Hewlett-Packard Development Company v. Simon Gong
Claim Number: FA1009001347937
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 Simon Gong ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpexams.com>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2010; the National Arbitration Forum received payment on September 22, 2010.
On September 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpexams.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@hpexams.com. Also on September 24, 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 October 28, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <hpexams.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpexams.com> domain name.
3. Respondent registered and used the <hpexams.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, was founded in 1939. Complainant uses its HP mark to offer computer-related goods and services including technical training and exam preparation services. Complainant holds numerous trademark registrations with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,116,835 issued April 24, 1979) and numerous trademark registrations in China, the country of respondent’s residence, with China’s State Intellectual Property Office (“SIPO”) (e.g. Reg. No. 1,330,533 issued November 7, 1999).
Respondent, Simon Gong, registered the <hpexams.com> domain name on August 21, 2008. The disputed domain name resolves to a website which sells and promotes the sale of third-party exam preparation materials directly competing with Complainant exam preparation business.
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 contends it has established rights in the HP mark. Previous panels have found that trademark registration with a federal trademark authority is sufficient to establish rights in a mark. 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 registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant holds multiple trademark registrations of the HP mark with the USPTO (e.g. Reg. No. 1,116,835 issued April 24, 1979) and multiple trademark registrations in China, the country of Respondent’s residence, with China’s SIPO (e.g. Reg. No. 1,330,533 issued November 7, 1999). Therefore, the Panel finds Complainant has established rights in the HP mark through Complainant’s trademark registrations with the USPTO and China’s SIPO.
Complainant contends that Respondent’s <hpexams.com> domain name is confusingly similar to Complainant’s HP mark. The disputed domain differs from Complainant’s HP mark only by the addition of the descriptive word “exams” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic word fails to properly 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). The Panel also finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See 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 that Respondent’s <hpexams.com> domain name is confusingly similar to Complainant’s HP mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent lacks rights and legitimate interests in the <hpexams.com> domain name. Previous panels have found that when a complainant establishes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has established a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <hpexams.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <hpexams.com> domain name. Complainant asserts that it has not authorized or licensed Respondent to use or register the <hpexams.com> domain name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Simon Gong,” which is not similar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <hpexams.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the <hpexams.com> domain name to redirect Internet users to a website which sells and promotes the sale of products and services in direct competition with Complainant’s exam preparation business. Respondent likely benefits from the sale of these products and services. The Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark to operate a website which features goods and services in competition with Complainant’s business is not 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <hpexams.com> domain name resolves to a website featuring products and services or links to products and services in direct competition with Complainant’s exam preparation business. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to purchase exam preparation materials from Complainant may purchase the same materials from a competitor as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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).
The Panel infers that Respondent benefits from the sale of products and services from the resolving website. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website, and featured products and services. Respondent attempts to profit from this confusion through commercial gain. The Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpexams.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 4, 2010
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