Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Venkateshwara Distributor Private Limited.
Claim Number: FA0912001299746
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 Venkateshwara Distributor Private Limited. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpdrivers.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned, Daniel B. Banks, Jr., as panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2009.
On December 18, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <hpdrivers.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that the Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 12, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 12, 2010.
Complainant’s Additional Submission was received on January 13, 2010 in compliance with Supplemental Rule 7.
Respondent's additional submission was received on January 25, 2010, after the deadline for submissions and was not considered by the panel as it added no new information to the Response document previously filed.
On January 26, 2019, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant was founded in 1939 and is among the world's largest companies, ranking ninth on the 2009 Fortune 500 and reporting total revenue of $118.4 billion for the fiscal year 2008. The HP trademark has been used at least as early as 1941 and has become famous. Complainant ships 48 million PC units annually and is No. 1 globally in inkjet and laser printers, and ink and laser supplies, It ships more than 1 million printers a week and is ranked as the world's largest software company. It is consistently recognized as being among the world's most valuable brands. It has been found by previous panelists of the National Arbitration Forum to be famous and distinctive.
Complainant has registered HP in the U.S and internationally. HP owns the domain name <hp.com> and uses this domain name to offer goods and services under the HP trademark, including software drivers.
The disputed domain name is confusingly similar to Complainant's HP trademark. The disputed domain name incorporates Complainant's famous HP trademark in its entirety, adding the term "drivers" which means software used to operate computer hardware. The foregoing additions are insufficient to negate confusing similarity between Respondent's domain name and Complainant's HP mark, especially where the added term merely describes a product Complainant provides under this mark,
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by Complainant's HP mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for legitimate noncommercial or fair use. Respondent is not affiliated with Complainant in any way; is not licensed by Complainant; and is not an authorized vendor, supplier or distributor of Complainant's goods and services.
The disputed domain name resolves to a site featuring pop up ads and links to third-party websites which feature products and services offered by parties unaffiliated with Complainant, including Complainant's customers. Presumably, Respondent receives compensation for directing consumers to there third-party sites and for displaying pop up ads. This is not a use in connection with a bona fide offering of goods or services. Respondent has taken Complainant's HP trademark without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain.
Respondent registered and is using the disputed domain name in bad faith. At the time Respondent registered the domain name, Complainant's HP trademark was well-known and famous and familiar to countless customers. The HP trademark is widely associated with software, including drivers. It is clear that Respondent was not only familiar with Complainant's HP trademark but intentionally adopted a name incorporating the famous HP trademark in order to create an association with Complainant and its products and services. This is evidence of bad faith.
By linking the its site to third parties not affiliated with Complainant, including parties that promote competing products, Respondent presumably receives revenue from these links and this is evidence of bad faith.
Respondent is a private limited company having its office in Mumbai, India and claims to be the owner, by assignment, of a trademark known as "HDP River." On or about November 27, 2006, Respondent applied to the trademark registry in India for registration of the trademark. The application was granted and a Certificate of Registration was issued in March, 2008. Respondent claims to have acquired the rights in the domain name "hpdrivers.com" in or around September 2008. Its acquisition and use is bona fide and not in bad faith.
Respondent denies that the domain name is confusingly similar to Complainant's trademark and claims rights and legitimate interest in the domain name. Respondent denies acquisition of the domain name to mislead or deceive or divert internet users for commercial gain.
Complainant has failed to prove each of the three elements as laid down in the Policy. Respondent has clearly proved its rights and legitimate interest in the domain name.
C. Additional Submissions
1. The nominal owner of the HPD RIVER Registration is Vanita Sehgal, not Respondent. The Response claims ownership by assignment, but Respondent has not provided an assignment document or evidence of recordation. In addition, the address of record for the trademark registration does not match Respondent’s address in WHOIS, and there is no evidence Vanita Sehgal is a director of Respondent.
2. The HPD RIVER Registration was filed in 2006 and issued in 2008, many years after the disputed domain name was registered in 2002 and well after Complainant established trademark rights in India and internationally. See Exhibits A and E to the Complaint.
3.  As such, the HPD RIVER Registration cannot support a claim of legitimate rights or good faith registration. See Société de Bains de Mer et du Cercle des Etrangers à Monaco Ltd. v. Piranha Interactive Ltd., D2000-1333 (WIPO, Dec., 18, 2000) (declining to find a legitimate interest or good faith based upon a Tunisian trademark registration that issued after the domain name was registered and after the complainant registered its mark).
4. Respondent claims that it acquired the domain name in September, 2008, after acquiring the HPD RIVER Registration from its Director. Response at ¶5. However, historical WHOIS records do not reflect any changes in ownership during 2008. See Annex 1 (emphasis added). Accordingly, bad faith should be judged as of the original 2002 registration date.
