Dell Inc. v. Arya Allah Dini
Claim Number: FA1608001691729
Complainant is Dell Inc. (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Arya Allah Dini (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iranalienware.com>, registered with Realtime Register B.V.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2016; the Forum received payment on August 30, 2016.
On August 31, 2016, Realtime Register B.V. confirmed by e-mail to the Forum that the <iranalienware.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2016 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@iranalienware.com. Also on August 31, 2016, 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 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq., 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant has rights in the ALIENWARE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,616,204, registered Sept. 10, 2002). Respondent’s <iranalienware.com> domain name is confusingly similar to the ALIENWARE mark because it is incorporated entirely in the domain name, while the geographic term “Iran” and the generic top-level domain (“gTLD”) “.com” are added.
ii) Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is it authorized or permitted to use the ALIENWARE mark or any mark owned by Complainant. In addition, Respondent has not used the domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the resolving website redirects Internet users to <iranalienware.ir>, where Respondent passes itself off as Complainant.
iii) Respondent registered and used the disputed domain name in bad faith. Respondent’s passing off behavior creates a likelihood of confusion to promote its sales of Complainant’s products in direct competition with Complainant indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv). Furthermore, such use indicates Respondent registered and subsequently used the disputed domain name with actual knowledge of the ALIENWARE mark and Complainant’s rights in the mark.
B. Respondent
Respondent did not submit a Response to the Complaint. The Panel notes that the <iranalienware.com> domain name was registered on August 9, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant uses the ALIENWARE mark in conjunction with a specific brand of computer Complainant manufactures and sells. Complainant has rights in the ALIENWARE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,616,204, registered Sept. 10, 2002). Registration with the USPTO (or similar governmental authority) is sufficient to establish Policy ¶ 4(a)(i) rights, even if Respondent is located in another country. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). The Panel therefore agrees that Complainant has rights in the ALIENWARE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <iranalienware.com> domain name is confusingly similar to the ALIENWARE mark because it is incorporated entirely in the domain name, while the geographic term “Iran” and the gTLD “.com” are added. Such additions have been considered nugatory under Policy ¶ 4(a)(i). 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 Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel agrees that Respondent’s <iranalienware.com> domain name is confusingly similar to the ALIENWARE mark under Policy ¶ 4(a)(i).
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. 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 argues that Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name, nor is it authorized or permitted to use the ALIENWARE mark or any mark owned by Complainant. The Panel notes that the WHOIS of record lists “Arya Allah Dini” as registrant. In conjunction with Respondent’s lack of a Response in this proceeding, the Panel agrees that Complainant has made an unrebutted prima facie case under Policy ¶ 4(c)(ii). 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).
Additionally, Complainant asserts that Respondent has not used the domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, the resolving website redirects Internet users to <iranalienware.ir>, where Respondent passes itself off as Complainant. Panels have agreed that passing off behavior cannot rise to the level of bona fide offerings or legitimate noncommercial or fair uses. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Complainant argues that Respondent “copies verbatim content from Complainant’s official websites. For instance, the ‘Features & Design’ section for the ‘ALIENWARE 13 R2’ on Respondent’s website is an exact copy of the content, including text, pictures, and graphs, in the ‘Features & Design’ section for the same product on Complainant’s official website. In fact, mysteriously, despite the large majority of Respondent’s website being in Persian, the language in this section appears completely in English.” As the Panel agrees that there is sufficient evidence that Respondent has attempted to pass itself off as Complainant, it determines no bona fide offering of goods or services or any legitimate noncommercial or fair use has been made per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the disputed domain name in bad faith. To begin, Complainant contends that Respondent’s passing off behavior creates a likelihood of confusion to promote its sales of Complainant’s products in direct competition with Complainant indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv). Panels have agreed that in circumstances where a respondent is attempting to pass itself off as complainant, bad faith is present. See Homer TLC, Inc. v. Above.com Domain Privacy, FA 1579386 (Forum Oct. 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”). Here, the Panel agrees that Respondent is exhibiting an attempt to profit from such confusion, and that its use thereby disrupts Complainant’s legitimate business—and therefore finds bad faith under both Policy ¶¶ 4(b)(iii) and (iv).
Lastly, Complainant suggests that Respondent’s use of the disputed domain name to compete and pass off as Complainant means it registered and subsequently used the disputed domain name with actual knowledge of the ALIENWARE mark and Complainant’s rights in the mark. Panels have found bad faith under Policy ¶ 4(a)(iii) where respondents have been deemed to have had actual knowledge. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). While Respondent was allegedly offering Complainant’s own products for sale, and passing itself off as Complainant, the Panel agrees that there is sufficient basis to determine Respondent registered and used the disputed domain name with actual knowledge per 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 <iranalienware.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 6, 2016
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