Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. lily young
Claim Number: FA1107001397796
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 lily young (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webospivot.com>, registered with GoDaddy.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 12, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <webospivot.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 July 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@webospivot.com. Also on July 13, 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.
A timely Response was received and determined to be complete on August 1, 2011.
On August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Founded in 1939, HP is the world's largest IT company, with revenue totaling $126 billion for fiscal 2010. HP owns various proprietary marks for its business, including the marks webOS™ and webOS PIVOT™.
WEBOS is registered in Mexico (Reg. No. 1205746) and PALM WEBOS is registered in numerous countries. HP has applied to register HP WEBOS in the United States. In addition, substantial use and press coverage has caused the consuming public to recognize the term WEBOS as denoting HP’s mobile operating system, and accordingly WEBOS has acquired secondary meaning and common law rights.
On June 3, 2011, HP applied to register WEBOS PIVOT in the United States Patent and Trademark Office. Beginning at least as early as June 13, 2011, there was substantial press and speculation regarding HP’s new name based on publicity surrounding its trademark application. HP formally announced WEBOS PIVOT on June 23, 2011.
As a result of this highly publicized launch, WEBOS PIVOT has acquired secondary meaning and common law rights sufficient to be recognized under the Policy.
The disputed domain name is confusingly similar to Complainant’s WEBOS and WEBOS PIVOT trademarks. Aside from the generic top level domain “.com,” the disputed domain name is identical to Complainant’s WEBOS PIVOT trademark. The disputed domain also incorporates Complainant’s registered WEBOS trademark in its entirety, and is confusingly similar to PALM WEBOS and HP WEBOS. The differences in each case are insufficient to distinguish Respondent’s domain name and Complainant’s marks. If anything, combining two names to form a combination used by Complainant makes confusion more likely.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s WEBOS or WEBOS PIVOT trademarks, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as lily young. Respondent is not commonly known by Complainant’s WEBOS or WEBOS PIVOT trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s WEBOS or WEBOS PIVOT trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
The disputed domain name resolves to a pay-per-click site that promotes competing mobile operating systems, including Windows Phone and Android. This is not 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).
Respondent is attempting to sell the domain name by soliciting purchase offers at its web site. Acquiring a name in order to sell it is not a legitimate interest or bona fide use.
Respondent registered the disputed domain name in bad faith. At the time Respondent registered the disputed domain name, Complainant’s WEBOS mark was well-known, and the unique and distinctive trademark WEBOS PIVOT had already been publicized. It is clear from the disputed domain itself, and the timing of the registration, that Respondent was not only familiar with Complainant’s trademarks at the time of registration, but intentionally adopted a name combining the WEBOS and WEBOS PIVOT marks in order to create an association with Complainant and to prevent Complainant from reflecting its mark in a corresponding domain name.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
The disputed domain name promotes and links to third parties not affiliated with Complainant, including competing mobile operating systems (such as Android and Windows 7). Presumably Respondent receives revenue from these links, and this is evidence of bad faith.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's WEBOS and WEBOS PIVOT trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s and third-party products and services. This constitutes bad faith under ¶ 4(b)(iv) of the Rules.
Respondent registered the disputed domain on the same day that PreCentral and others first reported on HP’s U.S. trademark filing for WEBOS PIVOT. This reflects opportunistic bad faith.
The domain is being offered for sale and this is a well-established indication of bad faith.
B. Respondent
Respondent contends as follows:
The disputed domain name is not identical or confusingly similar to a mark in which Complainant alleges enforceable rights. The disputed domain name is comprised of common and generic or descriptive terms, including webos and pivot. The OS word means operating system. The pivot word is also a very common word too; anyone can use this word legally. WEBOS is also a very common word, and so many people use this word for their product. The traditional OS is based on the PC, if the operation system is based on the web, it is called WEBOS.
Complainant’s examples about Microsoft are different than in this case. Microsoft had used microsoft.com for a long time, but in this case, Complainant doesn’t have webos.com. So registering a domain name including WEBOS is legitimate.
