faith registration and use under Policy ¶4(b)(iv).

 

Complainant claims Respondent recently took down all content from the resolving webpages for the disputed domain names, save for the message “Index of /,” passively holding the domain names. Inactively holding confusingly similar domain names is evidence of bad faith registration and use under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent registered and uses the disputed domain names in bad faith under the penumbra of Policy ¶4(a)(iii).

 

Complainant claims Respondent had actual knowledge of Complainant’s ALIENWARE mark. Actual knowledge is 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). Respondent must have had actual knowledge of Complainant’s ALIENWARE mark and rights in the mark based on Respondent’s use of the <alienwarethailand.com> disputed domain name to host a website which copied Complainant’s logos, featured pictures of its products, were apparently set up to sell Complainant’s products, and provided links to Complainant’s official webpages and social media accounts. Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).

 

Respondent registered the disputed domain names using a WHOIS 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 finds bad faith registration and use on those grounds.

 

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 <alienwareindia.com>, <alienwaremena.com>, <alienwarethailand.com>, and <alienwaretw.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  Thursday, September 28, 2017

 

 



[1] 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).

 

[2] See State Farm Mut. Auto. Ins. Comp. v. Fred Sotelo, FA1008269 (Forum Jul. 17, 2007) (“Registration alone without demonstrable preparations to use the domain names in connection with 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) is insufficient to establish rights or legitimate interests in a disputed domain name”); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).

 

[3] Even if Respondent sells and provides services for authentic Dell products, Respondent does not have rights or a legitimate interest in the domain name.  See, e.g., Alticor Inc. v. Linecom, Case No. FA1464456 (NAF Nov. 6, 2012) (authorized reseller did not have rights or legitimate interests in the domain name); Broan-Nutone, LLC v. Ready Set Sales, Case No. D2010-0920 (WIPO 2010) (unauthorized reseller of mark owner’s products did not have rights or legitimate interest in domain name, even with use of a disclaimer on the site); Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (April 25, 2001) (transferring name where Respondent reseller prominently displayed the Complainant’s distinctive logo on its website).

 

[4] See, e.g., Dell Inc. v. Vijayan Anbalagan, Case No. FA 1531184 (Forum Dec. 30, 2013) (stating, “Respondent is attempting to pass itself off as Complainant,” transferring dellservicesupport.com).

 

[5] See, e.g., Homer TLC, Inc. v. Above.com Domain Privacy, Case No. FA 1579386 (Forum October 13, 2014) (finding that registration of a domain name that featured Complainant’s well-known mark “together with the use of the domain name to promote competing goods or services in a manner designed to exploit confusion with Complainant and its mark, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy”).

 

[6] See State Farm Mut. Auto. Ins. Comp. v. Fred Sotelo, FA1008269 (Forum Jul. 17, 2007) (concluding that respondent’s passive holding of domain names which simply resolved to blank error pages permitted an inference of registration and use in bad faith); The Caravan Club v. Mrgsale, FA95314 (Forum Aug. 30, 2000) (finding that respondent made no use of the domain name, and that “[p]assive holding of a domain name permits an inference of registration and use in bad faith.”).

 

[7] j2 Global, Inc. dba j2 Global Communications, Inc. v. LCI / Omid Larijani, Case No. FA1509635 (Forum August 16, 2013) (“Respondent’s registration of [multiple domain] names constitutes a pattern of bad faith”); Schwab v. Stanley, Case No. FA95038 (Forum July 15, 2000) (“the registration of numerous domain names [incorporating Complainant’s marks] reveals bad faith,” finding three domain names sufficient).

 

[8] See, e.g., John Dilks v. Privacy Administrator / Anonymize, Inc., Case No. FA 1623023 (Forum July 20, 2015) (stating “[i]n the commercial context, [registering a domain name using a privacy service] raises a rebuttable presumption of bad faith registration and use”).

 

 

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