Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Jeff Park a/k/a Linecom
Claim Number: FA0912001297555
Complainant is Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jeff Park a/k/a Linecom (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hpshop.com> and <hpinkjet.com>, registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 4, 2009; the National Arbitration Forum received a hard copy of the Complaint December 7, 2009. The Complaint was submitted in both Korean and English.
On December 6, 2009, Korea Information Certificate Authority, Inc. d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <hpshop.com> and <hpinkjet.com> domain names are registered with Korea Information Certificate Authority, Inc. d/b/a Domainca.com and that Respondent is the current registrant of the names. Korea Information Certificate Authority, Inc. d/b/a Domainca.com verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a Domainca.com 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 December 16, 2009, a Korean Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 5, 2010, 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@hpshop.com, postmaster@hpinkjet.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2010, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that
the language requirement has been satisfied through the Korean language
Complaint and Commencement Notification and, absent a Response, determines that
the remainder of the proceedings may be conducted in English.
Preliminary
Issue: Multiple Respondents
In the instant proceedings, Complainant alleged that the
entities that control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides
that a “complaint may relate to more than one domain name, provided that the
domain names are registered by the same domain name holder.” Complainant contends that
The Panel finds that Complainant presented sufficient
evidence that the disputed domain names are controlled by the same entity and
thus chooses to proceed with the instant proceedings on the merits.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hpshop.com> and <hpinkjet.com> domain names are confusingly similar to Complainant’s HP mark.
2. Respondent has no rights to or legitimate interests in the <hpshop.com> and <hpinkjet.com> domain names.
3. Respondent registered and used the <hpshop.com> and <hpinkjet.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Development Company, L.P., and Hewlett-Packard Company, develops, markets, and sells computers, printers, software, and related products. Complainant offers its various products and services under its HP mark and has done so since 1941. Complainant holds numerous trademarks with the United States Patent and Trademark Office (“USPTO”) for its HP mark (e.g., Reg. No. 1,116,835 issued April 24, 1979).
The Respondent’s disputed domain names, <hpshop.com> (registered January 14, 2003) and <hpinkjet.com> (registered December 29, 2008) resolve to a website featuring outdated and incorrect information about Complainant’s server products. The resolving website further contains hyperlinks and advertisements relating to Complainant’s competitors in the computer technology business.
Complainant offers evidence that Respondent has a history of registering domain names infringing upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Am. Airlines, Inc. v. Nexpert, Inc. c/o Park, FA 1089359 (Nat. Arb. Forum Nov. 20, 2007); see also Guardant, Inc. v. Park, D2009-0631 (WIPO July 8, 2009); see also Am. Heart Assoc. v. Linecom, FA 1246476 (Nat. Arb. Forum March 25, 2009); see also Auto. Racing Prods., Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006).
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."
Given 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 will draw such inferences as the Panel 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 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 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.
Complainant provided evidence of the registration of its HP mark with the USPTO. Therefore, the Panel finds that Complainant established rights under Policy ¶ 4(a)(i) in the HP mark by its registration with the USPTO (e.g., Reg. No. 1,116,835 issued April 24, 1979). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends Respondent’s <hpshop.com> and <hpinkjet.com> domain names are confusingly similar to Complainant’s HP mark. The disputed domain names incorporate Complainant’s HP mark and add the generic term “shop,” or the descriptive term “inkjet,” which describes Complainant’s printer products. The disputed domain names further each add the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a generic or descriptive term fails to adequately distinguish the disputed domain name from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel further finds that the addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds the <hpshop.com> and <hpinkjet.com> domain names are confusingly similar to Complainant’s HP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights to or legitimate
interests in the disputed domain names.
Complainant is required to make a prima
facie case in support of its allegations and then the burden shifts to
Respondent to prove that it does have such rights to or legitimate interests in
the disputed domain names. The Panel
finds that Complainant established a prima
facie case. Due to Respondent’s
failure to respond to these proceedings, the Panel may assume that Respondent
does not possess rights or legitimate interests in the disputed domain
names. The Panel, however, still examines
the record to determine whether Respondent possesses rights to or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c). See
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).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Complainant contends that Respondent is not commonly known the disputed domain names and that Complainant has not licensed or given Respondent permission to register the disputed domain names. The Panel finds that the WHOIS information demonstrates that Respondent is not commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights to and legitimate interests in the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); 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’s disputed
domain names resolve to a website featuring advertisements and links relating
to Complainant’s competitors in the computer technology industry. Such
use permits the Panel to make an inference that Respondent
profits through the generation of click-through fees from these links to
Complainant’s competitors. Therefore, the Panel finds that Respondent’s
use of the disputed domain names is not in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use of the disputed domain names under
Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v.
24HourNames.com-Quality Domains For
In addition, the Panel finds that Respondent further lacks rights and legitimate interests in the <hpinkjet.com> domain name pursuant to Policy ¶ 4(a)(ii) because Respondent offers the <hpinkjet.com> domain name for sale at a third-party domain name marketplace. See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant presents evidence that
Respondent is offering the <hpinkjet.com> domain name for sale through a third-party domain name marketplace. The Panel finds that this demonstrates
Respondent’s primary intent to sell, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See
Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704
(Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer
of the disputed domain name registration for sale establishes that the domain
name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant also reports that Respondent has been the
respondent in other UDRP proceedings, wherein the disputed domain names were
ordered to be transferred from Respondent to the respective complainants in
those cases. See Am. Airlines,
Inc. v. Nexpert, Inc. c/o Park, FA
1089359 (Nat. Arb. Forum Nov. 20, 2007); see also
Guardant, Inc. v. Park, D2009-0631 (WIPO July 8, 2009); see also Am. Heart Assoc. v. Linecom, FA 1246476 (Nat. Arb. Forum March 25,
2009); see also Auto. Racing Prods., Inc.
v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006). The Panel finds that Respondent has therefore
engaged in a pattern of bad faith registration and use under the parameters of
Policy ¶ 4(b)(ii).
See Arai Helmet Am., 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”); see also Westcoast Contempo
Fashions Ltd. v.
Respondent’s disputed domain names resolve to a website featuring links to Complainant’s competitors in the computer technology industry. The confusingly similar disputed domain names likely attract Internet users that are attempting to access Complainant’s website. Those Internet users are unknowingly redirected to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes a disruption of Complainant’s business, which 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
In addition, Respondent is using the disputed domain names to divert Internet users to
the associated websites, which display third-party links to competing
websites. Given such conduct, the Panel is
permitted to presume that Respondent’s knowingly in collecting click-through
fees and in attempting to profit from the likelihood of confusion between
Complainant’s internationnal known HP mark and the confusingly similar disputed
domain names. The Panel finds that
Respondent’s use of the disputed domain names supports further findings of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee
TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also
The Panel finds that Complainant satisfied the elements of ICANN 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 <hpshop.com> and <hpinkjet.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 28, 2010.
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