Complainant asserted that the WEBOS PIVOT mark has the status of "NEW APPLICATION - RECORD INITIALIZED NOT ASSIGNED TO EXAMINER." from the USPTO. So Complainant has no right to prohibit others from registering WEBOSPIVOT as a domain name and using it.
Complainant filed for trademark registration on June 3, 2011, but Respondent register the domain name on June 14, 2011. The USPTO needs 3 months to examine a mark after the filing date. Therefore, Respondent registration and use of <webospivot.com> is legitimate.
Furthermore, the trademark registration is based on a particular classification. A trademark registration for one class cannot forbid others to register a trademark in other classes.
Additionally, before Respondent registered the domain name, the WEBOSPIVIOT word did not have much visibility. Complainant’s supporting documents are for a time after Respondent registered the domain name. Respondent registered the domain name at June 14, 2011, but the Complainant's press release was on June 23, 2011 and July 1, 2011. This shows that before the domain name was registered, the WEBOSPIVOT word was not well known to the public.
Respondent prepared to start a site about the web operating system. The domain name was registered recently. But Respondent is one person and has no money to create a site immediately. In the meantime, Respondent uses the domain name in connection with a directory website displaying numerous third-party links temporarily and is ready to buy the space to start a site in future.
Respondent doesn’t want to sell the domain name. The directory website indicated the words "inquire the domain name" are just the host website's behavior. Respondent has rights in the disputed domain name because before Respondent registered the domain name, Respondent did nothing about the trademark until it received the complaint from the Complainant. Respondent questions why Complainant didn’t register the domain name since it claims trademark rights in its name. Complainant’s trademark application was 11 days before the domain name was registered. Thereby, Complainant gave up the domain name registration. Since Complainant gave up the domain name registration, Respondent was free to use it.
The disputed domain name was not registered or used in bad faith. Respondent registered the domain name at June 14, 2011. Respondent did not know anything about Complainant's trademarks at the time of registration. Respondent registered the domain name just want to set a site about web operating system info. Respondent does not prevent the Complainant from registering the domain name. The domain name principle is first come, first served. Complainant abandoned the domain registration and thus cannot prevent others from registering it. Information on the site about the domain name is not direct evidence that Respondent violated Policy 4(b)(iv)),as it is automatically generated information.
Complainant has trademark rights in WEBOS.
Respondent was aware of Complainant’s mark in both WEBOS and WEBOS PIVOT at the time she registered the at-issue domain name.
Respondent registered the domain name because of its similarity to the Complainant’s marks.
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."
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainants Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (hereinafter Complainant) demonstrate a sufficient nexus to be considered as a single entity under the Rules since Hewlett-Packard Development Company, L.P. is a wholly-owned subsidiary of Hewlett-Packard Company.
Complainant has rights in a mark that is confusingly similar to the at-issue domain name.
Complainant evidences rights in two marks relevant to this proceeding and Policy ¶4(a)(i), WEBOS and WEBOS PIVOT. Complainant demonstrates rights in WEBOS by virtue of the mark’s registration with various trademark authorities throughout the world. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). The WEBOS mark is confusingly similar to the <webospivot.com> domain name. The addition of the term “pivot” is insufficient to differentiate the domain name from Complainant’s mark. In fact, incorporating a descriptive word or word associated with Complainant, may actually increase the likelihood of confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
On June 3, 2011 Complainant applied to register WEBOS PIVOT with the United States Patent and Trademark Office. The application is sufficient to demonstrate rights in a mark for the purposes of Policy ¶4(a)(i). While Respondent may contend that the <webospivot.com> domain name is comprised of a common and descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, a determination on this issue is not necessary under Policy ¶ 4(a)(i) as this part of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); Complainant’s application for trademark registration prior to the at-issue domain name registration is sufficient to show Complainant has “rights in a mark” under Policy ¶4(a)(i). Therefore, Respondent’s domain name is identical to Complainant’s WEBOS PIVOT mark as Panels universally recognize that the top level domain, here “.com,” is to be disregarded when comparing a mark and domain name under Policy¶ 4(a)(i).
