DECISION

 

Dell Inc. v. Privacy protection service - whoisproxy.ru

Claim Number: FA1805001785970

PARTIES

Complainant is Dell Inc. (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA.  Respondent is Privacy protection service - whoisproxy.ru (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <service-alienware.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 10, 2018; the Forum received payment on May 10, 2018. The Complaint was received in both Russian and English

 

On May 14, 2018, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <service-alienware.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 May 21, 2018, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of June 11, 2018 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@service-alienware.com.  Also on May 21, 2018, 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 June 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

Preliminary Issue:  Language of the Proceedings

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, Dell Inc., is a world leader in computers and computer-related products. Complainant has rights in the ALIENWARE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,616,204, registered Sep. 10, 2002) See Compl. Ex. D. Respondent’s <service-alienware.com> is identical or confusingly similar to Complainant’s mark as Respondent merely adds a hyphen, the descriptive term “service” and the “.com” generic top level domain (“gTLD”) to Complainant’s mark.

2.    Respondent does not have any rights or legitimate interests in the <service-alienware.com> domain name. Respondent is not permitted or licensed to use Complainant’s ALIENWARE mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a third party website which offers services that compete directly with Complainant. In addition, Respondent attempts to gather Internet users’ personal information as part of a phishing scheme.

3.    Respondent has registered and is using the domain names in bad faith. Respondent  attempts to attract, for commercial gain, Internet users to Respondent’s website which redirects users to third party websites that offer competing goods and services. In addition, Respondent uses the disputed domain name to conduct a phishing scheme. Further, Respondent uses a privacy service to conceal its identity. Finally, Respondent registered the <service-alienware.com> domain name with actual knowledge of Complainant’s rights in the ALIENWARE mark.

 

B.   Respondent:

1.      Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <service-alienware.com> domain name is confusingly similar to Complainant’s ALIENWARE mark.

2.    Respondent does not have any rights or legitimate interests in the <service-alienware.com> domain name.

3.    Respondent registered or used the <service-alienware.com> domain name 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 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 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 claims rights in the ALIENWARE mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copies of its USPTO registrations for the ALIENWARE mark (e.g., Reg. No. 2,616,204, registered Sep. 10, 2002) See Compl. Ex. D. Therefore, the Panel finds that Complainant has rights in the ALIENWARE mark per Policy ¶ 4(a)(i).

 

Complainant asserts that the <service-alienware.com> domain name is confusingly similar to the ALIENWARE mark as Respondent merely adds a hyphen, the descriptive term, and a gTLD to the mark. Adding a descriptive term, a hyphen, or a gTLD to a complainant’s mark does not sufficiently distinguish the disputed domain name from a mark under Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant contends Respondent merely adds the term “service,” then adds a hyphen and a “.com” gTLD to the ALIENWARE mark. The Panel agrees with Complainant and find that the <service-alienware.com> domain name does not contain changes that would sufficiently distinguish it from the ALIENWARE mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in <service-alienware.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ALIENWARE mark in any way.  Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel notes the WHOIS information of record identifies Respondent as “Privacy protection service – whoisproxy.ru / Privacy protection service – whoisproxy.ru”.  The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

In addition, Complainant argues that Respondent uses the <service-alienware.com> domain name to redirect users to Respondent’s competing website. Use of a disputed domain name to divert Internet users to competing products and services may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that the respondent, an unauthorized reseller of the complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the complainant’s mark). Complainant argues that Respondent redirects users to a third party website which copies the design elements of Complainant’s ALIENWARE mark and purports to offer repair and maintenance services for Complainant’s products. See Compl. Ex. E. The Panel finds that Respondent’s use of the <service-alienware.com> domain name to offer competing services in connection to Complainant’s products is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).

 

Furthermore, Complainant claims that Respondent attempts to falsely create an association with Complainant to obtain users’ personal and financial information as part of a fraudulent phishing scheme. Engaging in a fraudulent phishing scheme through a disputed domain name can further indicate a lack any rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) & (iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum November 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Complainant provides a screenshot from the disputed domain name’s resolving website which shows Respondent requesting Internet users’ personal information such as their name and phone number. See Compl. Ex. F. Thus, the Panel finds that Respondent engages in a phishing scheme and this is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) & (iii).

 

Registration and Use in Bad Faith

            Complainant argues that Respondent registered and uses the <service-alienware.com> domain name in bad faith because Respondent attempts to attract users to the disputed domain name which redirect users to competing, third party websites. Using a confusingly similar domain name to mislead users and redirect them to a competing website can indicate the respondent registered and used the name in bad faith per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant provides a screenshot of the disputed domain name which features Complainant’s mark in connection to computer related goods and services. See Compl. Ex. E. Complainant alleges that these screenshots depict Respondent’s use of the disputed domain name redirects users to <service-center-alienware.by> to host a website that offers repairs and maintenance services. Id. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).

 

            Moreover, Complainant argues that Respondent engages in a phishing scheme to obtain vendors’ personal or financial information. Using a confusingly similar domain name to phish for personal or financial information may indicate bad faith registration and use under Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides a screenshot from the disputed domain name’s resolving website which shows Respondent attempting to gather Internet users’ personal information such as their name and phone number. See Compl. Ex. F. Thus, the Panel finds Respondent engages in phishing and this constitutes bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ALIENWARE mark.. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant contends that in light of Respondent’s redirection to a website which copies Complainant’s logos, displays several pictures of Complainant’s products, and offers repairs and maintenance services for Complainant’s products, Respondent must have had actual knowledge. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the ALIENWARE mark when it registered the <service-alienware.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii)

 

DECISION

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

 

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

 

John J. Upchurch, Panelist

Dated:  June 22, 2018