national arbitration forum

 

DECISION

 

Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v Domain Manager

Claim Number: FA1106001392601

 

PARTIES

Complainants are Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (collectively “Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Domain Manager (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hptablet.com>, registered with Moniker.com.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 8, 2011.

 

On June 8, 2011, Moniker.com confirmed by e-mail to the National Arbitration Forum that the <hptablet.com> domain name is registered with Moniker.com and that Respondent is the current registrant of the name.  Moniker.com has verified that Respondent is bound by the Moniker.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 June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@hptablet.com.  Also on June 9, 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 July 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <hptablet.com> domain name is confusingly similar to Complainant’s HP mark.

 

2.    Respondent does not have any rights or legitimate interests in the <hptablet.com> domain name.

 

3.    Respondent registered and used the <hptablet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainants, Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (collectively “Complainant”) are large global providers of computer products and services.  Hewlett-Packard Development Company, L.P. is a subsidiary of Hewlett-Packard Company.  Complainant owns a myriad of trademark registration for its HP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 issued April 24, 1979).

 

Respondent, Domain Manager, registered the disputed domain name on February 18, 2009.  The disputed domain name resolves to a site offering links to third-parties who are Complainant’s competitors in the computer hardware industry. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts its rights in the mark based upon registrations with the USPTO.  Complainant has provided and the Panel has verified certificates of registration for the HP mark from the USPTO.  Therefore, the Panel finds Complainant has established its rights in the HP mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No. 1,116,835 issued April 24, 1979).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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.”); see Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant also asserts that Respondent’s disputed domain name is confusingly similar to its HP mark.  The disputed domain name includes the entire mark while adding the descriptive term “tablet” which suggests a relationship with Complainant’s business and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a term descriptive of Complainant’s business and a gTLD do not differentiate the disputed domain name from the HP mark.  Therefore, Respondent’s disputed domain name is confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i).  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.”); see also 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.”).

 

The Panel finds Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent now bears the burden of proving its rights or legitimate interests in the disputed domain name because the Panel finds Complainant has met its initial burden of proof by making a prima facie case showing Respondent’s lack of rights and legitimate interests in the disputed domain name.  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.”).  Respondent has failed to offer any submissions in the matter which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name.  See American 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.”).

 

Complainant asserts Respondent is not commonly known by the disputed domain name.  Respondent has offered no evidence to show that it is commonly known by the disputed domain name.  Nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii) based on the WHOIS information and the lack of other evidence on record.  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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.  The disputed domain resolves to a site offering links to third-party websites which are all competitors of Complainant’s in the computer industry.  The Panel finds that using the disputed domain name to direct Internet users to a website which offers links to competing sites does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does 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).”).

 

The Panel finds Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s disputed domain name disrupts Complainant’s business thereby constituting bad faith registration and use.  Respondent’s disputed domain name resolves to a site which offers links to Complainant’s competitors.  Internet users may be diverted to the linked sites and purchase goods from those companies rather than Complainant.  The Panel finds that this use does in fact disrupt Complainant’s business and provides affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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)).

 

Complainant also argues that Respondent is gaining commercially from the disputed domain name constituting bad faith registration and use.  The disputed domain name resolves a site offering links to third-party websites, many of which are operated by Complainant’s competitors.  Respondent presumably collects click-through fees from the linked sites when an Internet user is diverted from Respondent’s website. The Panel finds that this use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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)(iv) 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 finds Complainant has established Policy ¶ 4(a)(iii).

 

 

 

 

 

 

 

 

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hptablet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  July 7, 2011

 

 

 

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