5. Even if the HPD RIVER Registration was timely filed and is owned by Respondent, it does not create a legitimate interest under the Policy. “To establish cognizable rights, the overall circumstances should demonstrate that the [trademark] registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi, D2000-0847 (WIPO October 12, 2000). “Where, as here, it appears likely that a trademark [registration] was obtained to shield a domain name from an unfavorable UDRP result, a Panel should not be bound by an immutable rule that would, if followed blinded, work an inequity on one of the parties or pervert the objectives of the Policy.” Goldman, Sachs & Co. v. Lis Wevers c/o Goldman Advertising Services BV, FA0610000812109 (Nat. Arb. Forum Nov. 22, 2006)(“Respondent’s ‘trademark’ seems to be a sham…. Respondent may have rights in its registered trademark, but it does not necessarily have any rights in the at-issue domain name.”).
6. In this case, there is no evidence of bona fide use of the registered mark, or of legitimate interest in the domain name, and there is ample evidence of bad faith, e.g.:
a. Despite this UDRP complaint, the disputed domain continues to resolve to a site that promotes products and services of Complainant’s competitors (e.g., Canon, Dell, Epson and Xerox). See Annex 2 (screen shots taken January 12, 2010)(emphasis added). The home page for Respondent’s site currently references software drivers at least 16 times, and supplies a hard link to “HP Driver.” Id. Respondent’s site contains no mention of HPD RIVER, or any other rivers. Id. In fact, Respondent’s site has never displayed the purportedly registered HPD RIVER trademark despite having been registered for over 7 years. See Annex 3 (landing pages for Respondent’s web site taken from Wayback Machine/<archive.org>) (emphasis added). Obviously Respondent cannot rely on a registration for HPD RIVER to defend the legitimacy of its use of the domain name to mean HP DRIVER.
b. Furthermore, Respondent has engaged in a pattern of registering abusive domain name registrations:
i. Venkateshwara Distributor Private Limited has been found to have registered domain names in bad faith and without legitimate interest in at least four UDRP decisions: Pacific Sunwear.com Corp v. Venkateshwara Distributor Private Limited, FA0908001279901 (Nat. Arb. Forum Sep. 29. 2009)(<pacsum.com>); Cricket Comm., Inc. v. Venkateshwara Distributor Private Limited c/o Caas Serviced Office Solutions, FA0910001290435 (Nat. Arb. Forum Dec. 2, 2009)(<cricketcommunication.com>); Lernco, Inc. v. Venkateshwara Distributor Private Limited, D2009-1012 (WIPO Sep. 12, 2009)(<lernersnyc.com>); and H Samuel Limited v. PrivacyProtect.org and Venkateshwara Distributor Private Limited, D2009-0973 (WIPO Sep. 7, 2009)(<hsamuels.com>).
ii. Respondent owns or is associated with a variety of plainly infringing domain names, including <christaindior.com>, <itunesdownload.com>, <countrywideloans.com>, <ljnksys.com>, <travelocit.com>, <walmarrt.com>, and <wwwnaic.org>. See Annex 4 (emphasis added).
This is evidence of bad faith under the Policy. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
c. In addition, as can be seen from Annex 1, Respondent has periodically offered <hpdrivers.com> for sale. Acquiring a name in order to sell it is not a legitimate interest or bona fide use and is evidence of bad faith. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); 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).”); and 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”).
7. With regard to Respondent’s contention in ¶5 of the Response that <hpdrivers.com> is not confusingly similar to the trademark HP, Complainant notes two recent decisions that found likelihood of confusion under very similar facts: Hewlett-Packard Dev. Co., L.P. and Hewlett-Packard Co. v. Wu Wenbing, FA0911001294944 (Nat. Arb. Forum Dec. 31, 2009)(finding <hpdrivers.org> confusingly similar to HP and awarding transfer); and Hewlett-Packard Dev. Co., L.P. and Hewlett-Packard Co. v. HaiZhi Zheng, FA0911001293311 (Nat. Arb. Forum Dec. 23, 2009)(finding <hpdriverscenter.com> confusingly similar to HP and awarding transfer).
8. In sum, Respondent is harming Complainant by promoting the goods and services of Complainant’s competitors using Complainant’s famous HP trademark. Respondent displays HP DRIVER, not HPD RIVER on its site, and the site’s content plainly relates to Complainant and Complainant’s business. As such, the existence of a registration for HPD RIVER has no bearing on legitimacy or bad faith.
For the reasons above, Complainant respectfully requests that the Panel order the transfer of <hpdrivers.com> to Complainant.
1- The disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name was registered and is being used in bad faith.
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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent submitted an Additional Submission after the deadline for submissions had passed, so it has been deemed deficient by the National Arbitration Forum pursuant to Supplemental Rule 7. The Panel has decided not to consider the submission as it neither set out any new facts or other circumstances that would justify the late submission. Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) (choosing not to consider either the complainant’s or the respondent’s additional submissions that were received after the stated deadline where neither set out any new facts or other circumstances that would justify the late submissions).
