National Arbitration Forum

 

DECISION

 

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Texas International Property Associates - NA NA

Claim Number: FA0902001248985

 

PARTIES

Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented by Graham MacRobie of Alias Encore, Inc., California, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), represented by Gary Wayne Tucker of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com>, registered with Compana, Llc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 23, 2009; the National Arbitration Forum received a hard copy of the Complaint February 24, 2009.

 

On February 24, 2009, Compana, Llc confirmed by e-mail to the National Arbitration Forum that the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com> domain names are registered with Compana, Llc and that the Respondent is the current registrant of the names.  Compana, Llc verified that Respondent is bound by the Compana, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2009, 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@snalfish.com, postmaster@snampfish.com, postmaster@snanpfish.com, postmaster@snapdfish.com, postmaster@snapefish.com, postmaster@snapfhish.com, postmaster@snapfiash.com, postmaster@snapfifh.com, postmaster@snapfisf.com, postmaster@snapfisih.com, postmaster@snapfisk.com, postmaster@snapfisyh.com, postmaster@snapfixh.com, postmaster@snaphfish.com, postmaster@snapifish.com, postmaster@snaqpfish.com, postmaster@snatfish.com, postmaster@snopfish.com, postmaster@spapfish.com, and postmaster@snapfishphotos.com by e-mail.

 

A timely Response was received and determined to be complete March 25, 2009.

 

The parties made no additional filings.

 

On April 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Preliminary Issue: Consent to Transfer

 

Respondent consents to transfer the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com> domain names to Complainant. 

 

However, after the initiation of this proceeding, Compana, Llc, placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. 

 

The Panel finds that in a circumstance such as this, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.  The Panel therefore finds that the “consent-to-transfer” approach may just be one way for cybersquatters to avoid adverse findings against them.  In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assoc., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:

 

Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.

 

Therefore, the Arbitrator will analyze and resolve the case on the merits.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant asserts the following in this proceeding:

1.      Respondent has registered multiple domain names using Complainant’s exclusive and protected mark.

2.      Respondent has no rights to or legitimate interests in the domain names containing various misspellings of Complainant’s mark.

3.      Respondent acted in bad faith in registering and using numerous domain names that contain various misspellings of Complainant’s mark.

 

B.     Respondent makes the following points in response:

1.      Respondent consents to transfer the numerous domain names containing Complainant’s mark.

2.      Respondent does not address the three-pronged contentions raised by Complainant’s allegations.

 

C.     Additional Submissions.

The parties filed no additional submissions.

 

 

FINDINGS

Complainant established rights in the SNAPFISH mark.

 

The disputed domain names are confusingly similar to Complainant’s protected mark.

 

Complainant satisfied the showing to be entitled to relief in this matter.

 

Respondent did not address the three-pronged allegations raised by Complainant’s allegations.

 

Respondent has no rights to or legitimate interests in the disputed domain names.

 

Respondent acted in bad faith in registering and using numerous domain names comprised of misspellings of Complainant’s protected mark.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

 

Identical to and/or Confusingly Similar

 

Complainant established rights in the SNAPFISH mark because it holds a registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,643,556 issued October 29, 2002).  See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes 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.").

 

Complainant asserts that the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com> domain names are confusingly similar to Complainant’s SNAPFISH mark because these disputed domain names are common misspellings of its mark, differing from Complainant’s mark by only one letter.  Complainant further asserts that the <snapfishphotos.com> domain name is confusingly similar to its SNAPFISH mark because this domain name contains Complainant’s entire mark and adds the descriptive term “photos” to its mark, which describes Complainant’s business in connection with the SNAPFISH mark.  Finally, Complainant asserts that the addition of the generic top-level domain (“gTLD”) “.com” to all of the disputed domain names is irrelevant. 

 

The Panel finds that the disputed domain names are confusingly similar to Complainant’s SNAPFISH mark under Policy ¶ 4(a)(i).  See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Respondent makes no allegations relative to Policy ¶ 4(a)(i). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

The Policy requires Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Once Complainant does so, 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 (Nat. Arb. 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 (Nat. Arb. 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 contends that all of the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com> domain names resolve to websites that contain various hyperlinks to several third-party websites, some of which are in direct competition with Complainant.  Complainant presumes that Respondent receives click-through fees for such hyperlinks.  The Panel finds that Respondent’s conduct diverts Internet users to competing websites, and is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant further asserts that Respondent is not commonly known by the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com> domain names because Respondent is listed as “Texas International Property Associates - NA NA” in its WHOIS information.  The Panel finds that Respondent is not commonly known by the disputed domain names under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Finally, Complainant asserts that Respondent’s actions constitute typosquatting because the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com> domain names take advantage of common misspellings of Complainant’s SNAPFISH mark to divert Internet users to Respondents websites.  The Panel finds that registering and using typosquatted domain names utilizing misspelled versions of Complainant’s protected mark is evidence of Respondent’s lack of rights or legitimate interests in the <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com> domain names under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel finds that Complainant’s allegations and proof are sufficient to show a prima facie case and that Respondent has no rights to or legitimate interests in the disputed domain names.

 

            Respondent makes no allegations relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent registered and used the disputed domain names in bad faith and notes that Respondent has been the losing respondent in 112 UDRP decisions.  See Google Inc. v. Tex. Int’l Prop. Assoc. – NA NA, FA 1212995 (Nat. Arb. Forum Aug. 25, 2008); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc. – NA NA, FA 1223585 (Nat. Arb. Forum Oct. 29, 2008).  The Panel finds that Respondent has engaged in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Complainant further asserts that Respondent’s alleged typosquatting in this case is, in and of itself, evidence of bad faith registration and use.  The Panel finds that Respondent’s conduct constitutes typosquatting and as such is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

Respondent makes no allegations with regards to Policy ¶ 4(a)(iii). 

 

The Panel finds that Complainant satisfied the elements of ICANN 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 <snalfish.com>, <snampfish.com>, <snanpfish.com>, <snapdfish.com>, <snapefish.com>, <snapfhish.com>, <snapfiash.com>, <snapfifh.com>, <snapfisf.com>, <snapfisih.com>, <snapfisk.com>, <snapfisyh.com>, <snapfixh.com>, <snaphfish.com>, <snapifish.com>, <snaqpfish.com>, <snatfish.com>, <snopfish.com>, <spapfish.com>, and <snapfishphotos.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: April 16, 2009.

 

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