DECISION

 

Dell Inc. v. Louise Evans

Claim Number: FA2402002082305

PARTIES

Complainant is Dell Inc. ("Complainant"), represented by Caitlin Costello of Pirkey Barber PLLC, Virginia, USA. Respondent is Louise Evans ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alienwarer12.com> ("Domain Name"), registered with Porkbun LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 2, 2024; Forum received payment on February 2, 2024.

 

On February 5, 2024, Porkbun LLC confirmed by e-mail to Forum that the <alienwarer12.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the names. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC 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 February 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2024 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@alienwarer12.com. Also on February 9, 2024, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Dell Inc., is a world leader in computers, computer accessories, and other related products and services. Complainant offers custom computer gaming hardware and accessories under the mark ALIENWARE. 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 September 10, 2002). Respondent's <alienwarer12.com> domain name is confusingly similar to Complainant's ALIENWARE mark as it wholly incorporates the mark, and adds the phrase "r12", which may be seen as a reference to Complainant's Alienware Aurora R12 Desktop, and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <alienwarer12.com> domain name as it is not commonly known by the Domain Name and is neither an authorized user nor licensee of the ALIENWARE mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. The Domain Name is currently inactive but previously Respondent used the Domain Name for a website ("Respondent's Website") purporting to describe Complainant's products while obtaining revenue through monetized hyperlinks through a third-party affiliate program.  Visitors to the Respondent's Website who clicked the "buy now" button were redirected to a third-party retailer's website where they could purchase the Complainant's Alienware Aurora R12 Desktop or competing products and Respondent would receive an affiliate fee.

 

Respondent registered and uses the <alienwarer12.com> domain name in bad faith. Respondent uses the Domain Name to receive revenue from the sale of products which compete directly with Complainant. Additionally, Complainant contends that Respondent registered the Domain Name with actual knowledge of Complainant's rights in the ALIENWARE mark given the content of the Respondent's Website.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  Respondent sent three e-mails to Forum, two on February 10, 2024 and one on February 14, 2024. In those e-mails Respondent indicated that she purchased the Domain Name to use for an affiliate website to sell the Alienware 12 product. However, she has ceased operating the website and does not own the Domain Name anymore. She indicated that she is new to domain name investing and has requested that Forum stop contacting her with in respect of the proceeding as she does not own the Domain Name.

 

The Panel acknowledges that the Respondent's Website referred to in the Complaint and by Respondent no longer operates however the Registrar has confirmed that, although the Respondent's Website is inactive, the Respondent remains the owner of the Domain Name and thus is the proper Respondent in the proceeding.

 

FINDINGS

Complainant holds trademark rights for the ALIENWARE mark.  The Domain Name is confusingly similar to Complainant's ALIENWARE mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the 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 and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the ALIENWARE mark (e.g., Reg. No. 2,616,204, registered September 10, 2002) based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per 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)).

 

The Panel finds that the <alienwarer12.com> domain name is confusingly similar to Complainant's ALIENWARE mark at it wholly reproduces the ALIENWARE mark and adds the phrase "R12", a reference to Complainant's Alienware Aurora R12 Desktop, and the ".com" gTLD.  Under Policy ¶ 4(a)(i), adding a generic word or abbreviation, along with a gTLD, is generally insufficient in differentiating a disputed domain name from the mark it incorporates.  See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ALIENWARE mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); 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).  The WHOIS lists "Louise Evans" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but Complainant provides evidence that prior to the commencement of the proceedings the Domain Name resolved to the Respondent's Website, a page that purported to offer information about the Complainant's Alienware Aurora R12 Desktop but actually operated as a mechanism to encourage visitors to click on a hyperlink (for which the Respondent was likely to receive revenue through the Amazon Affiliate program) that redirected to a webpage operated by Amazon that allowed users to purchase both the Complainant's products (the Alienware Aurora R12 Desktop) and competing products.  This is not a bona fide offering or a legitimate noncommercial or fair use.  See MTD Products Inc v. Abdullah Mahmud Ashik / SARDAH.COM, FA 1832254 (Forum Apr. 4, 2019) (finding lack of rights or interests in similar circumstances; Amazon Technologies, Inc. v. David Sutton, FA 1795497 (Forum July 30, 2018) (finding lack of rights or legitimate interests where domain name was used to promote competing products, presumably generating referral fees for respondent) and Talecris Biotherapeutics, Inc. v. Marketing Total S.A., FA 1169821 (Forum May 1, 2008) (finding lack of rights or legitimate interests where domain name was used for sole purpose of generating referral fees from third-party advertisements and links, some of which competed directly with Complainant).   

 

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

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, October 10, 2023, Respondent had actual knowledge of Complainant's ALIENWARE mark as the Respondent's Website makes repeated references to Complainant and its ALIENWARE products.  Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the ALIENWARE mark and use it to redirect visitors to a website offering pay-per-click links to a website selling the Complainant's goods and goods that compete with Complainant other than to take advantage of Complainant's reputation in the ALIENWARE mark.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's ALIENWARE mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that purports to provide information about Complainant's products but actually is simply a mechanism to encourage visitors to click on a series of pay-per-click links for which Respondent would be expected to receive revenue.  Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent's use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv));  see also Bang & Olufsen a/s v. Chris Albano / BlueHost.com- INC, supra (bad faith found where the disputed domain was used "as part of a scheme to generate click through revenue by Internet users who visit the site, believing it to be associated with the Complainant, then clicking through to eBay listings of the Complainant's products for sale")

 

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 <alienwarer12.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 2, 2024