Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Private Registrations Aktien Gesellschaft
Claim Number: FA0912001299093
Complainant is Hewlett-Packard Development Company, L.P. and Hewlett-Packard
Company (“Complainant”), represented
by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpservices.com>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 16, 2009.
On December 16, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpservices.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement 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 December 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 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@hpservices.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 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hpservices.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpservices.com> domain name.
3. Respondent registered and used the <hpservices.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard
Development Company, L.P. and Hewlett-Packard Company, holds numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the HP mark (e.g., Reg. No. 1,116,835
issued April 24, 1979) in connection with computers and computer software.
Respondent, Private Registrations Aktien Gesellschaft, registered the <hpservices.com> domain name on March 15, 2002. The disputed domain name resolves to a website featuring third-party links to products and services, some of which directly compete with Complainant.
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.
Complainant asserts rights in its HP mark through its
holding of trademark registrations for the HP mark with the USPTO (e.g., Reg. No. 1,116,835 issued April 24, 1979). The Panel finds that Complainant has
established rights in the HP mark under Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. 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).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant argues that Respondent’s <hpservices.com> domain name is confusingly similar to Complainant’s HP mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is confusingly similar to Complainant’s HP mark because Respondent’s domain name merely adds the generic term “services” and the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s HP mark. The Panel finds that the addition of the word “services” creates a confusing similarity between the disputed domain name and Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
The
WHOIS information lists the registrant as “Private Registrations Aktien Gesellschaft.” Complainant alleges that Respondent is not
affiliated with Complainant in any way and is not licensed to use Complainant’s
mark. Respondent is not an authorized
vendor, supplier, or distributor of Complainant’s goods and services. Without evidence to the contrary, the Panel
finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding
that the respondent was not commonly known by the disputed domain names where
the WHOIS information, as well as all other information in the record, gave no
indication that the respondent was commonly known by the disputed domain names,
and the complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Respondent’s <hpservices.com> domain name was registered on March 15, 2002. The disputed domain name resolves to a website featuring third-party links to products and services, some of which directly compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration of the <hpservices.com> domain name to link Internet
users to a website displaying links to third-party websites, some of which
directly compete with Complainant, constitutes a disruption of Complainant’s
business and is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb.
Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out
the <aol.tv> domain name to a
competitor’s news site. The Panel
strongly finds that appropriating Complainant’s mark to refer customers seeking
Complainant to Complainant’s competitors is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii).”); see
also
Respondent is using the confusingly similar disputed domain
name to intentionally attract Internet users by creating a strong likelihood of
confusion with Complainant’s HP mark and redirect them to third-party websites,
some of which directly compete with Complainant. The Panel presumes that Respondent receives
referral fees as a result of this diversion.
Thus, the Panel finds that Respondent’s use of the disputed domain name
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpservices.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 1, 2010
Click Here to return to the main Domain Decisions Page
Click Here to return to our Home Page
National
Arbitration Forum