Complainant develops, markets, and sells inkjet and laser printers, printer supplies, computer related products and services under its HP mark. Complainant claims it has registered the HP mark numerous times both with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,116,835 issued January 24, 1977) and with India’s Trademark Registry (e.g., Reg. No. 492,588 issued June 10, 1988). Previous panels have held that registration with a federal trademark authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <hpdrivers.com> domain name is confusingly similar to Complainant’s HP mark. Respondent simply adds the generic term “drivers” and the generic top-level domain (“gTLD”) “.com.” to Complainant’s HP mark. Previous panels have concluded that the additions of a generic term and gTLD fail to adequately distinguish a disputed domain name from a 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 Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds Respondent’s <hpdrivers.com> domain name is confusingly similar to Complainant’s HP mark in accordance with Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, 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.”).
Respondent is not commonly known by the <hpdrivers.com> domain name. While Respondent claims it has developed rights in the HPD RIVER mark, Respondent has not provided sufficient evidence of that fact. In Complainant’s Additional Submission, Complainant alleges that Respondent does not provide evidence that Vanita Sehgal, the trademark registrant, gave the mark to the Respondent or that Vanita Sehgal is the director of Respondent. Complainant further asserts that the WHOIS information identifies the domain name registrant as “Venkateshwara Dist. Private Limited.,” which Complainant contends is not similar to Vanita Sehgal or the <hpdrivers.com> domain name. Complainant also claims the WHOIS information does not contain evidence of the alleged change of ownership of the disputed domain name from Vanita Sehgal to Respondent in 2008. The Panel finds that Respondent has not provided sufficient evidence that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used); 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.”).
Even if Respondent did receive Vanita Sehgal’s trademark rights, the HPD RIVER mark was filed well after Complainant’s HP mark registration. Trademarks must be registered for good faith in order to satisfy Policy ¶ 4(c)(ii). See Goldman, Sachs & Co. v. Wevers, FA 812109 (Nat. Arb. Forum Nov. 22, 2006) (finding that Respondent was not commonly known by the disputed domain name and that “Respondent’s ‘trademark’ seems to be a sham,” based off the fact that Respondent’s company was not known by the trademark, Respondent had not provided evidence of how it used the trademark, and Respondent had not provided other evidence besides the trademark allegations to prove it was commonly known by the disputed domain name); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (concluding that while Respondent alleged trademark rights in THE RENAISSANCE COCHIN mark, Complainant’s previous registration of its RENAISSANCE mark and its global use supported a finding that Respondent was not commonly known by the THE RENAISSANCE COCHIN mark for the current proceedings). The Panel may find Respondent has not established that it is commonly known by the <hpdrivers.com> domain name under Policy ¶ 4(c)(ii).
Respondent uses the <hpdrivers.com> domain name to resolve to a parked website
containing hyperlinks to Complainant’s competitors in the computer related
products and services business.
Complainant alleges Respondent receives click-through fees from these
links. Previous panels have held that a
respondent’s use of a domain name to feature click-through links to a
complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
In Complainant’s Additional
Submission, Complainant alleges Respondent’s use of the <hpdrivers.com> domain name is a part of a pattern of bad faith use and
registration. Complainant claims
Respondent has been a respondent in numerous UDRP proceedings in which
disputed domain names were transferred from Respondent to the complainants in
those cases. See Pacific Sunwear.com Corp. v. Venkateshwara
Ltd., FA 1279901 (Nat. Arb.
Forum Sep. 29, 2009); see also Cricket
Comm., Inc. v. Venkateshwara Distrib. Private Ltd., FA 1290435 (Nat.
Arb. Forum Dec. 2, 2009).
The Panel finds this constitutes a pattern of bad faith registration and
use of domain names under Policy ¶ 4(b)(ii). See Westcoast
Contempo Fashions Ltd. v.
Complainant claims Respondent’s <hpdrivers.com> domain name resolves to a website containing a directory of hyperlinks that resolve to third-parties. Complainant asserts that some of the third-parties directly compete with Complainant in the computer related products and services industry. Complainant claims that Respondent’s use of the disputed domain name disrupts Complainant’s computer related products and services Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar website. Thus, the Panel finds Respondent’s use of the <hpdrivers.com> domain name does disrupt Complainant’s computer related products and services business and constitutes bad faith registration and use pursuant to 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent receives click-through fees from the hyperlinks relating to Complainant’s competitors as well as the unrelated third-party websites. Complainant argues that Internet users may become confused as to Complainant’s affiliation with and sponsorship of the third-party hyperlinks and website resolving from the <hpdrivers.com> domain name. The Panel finds that Respondent’s receipt of click-through fees constitutes bad faith registration and use under 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpdrivers.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: February 9, 2010
 For example, Complainant’s India Registration No.’s 492588 and 492592 for HP issued on June 10, 1988, well before any priority date Respondent claims in this proceeding. See Exhibit E to the Complaint.