national arbitration forum

 

DECISION

 

Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company and Compaq Trademark B.V. v. Reza Rasti a/k/a A.R.C. c/o reza rasti

Claim Number: FA0911001293423

 

PARTIES

Complainant is Hewlett-Packard Development Company, L.P., Hewlett-Packard Company, and Compaq Trademark B.V. (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA.  Respondent is Reza Rasti a/k/a A.R.C. c/o reza rasti (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue is <hpnotebook.com>, registered with Register.com.  Also at issue are the <compaq-iran.com> and <hp-iran.com> domain names, registered with Godaddy.com, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 9, 2009.

 

On November 6, 2009, Register.com confirmed by e-mail to the National Arbitration Forum that the <hpnotebook.com> domain name is registered with Register.com and that Respondent is the current registrant of the name.  Register.com verified that Respondent is bound by the Register.com registration agreements 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 November 6, 2009, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <compaq-iran.com> and <hp-iran.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.Com, Inc. registration agreements 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 November 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 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@hpnotebook.com, postmaster @compaq-iran.com, and postmaster@hp-iran.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hpnotebook.com> and <hp-iran.com> domain names are confusingly similar to Complainant’s HP mark.  Respondent’s <compaq-iran.com> domain name is confusingly similar to Complainant’s COMPAQ mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hpnotebook.com>, <compaq-iran.com>, and <hp-iran.com> domain names.

 

3.      Respondent registered and used the <hpnotebook.com>, <compaq-iran.com>, and <hp-iran.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company and Compaq Trademark B.V., was founded in 1939 and is one of the world’s largest Information Technology (“IT”) companies.  It owns registrations of the HP (Reg. No. 1,116,835 issued April 24, 1979) and COMPAQ (Reg. No. 1,467,066 issued December 1, 1987) marks with the United States Patent and Trademark Office (“USPTO”).  Additionally, Complainant owns registrations of the HP (Reg. No.5,819 issued July 13, 1996) and COMPAQ (Reg. No. 1,264 issued January 25, 1995) marks with the United Arab Emirates Trademark Office (“UAETO”).

 

Respondent, Reza Rasti a/k/a A.R.C. c/o reza rasti, registered the <hpnotebook.com> domain name on September 5, 2001 and the <compaq-iran.com> and <hp-iran.com> domain names on September 27, 2002.  The <hpnotebook.com> domain name resolves to a website that generates pop-up advertisements, embedded advertising (e.g., for Complainant’s competitor Lexmark), and links to third-party website that feature products and services offered by parties unaffiliated with Complainant, including Complainant’s competitors.  The <compaq-iran.com> domain name resolves to a table of links to unrelated products and services.  The <hp-iran.com> domain name fails to resolve to an active website.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant submitted evidence of its registration of the HP and COMPAQ marks with the USPTO (Reg. No. 1,116,835 issued April 24, 1979 and Reg. No. 1,467,066 issued December 1, 1987, respectively) and UAETO (Reg. No.5,819 issued July 13, 1996 and Reg. No. 1,264 issued January 25, 1995, respectively).  The Panel finds Complainant has established that it has rights in the HP and COMPAQ marks under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends that Respondent’s <hpnotebook.com> and <hp-iran.com> domain names are confusingly similar to Complainant’s HP mark.  First, the Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to an analysis under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  The <hpnotebook.com> domain name is composed of Complainant’s HP mark, the word “notebook,” and the gTLD “.com.”  The Panel finds that the work “notebook” is a common word for a laptop computer, an item sold by Complainant.  Therefore, the word “notebook” has an obvious relationship to Complainant’s business.  Previous Panels have found that adding a word with an obvious connection with Complainant’s business does not diminish the confusing similarity that arises from using Complainant’s mark.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The <hp-iran.com> domain name contains Complainant’s HP mark, a hyphen, the geographic term “iran,” and the gTLD “.com.”  Previous Panels have found that the addition of a hyphen and a geographic term renders the disputed domain name confusingly similar to the mark.  See JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that the <hpnotebook.com> and <hp-iran.com> domain names are confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <compaq-iran.com> domain name is confusingly similar to Complainant’s COMPAQ mark.  The <compaq-iran.com> domain name contains Complainant’s COMPAQ mark, a hyphen, the geographic term “iran,” and the gTLD “.com.”  Previous Panels have found that the addition of a hyphen and a geographic term renders the disputed domain name confusingly similar to the mark.  See JVC Americas Corp. v. Macafee, supra; see also Health Devices Corp. v. Aspen S T C, supra.  Therefore, the Panel finds that the <compaq-iran.com> domain name is confusingly similar to Complainant’s COMPAQ mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c).  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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).”). 

 

Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use its marks, and the WHOIS information identifies the registrant as “Reza Rasti.”  The Panel finds no evidence in the record suggesting that Respondent is commonly known by any of the disputed domain names.  Thus, the Panel finds that Respondent is not commonly known by any of the <hpnotebook.com>, <compaq-iran.com>, or <hp-iran.com> 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Respondent is using the <hpnotebook.com> domain name to resolve to a website that generates pop-up advertisements, embedded advertising, and links to third-party websites.  Some of these advertisements are for Complainant’s direct competitors, such as Lexmark.  The Panel finds that this use is not a bona fide offerings of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The <compaq-iran.com> domain name resolves to a table of links to unrelated products and services to the products and services offered by Complainant.  The Panel infers that Respondent receives revenue from these links either through advertising or click-through fees.  The Panel finds that this use is not a bona fide offerings of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Respondent has failed to make any active use of the <hp-iran.com> domain name.  The Panel finds that this failure to make any active use of the <hp-iran.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

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

 

Registration and Use in Bad Faith

 

Respondent registered the <hpnotebook.com> domain name on September 5, 2001 and the <compaq-iran.com> and <hp-iran.com> domain names on September 27, 2002.  Respondent’s registrations occurred decades after Complainant registered the HP and COMPAQ marks in the United States and over five years after Complainant registered the marks in the United Arad Emirates, Respondent’s country of residence.

 

The <hpnotebook.com> domain name resolves to a website that generates pop-up advertisements, embedded advertising (e.g., for Complainant’s competitor Lexmark), and links to third-party website that feature products and services offered by parties unaffiliated with Complainant, including Complainant’s competitors.  Prior Panels have found that using a domain name that is confusingly similar to Complainant’s mark to advertise Complainant’s direct competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Additionally, the <compaq-iran.com> domain name resolves to a table of links to unrelated products and services.  The Panel infers that Respondent receives click-through or advertising fees for the links posted on the <hpnotebook.com> and <compaq-iran.com> domain names.  Since these disputed domain names are confusingly similar to Complainant’s marks, Internet users are likely to become confused as to Complainant’s affiliation or sponsorship of the disputed domain names and resolving website.  Respondent was seeking to profit from this confusion by hosting advertisements on the resolving websites.  The Panel finds that these uses are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

Lastly, since registering the <compaq-iran.com> domain name on September 27, 2002, it has failed to resolve to a website.  The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name constitutes bad faith registration and use).

 

The Panel finds that Complainant has satisfied 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 <hpnotebook.com>, <compaq-iran.com>, and <hp-iran.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  December 28, 2009

 

 

 

National Arbitration Forum