Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Above.com Domain Privacy
Claim Number: FA1106001393391
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 Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hptouchscreen.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2011; the National Arbitration Forum received payment on June 14, 2011.
On June 15, 2011, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <hptouchscreen.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@hptouchscreen.com. Also on June 15, 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 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <hptouchscreen.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hptouchscreen.com> domain name.
3. Respondent registered and used the <hptouchscreen.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company, hereinafter Complainant, are a subsidiary and its corresponding parent company operating in the computer software and hardware industries. Complainant owns a vast array of trademark registrations for the HP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 issued April, 24 1979). Complainant uses the mark as its worldwide brand name to both promote and sell its wares.
Respondent, Above.com Domain Privacy, registered the disputed domain name on November 24, 2009. The disputed domain name resolves to a website offering links and advertisements for Complainant’s competitors in the computer products industry.
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 asserts that it has established its rights in the HP mark by registering the mark with the USPTO. Previous panels have determined registering a mark with the USPTO will confer upon the registrant defendable rights in said mark. 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 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 also asserts Respondent’s disputed domain name is confusingly similar to its HP mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and the term “touchscreen,” which is descriptive of Complainant’s own products. The Panel finds that adding a gTLD and a term descriptive of Complainant’s goods do not remove the disputed domain name from the realm of confusingly similarity. Therefore, Respondent’s disputed domain name is confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i). 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.”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) has been established.
The Panel finds Complainant has met its initial burden of proof by making a prima facie case showing Respodent’s lack of rights and legitimate interests in the disputed domain name. Because of this finding, Respondent now bears the burden of proving its rights or legitimate interests in the disputed domain name under 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.”). Respondent has failed to file any response in this matter let alone rebut Complainant’s prima facie case, allowing this panel to assume it lacks rights and 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.”). Nonetheless, the Panel will still examine the entire record before making a determination on Respondent’s rights and legitimate interests in the disputed domain name according to the parameters listed in Policy ¶ 4(c).
Complainant claims 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. The WHOIS information also includes nothing that would suggest a direct relationship between Respondent and the disputed domain name. Thus, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 claims Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors in the computer hardware and software industry. The Panel infers that Respondent generates click-through fees by diverting Internet users to the linked sites. Therefore, the Panel finds Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial use of the disputed domain name under 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 Policy ¶ 4(a)(ii) has been established.
Complainant alleges that the promotion of its competitors via the disputed domain name disrupts its business constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Internet users may arrive at one of the linked sites and purchase competitors’ goods rather than Complainant’s. The Panel finds the disputed domain name does disrupt Complainant’s business providing affirmative evidence of bad faith registration and use under 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)).
Complainant also alleges that the collection of click-through fees for diverting Internet users through the confusingly similar domain name constitutes bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Internet users arriving at the site may become confused due to the confusing similarity between the disputed domain name and Complainant’s mark and think that the two are somehow affiliated. Then, clicking on the links offered allows Respondent to gain commercially from the confusion created. Therefore, the Panel finds Respondent has registered and used the confusingly similar domain name to commercially gain and did so in bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hptouchscreen.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 23, 2011
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