Complainant shows that Respondent lacks rights and interests in respect of the domain name.
Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <webospivot.com> domain name. WHOIS information identifies Respondent as the registrant; Respondent’s name, “Lily Young,” is not similar to the domain name. See 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). Furthermore, Complainant has not licensed, transferred, assigned or otherwise authorized Respondent to use any of its marks, or any variations thereof, as domain names on the Internet. Therefore, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent contends that the at-issue domain name is comprised of the common words WEB, OS, and PIVOT and as such the domain name is descriptive. Since the name is descriptive, Respondent asserts that she is thus free to register it and thereby has rights in the domain name. But the domain name is not purely descriptive. Rather it is, at a minimum, confusingly similar to Complainant’s trademark WEBOS mark which is shown to have acquired secondary meaning by virtue of its many registrations and otherwise, prior to the domain name’s registration. Respondent asserts that she planned to construct a website about the web operating system, but lacked the resources to proceed. However, there is no evidence that any benign purpose was planned for the domain name; mere mention of a plan for a domain name by Respondent, without more, does not satisfy Policy ¶4(c)(i). Furthermore, the unauthorized use of another’s trademark to host a website does not constitute a bona fide use under the Policy. See TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services)
The fact that Respondent may not have directly set her domain name to reference what amounts to a parking page, does not insulate her from the effects of such a page. Regardless of where the registrar initially points a domain name, the domain name’s owner is ultimately in control of where, if anywhere, the domain name ultimately resolves. See also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). This Panel recognizes that there can be circumstances which excuse a Respondent from the results of pages rendered at the direction of a registrar or hosting company, but such circumstances are not present in the instant case. Respondent uses the <webospivot.com> domain name to resolve to a website featuring hyperlinks to websites associated with competing mobile operating systems. Complainant claims the hyperlinks are pay-per-click links and Respondent does not controvert or even dispute Complainant’s contention. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) and Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), the panels found that a respondent’s use of a disputed domain name to operate a website that featured hyperlinks to competing products was not 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). This Panel finds likewise.
Respondent’s offer to sell the at-issue domain name via a page accessed by the domain name is further evidence that Respondent lacks rights and interests in the at issue domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).
Given the foregoing, Respondent fails to overcome the evidence presented by Complainant and the Panel thus finds that Respondent does not have rights and interest in respect of the <webospivot.com> domain name.
Complainant demonstrates that the at-issue domain name was registered and used in bad-faith.
Complainant shows that its WEBOS mark is a well-known, unique, and distinctive trademark. Complainant’s WEBOS PIVOT product was well publicized prior to Respondent’s registration of <webospivot.com> and shortly thereafter. Respondent apparently registered the domain name because of Complainant’s trademark rights in WEBOS and/or WEBOS PIVOT. She claims that she was going to start a website surrounding “the web operating system,” presumptively Complainant’s web operating system: WEBOS. Such behavior evidences bad faith registration and use. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); also see Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
As discussed elsewhere, the at-issue domain name promotes links to entities not affiliated with Complainant; Respondent does not dispute that she receives revenue from such links. Respondent thereby intentionally attempts to attract Internet users to her website for commercial gain by creating a likelihood of confusion with Complainant’s WEBOS and WEBOS PIVOT marks as to the source, sponsorship, affiliation, or endorsement of certain products and services. This further demonstrates Respondent’s bad faith. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (finding that a respondent’s use of a disputed domain name to host hyperlinks to a complainant’s competitors demonstrates that the respondent is attempting to attract Internet users for commercial gain by creating confusion about the complainant’s affiliation with the domain name).
Furthermore, Respondent appears to have been soliciting offers on her website so that she might sell the disputed domain name. General offers to sell an at-issue domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). While Respondent contends that the offer to sell the disputed domain name was provided by the third-party that hosts the hyperlinks, as noted above, the Panel concludes that Respondent is ultimately responsible for the content of the resolving website. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
For the above stated reasons, the Panel concludes that Respondent has registered and uses the <webospivot.com> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webospivot.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 16, 2011
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