Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Zhibin Zhou
Claim Number: FA1001001301744
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 Zhibin Zhou (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hpnetbooks.com>, registered with Traffic Names, Incorporated.
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 January 6, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website
On January 6, 2010, Traffic Names, Incorporated confirmed by e-mail to the National Arbitration Forum that the <hpnetbooks.com> domain name is registered with Traffic Names, Incorporated and that Respondent is the current registrant of the name. Traffic Names, Incorporated has verified that Respondent is bound by the Traffic Names, Incorporated 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 January 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hpnetbooks.com. Also on January 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <hpnetbooks.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpnetbooks.com> domain name.
3. Respondent registered and used the <hpnetbooks.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, develops, markets, and sells computers, printers, software, and related products. Complainant was founded in 1939 and has offered its products under its HP mark 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).
Respondent, Zhibin Zhou, registered the <hpnetbooks.com> domain name on December 30, 2009. The disputed domain name resolves to a website displaying click-through links to third-party websites, including some that 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.
Previous panels have found that a complainant establishes rights in a mark through registration of the mark with a governmental trademark authority. Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the HP mark through 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 <hpnetbooks.com> domain name is confusingly similar to
Complainant’s HP mark. The disputed
domain name incorporates Complainant’s entire mark and simply adds the
descriptive term “netbooks,” which describes Complainant’s netbook products. The disputed domain name further adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds the addition of a descriptive term and a gTLD fail to
adequately distinguish the disputed domain name from Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5,
2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in
its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion
to complainant’s business.”); 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).”); see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights to or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden of proof
shifts to Respondent to prove it does have such 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 made a prima
facie case in support of its contentions and that 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 still examines the record to determine if
evidence in the submission suggests on its face that Respondent has rights to
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The
WHOIS information lists the registrant as “Zhibin Zhou.” Complainant alleges
that Respondent is not associated with Complainant or authorized to use
Complainant’s HP mark. Therefore, the
Panel finds 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 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 Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s registration of the disputed domain name to link Internet users to a website displaying links to competing third-party websites constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
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.
The disputed domain name then and redirects these users to competing third-party
websites, presumably collecting click-through fees through this use. Respondent is attempting to commercially gain
through Internet users’ confusion as to Complainant’s affiliation with the
disputed domain name. Thus, the Panel
finds 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 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 <hpnetbooks.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 17, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum