Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. yuanyuan
Claim Number: FA1102001370593
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 yuanyuan (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpguides.com>, registered with Name.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 1, 2011.
On February 2, 2011, Name.com confirmed by e-mail to the National Arbitration Forum that the <hpguides.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2011 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@hpguides.com. Also on February 3, 2011, 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 28, 2011, 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 is an information technology company with revenue totaling $126 billion in 2010.
Complainant manufactures and sells computer products under its HP trademark and service mark in more than 170 countries, and has been operating within the United States since 1939.
Complainant owns registrations for its HP trademark and service mark on file with the United States Patent and Trademark Office ("USPTO") (including Reg. No. 1,116,835, issued April 24, 1979).
Respondent registered the disputed <hpguides.com> domain name on November 11, 2005.
Respondent’s domain name resolves to a website with the title banner, “HP Certifications Exams Training Guides,” that promotes the sale of third-party exam preparation guides in competition with materials and services offered by Complainant.
Respondent’s <hpguides.com> domain name is confusingly similar to Complainant’s HP mark.
Respondent is not commonly known by the HP trademark or service mark or the <hpguides.com> domain name.
Respondent is not affiliated with Complainant in any way, that Respondent is not licensed by Complainant to use Complainant’s HP trademark or service mark.
Respondent does not have any rights to or legitimate interests in the domain name <hpguides.com>.
Respondent registered and uses the <hpguides.com> 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 a 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 established rights in its HP trademark and service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registration).
Respondent’s <hpguides.com> domain name is confusingly similar to Complainant’s HP mark. The disputed domain name contains the entire mark, adding only the generic term “guides”, which relates to Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These differences between the mark and the disputed domain name are insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a complainant combined with a generic word or term); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); further see 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case that Respondent does not have rights to or legitimate interests in the contested domain name. Thereupon the burden of proof shifts to Respondent to demonstrate that it nonetheless has such rights or interests. 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.
Complainant has met its burden of proof under this head of the Policy. Therefore, and owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
However, 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 first note that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the HP mark or the <hpguides.com> domain name, that Respondent is not affiliated with Complainant in any way, and that Respondent is not licensed by Complainant to use Complainant’s HP trademark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “yuanyuan”, which does not resemble the contested domain name. On this record, we are compelled to conclude that Respondent is not commonly known as the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested 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 a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We next observe that Complainant argues, without objection from Respondent, that Respondent is using the disputed domain name to market third-party exam preparation guides in competition with materials and services offered by Complainant. In the circumstances presented, it is evident that Respondent intends to profit from this use of the domain. Such use of the subject domain name, which is confusingly similar to Complainant’s HP trademark and service mark, is evidence that Respondent does not possess rights to or legitimate interests in the domain, in that it 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
The Panel thus finds that proof the requirements of Policy ¶ 4(a)(ii) have been satisfied.
The website resolving from Respondent’s <hpguides.com> domain name competes with Complainant’s exam preparation services by featuring links to the websites of third-parties offering the same services. Respondent is thus diverting potential customers of Complainant to its own website offering the same products and services. Such use is evidence of bad faith registration and use of the domain under 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding under Policy ¶ 4(b)(iii) that that respondent registered and used the domain name to disrupt that complainant’s business).
Further, Respondent plainly intends to profit from its use of the disputed domain name in the manner alleged in the Complaint by creating a likelihood of confusion between the domain name and Complainant’s mark. This is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrated that respondent’s bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that a respondent registered and used the <wwfauction.com> domain name in bad faith where the domain name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <hpguides.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 1, 2011
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