Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA0912001299747
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 RAKSHITA MERCANTILE PRIVATE LIMITED
(“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hpaustralia.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 18, 2009.
On December 18, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <hpaustralia.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 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@hpaustralia.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 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <hpaustralia.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpaustralia.com> domain name.
3. Respondent registered and used the <hpaustralia.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, is one of the world’s
largest information technology (“IT”) companies. Complainant holds numerous registrations for
its HP mark with various governmental trademark authorities throughout the
world, including the Intellectual Property Office of India (e.g., Reg. No. 492588 issued June 10,
1988) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 issued April
24, 1979).
Respondent registered the <hpaustralia.com> domain name on December 20, 2006. The disputed domain name resolves to a website features pop-up advertisements and hyperlinks to third-party websites, some of which directly compete with Complainant. In addition, Respondent is attempting to sell the disputed domain name on a third-party website.
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.
The Panel finds that Complainant has established rights in the HP mark under Policy ¶ 4(a)(i) through its numerous registrations of the mark with various governmental trademark authorities throughout the world, including the Intellectual Property Office of India (e.g., Reg. No. 492588 issued June 10, 1988) and the USPTO (e.g., Reg. No. 1,116,835 issued April 24, 1979). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <hpaustralia.com>
domain name contains Complainant’s entire HP mark, adds the geographic term “
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Upon making such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”). Although Respondent has not alleged that has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the <hpaustralia.com> domain name lists “RAKSHITA MERCANTILE PRIVATE LIMITED” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain. Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Moreover, Complainant asserts that it has licensed or otherwise authorized Respondent to use the HP mark. Therefore, the Panel finds that Respondent is not commonly known by the <hpaustralia.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <hpaustralia.com>
domain name resolves to a website featuring pop-up advertisements and
hyperlinks to third-party websites, some of which directly compete with
Complainant. The Panel presumes that
Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s
use of the disputed 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
Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007)
(holding that the operation of a pay-per-click website at a confusingly similar
domain name was 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
also 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 Wells Fargo & Co.
v. Party Night Inc., FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the
respondent’s use of “confusingly similar derivatives of Complainant’s WELLS
FARGO mark to divert Internet users to websites featuring pop-up
advertisements” was not a bona fide offering of goods or services).
Respondent is attempting to sell the <hpaustralia.com> domain name on a third-party website. The Panel finds that Respondent’s offer to sell the disputed domain name is further evidence that it lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s aforementioned attempt to
sell the disputed domain name on a third-party website constitutes bad faith
registration and use under Policy ¶ 4(b)(i).
See 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).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered
domain names for sale).
Since Respondent
registered the <hpaustralia.com>
domain name on December 20, 2006, the disputed domain name has resolved to a
website that features pop-up advertisements hyperlinks to third-party websites,
some of which directly compete with Complainant. The Panel finds that Respondent’s use of the
disputed domain name in this manner constitutes 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 Am. Airlines, Inc. v.
The Panel finds that Respondent’s use of the confusingly
similar <hpaustralia.com>
domain name creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain name. The Panel
further finds that Respondent is commercially gaining from this likelihood of
confusion through its presumed receipt of click-through fees, which constitutes
bad faith registration and use under 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 <hpaustralia.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 9, 2010
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