Alienware Corporation v. SZK.com
Claim Number: FA0607000751965
Complainant is Alienware Corporation (“Complainant”), represented by Nathan J. Hole, of Loeb & Loeb LLP, 321 North Clark St., Suite 2300, Chicago, IL 60610. Respondent is SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE 64025 IT.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwalienware.com>, registered with Dotster.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2006.
On July 17, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <wwwalienware.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwalienware.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwwalienware.com> domain name is confusingly similar to Complainant’s ALIENWARE mark.
2. Respondent does not have any rights or legitimate interests in the <wwwalienware.com> domain name.
3. Respondent registered and used the <wwwalienware.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alienware Corporation, markets and sells high-performance computer systems including desktops, notebooks, professional workstations and related hardware. Complainant has registered the ALIENWARE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,616,204 issued September 10, 2002). Complainant utilizes the ALIENWARE mark to market its high-performance computer systems goods and services. Complainant has included its ALIENWARE mark in multiple registered domain names, including <alienware.com>, <alienware-computers.com> and <alienwarehome.com>. Complainant uses its registered domain name to offer its computer systems goods and services to online consumers who account for eighty percent of Complainant’s sales revenue.
Respondent registered the <wwwalienware.com> domain name on June 12, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which is composed entirely of links to third-party websites. Many of the third-party websites purport to offer Complainant’s products without authorization from Complainant, for example “alienware,” “alienware laptop” and “alien computer.” Other third-party websites appear to offer computer systems goods and services in competition with Complainant, for example “laptop,” “free software” and “notebook computer.” Still other links are wholly unrelated to Complainant’s business, and include such headings as “houses for sale,” “used cars” and “casinos.” Further, Respondent’s website generates numerous pop-up advertisements when Internet users arrive at Respondent’s website through 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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant’s registration of the ALIENWARE mark with the
USPTO establishes Complainant’s rights in the mark sufficient to meet the
requirements of Policy ¶ 4(a)(i). See also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held
that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive."); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <wwwalienware.com> domain name is confusingly similar to
Complainant’s ALIENWARE mark. The
disputed domain name contains Complainant’s mark in its entirety with the added
“www” prefix. The addition of the “www”
prefix mimics a common typing error in which Internet users accidentally fail
to insert the period between the “www” prefix and the remainder of the domain
name. The Panel finds that the addition
of the “www” prefix to Complainant’s mark does not create a distinct domain
name and the disputed domain name is confusingly similar to Complainant’s mark
as contemplated by Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that the respondent’s domain name <wwwbankofamerica.com>
is confusingly similar to the complainant’s registered trademark BANK OF
AMERICA because it “takes advantage of a typing error (eliminating the period
between the www and the domain name) that users commonly make when searching on
the Internet.”); see also Neiman
Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002)
(holding confusing similarity has been established because the prefix
"www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <wwwalienware.com> domain name. Complainant’s assertion constitutes a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to submit a Response suggests that Respondent lacks facts or arguments to demonstrate that Respondent has rights or legitimate interests in the disputed domain name. The Panel will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent is using the <wwwalienware.com>
domain name to redirect Internet users to Respondent’s website. Respondent’s website is populated with links
to third-party websites, some links purportedly offering Complainant’s goods
and services, other links promoting commercial websites in competition with
Complainant and still other links to websites unrelated to Complainant. Presumably Respondent receives pay-per-click
referral fees when Internet users click on these links. Additionally, Respondent’s website generates
multiple pop-up advertisements when Internet users reach the website. The Panel finds that such use is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names); see
also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); see also TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide
offering of goods or services); see also
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names).
Further, there is no evidence available to suggest that Respondent is commonly known by the <wwwalienware.com> domain name. Respondent’s WHOIS information identifies Respondent as “SZK.com” and Complainant asserts that Respondent is not affiliated with or sponsored by Complainant, and lacks Complainant’s permission to use Complainant’s mark in a domain name. Lacking evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <wwwalienware.com>
domain name is confusingly similar to Complainant’s ALIENWARE mark. The disputed domain name mimics a common
typing error made by Internet users attempting to enter a domain name into a
web browser. Internet users seeking
Complainant’s genuine website at <alienware.com> might accidentally fail
to insert the period between the “www” prefix and Complainant’s mark and find
themselves redirected to Respondent’s website.
Internet users at Respondent’s website are confronted with numerous
links to third-party websites as well as a variety of pop-up advertisements,
all of which presumably generate referral fees for Respondent. The Panel finds that Respondent’s use of a
domain name that is confusingly similar to Complainant’s mark to redirect
Internet users to Respondent’s website for Respondent’s financial gain is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes).
Respondent is using the <wwwalienware.com> domain name to
attract Internet users to Respondent’s website which features numerous links to
third-party websites offering goods and services in direct Competition with
Complainant. Complainant generates over
eighty percent of its revenue from online sales, and thus it is particularly
important that Internet users seeking Complainant’s genuine website be able to
reach that website. Respondent is
intercepting Internet users seeking Complainant’s genuine website and
redirecting them through links to competing commercial websites. The Panel finds that such use disrupts
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith
by attracting Internet users to a website that competes with the complainant’s
business); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwalienware.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 28, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum