The Complainant is Alienware Corporation, Miami, Florida, United States of America, represented by Triana, Uribe & Michelsen, Colombia.
The Respondent is Truther, Muscat Governorate, Oman. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2012. On August 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 26, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, Alienware Corporation, is a company incorporated in the United States of America. The Complainant was established in the year 1996 and engages in the production of computers designed for gaming and other graphically intense applications.
The Complainant's products are offered for sale, among others, through the Complainant’s website “www.m”.
The Complainant is the owner of many worldwide trademark registrations for the mark ALIENWARE. For example: United States trademark registration No. 2823037 – ALIENWARE (logo), with the registration date of March 16, 2004; United States trademark registration No. 3412384 – ALIENWARE, with the registration date of April 15, 2008; Community trademark registration 006049472 – ALIENWARE (logo), with the registration date of May 29, 2008; Community trademark registration 002879112 – ALIENWARE, with the registration date of February 9, 2004, and many others.
The disputed domain name was registered on July 20, 2010. On October 18, 2011, the Complainant filed a UDRP Complaint against the registrant Chen Sizhu c/o Dynadot Privacy regarding the disputed domain name (Alienware Corporation v. Chen Sizhu c/o Dynadot Privacy, WIPO Case DCO2011-0056). The UDRP panel ruled on December 20, 2011 that the disputed domain name be transferred to the Complainant. The disputed domain name was eventually transferred to the Respondent.
The disputed domain name currently resolves to a website that seems to be a web portal, which displays various hyperlinks concerning various topics in Chinese. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Complainant's ALIENWARE mark had gained significant awareness and recognition among worldwide consumers.
The Complainant further argues that it placed an offer, through an agent, to purchase the disputed domain name. The Complainant contends that it did not receive an answer from the Respondent and therefore, the Complainant sent the Respondent a cease and desist letter, to which the Respondent also did not respond.
The Complainant further argues that the hyperlinks on the website under the disputed domain name are probably pay-per-click links.
The Complainant further argues that the disputed domain name is identical to the Complainant's ALIENWARE mark. The Complainant further contends that the addition of the suffix “.co” does not have an impact on the overall impression of the disputed domain name.
The Complainant further argues that the Respondent is not using the disputed domain name for any bona fide offering of goods and services.
The Complainant further argues that the Respondent acquired the disputed domain name fully aware of the Complainant's ALIENWARE mark and the Complainant's use of it.
The Complainant further argues that the Respondent intends to divert the Complainant's consumers to the website under the disputed domain name to obtain commercial gain. The Complainant further contends that the website under the disputed domain name directs users to websites that provide computer services.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of many worldwide trademark registrations for the mark ALIENWARE. For example: United States trademark registration No. 2823037 – ALIENWARE (logo), with the registration date of March 16, 2004; United States trademark registration No. 3412384 – ALIENWARE, with the registration date of April 15, 2008; Community trademark registration 006049472 – ALIENWARE (logo), with the registration date of May 29, 2008; Community trademark registration 002879112 – ALIENWARE, with the registration date of February 9, 2004, and many others.
The disputed domain name integrates the Complainant's ALIENWARE mark in its entirety. The disputed domain name differs from the Complainant's mark by the addition of the country code top level domain ".co".
The addition of the country code “.co” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The country code “.co” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to trademarks in which the Complainant has rights (paragraph 4(a)(i) of the Policy). B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate Interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ALIENWARE trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the ALIENWARE trademark since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name which was created in 2010 (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name is identical to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's use of a highly distinctive trademark of the Complainant also suggests of the Respondent's bad faith. It was held in prior UDRP decisions that it is presumptive that using a highly distinctive trade mark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: "the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.")
The disputed domain name resolves to a website in Chinese, which direct users, among others, to third party websites that promote services that are connected to the Complainant’s services and products. The Respondent's use of the Complainant's trademark to promote services that are connected to the Complainant’s goods is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant's ALIENWARE trademark and of the Complainant's commercial use of it, and subsequent intended to trade off the value of these. In this Panel’s view, the Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademark with the Respondent’s website falls under paragraph 4(b) of the Policy.
The Panel also notes that the Respondent failed to respond to the cease and desist letter sent by the Complainant. It is well established and accepted that failure to respond to cease and desist letters without legitimate reason maybe is evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In light of the Complainant's distinctive registered trademark, the Respondent's use of an identical disputed domain name and the Respondent's lack of response to the Complainant's cease and desist letter, and in view of the above the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: November 9, 2012
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