Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. techXams / techXams Inc
Claim Number: FA 1359519
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 techXams / techXams Inc (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hp-exams.info>, registered with Publicdomainregistry.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2010; the National Arbitration Forum received payment on November 19, 2010.
On November 19, 2010, Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <hp-exams.info> domain name is registered with Publicdomainregistry.com and that Respondent is the current registrant of the domain name. Publicdomainregistry.com has verified that Respondent is bound by the Publicdomainregistry.com 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 November 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@hp-exams.info. Also on November 22, 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 December 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant operates one of the world’s largest IT companies.
Complainant also offers technical training and certification exam training in various categories.
Complainant offers its goods and services under the HP trademark and service mark.
Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,116,835, issued April 24, 1979).
Respondent registered the disputed domain name <hp-exams.info> on April 13, 2008.
The domain name resolves to a website that sells IT exam preparation materials.
Respondent’s <hp-exams.info> domain name is confusingly similar to Complainant’s HP mark.
Respondent is not commonly known by the disputed domain name, and Complainant has not given Respondent permission to use the HP mark.
Respondent does not have any rights to or legitimate interests in the <hp-exams.info> domain name.
Respondent registered and uses the <hp-exams.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the HP trademark and service mark for purposes of Policy ¶ 4(a)(i) by virtue of its mark registration with the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (e.g., Nat. Arb. Forum July 12, 2006) (finding that complainants had established rights in marks where the marks were registered with a trademark authority); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s national trademark registration established its rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s domain name is confusingly similar to Complainant’s HP mark. The domain name merely adds a generic term separated from the mark by a hyphen and the required generic-top-level domain (“gTLD”). Generic terms, such as “exams”, do not distinguish a domain name from a preexisting mark, especially where, as here, that generic term describes Complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Similarly, the hyphen that separates the mark from the inserted generic term is irrelevant to a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore concludes that Respondent’s <hp-exams.info> domain name is confusingly similar to Complainant’s HP mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <hp-exams.info> domain name. Once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in its contested domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case under this head of the Policy. Owing to Respondent’s failure to respond to the Complaint, we are therefore entitled to presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):
A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.
Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name Complainant has not given Respondent permission to use the HP mark. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that a respondent had no rights to or legitimate interests in domain names because it was not commonly known by the domains and that respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant had not authorized or licensed that respondent’s use of its mark in a domain name).
We also observe that there is no dispute as to Complainant’s allegation that Respondent is using the contested domain name to divert Internet users away from the website of Complainant. This use of the domain name is not a bona fide offering of goods or services or a noncommercial or fair use. Rather it appears plain that Respondent registered the disputed domain name in order to divert Internet users looking for Complainant’s exam preparation materials to its own website where it offers competing products. In the circumstances here presented, we may comfortably presume that Respondent profits from this activity. This is evidence that Respondent’s use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s own website for commercial gain does not constitute either 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)).
The Panel thus finds that Complainant has met the Requirements of Policy ¶ 4(a)(ii).
Respondent’s registration and use of the disputed domain name to compete with, and thus to disrupt, Complainant’s business is evidence of a bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that a respondent’s use of the <arizonashuttle.net> domain name, containing a complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to that respondent’s website offering competing travel services came within the meaning of Policy ¶ 4(b)(iv)).
Respondent is using the disputed domain name to confuse Internet users into thinking that Respondent’s website is the source of, or affiliated with, Complainant’s exam preparation material in order to attract them to its website for commercial gain. This is evidence of bad faith registration and use of the domain. 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 a respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to that respondent’s website, which offered computer products and services competing with the business of a complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent was diverting Internet users searching for information about a complainant to its own website, likely profiting in the process).
Accordingly, the Panel finds that Respondent’s use of the contested domain name to attract Internet users as alleged is evidence of a bad faith registration and use of the domain pursuant to ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <hp-exams.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2010
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