Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Milan Kovac
Claim Number: FA1108001403707
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 Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpprinterdriver.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/d/a Hebeidomains.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2011; the National Arbitration Forum received payment on August 17, 2011. The Complaint was submitted in both Slovak and English.
On August 18, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <hpprinterdriver.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a Hebeidomains.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 August 24, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of September 13, 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@hpprinterdriver.com. Also on August 24, 2011, the Slovak language Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hpprinterdriver.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpprinterdriver.com> domain name.
3. Respondent registered and used the <hpprinterdriver.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1939 and has offered information technology (“IT”) products and services, including printers, under its HP mark since 1941. Complainant provides a large list of national trademark agencies with which Complainant owns a trademark for its HP mark, such as the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 469,700 registered January 8, 1999) and the German Patent and Trademark Office (“GPTO”) (e.g., Reg. No. 39,405,003 registered December 5, 1995). Complainant also provides evidence of its trademark registrations for its HP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 registered April 24, 1979) by providing copies of its certificates of registration.
Respondent registered the <hpprinterdriver.com> domain name on March 6, 2011. The disputed domain name resolves to a pay-per-click website that advertises competing printer platforms.
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 claims that it has established rights in its HP mark for the purpose of Policy ¶ 4(a)(i). In support of this allegation, Complainant provides a list of its trademark registrations with national trademark agencies around the world, such as OHIM (e.g., Reg. No. 469,700 registered January 8, 1999) and the GPTO (e.g., Reg. No. 39,405,003 registered December 5, 1995). Complainant also includes evidence of its trademark registrations for its HP mark with the USPTO (e.g., Reg. No. 1,116,835 registered April 24, 1979). Past panels have found that a trademark registration with a national trademark authority is sufficient to establish rights in a mark even if the trademark is not registered within the country where a respondent resides or operates. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also 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). Therefore, the Panel holds that Complainant has established its Policy ¶ 4(a)(i) rights in its HP mark.
Complainant alleges that Respondent’s <hpprinterdriver.com> domain name is confusingly similar to Complainant’s HP mark. Complainant asserts that the disputed domain name contains Complainant’s entire HP mark and simply also includes the descriptive terms “printer” and “driver” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the additions of descriptive terms and a gTLD fail to adequately distinguish a disputed domain name from a complainant’s mark. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Based on this precedent, the Panel concludes that Respondent’s <hpprinterdriver.com> domain name is confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <hpprinterdriver.com> domain name. Prior panels have found that once a complainant makes a prima facie case that a respondent lacks rights or legitimate interests, the burden then shifts to the respondent to contradict such assertions and provide proof of rights and legitimate interests. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also 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.”). The Panel determines that Complainant has made a prima facie case. Respondent, in this case, has failed to respond to the Complaint and has failed to present any evidence of rights and legitimate interests in the <hpprinterdriver.com> domain name. Past panels have held that a respondent’s failure to respond can be considered evidence that a complainant’s assertions are true and that the respondent lacks rights and legitimate interests. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, this Panel chooses to examine the records under the elements of Policy ¶ 4(c) to determine whether or not Respondent owns any rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <hpprinterdriver.com> domain name. Complainant asserts that Respondent is not licensed by Complainant to use Complainant’s HP mark. According to Complainant, Respondent is also not affiliated with Complainant in any way and Respondent is not, and has never been, an authorized vendor, supplier, or distributor of Complainant’s products and services. The WHOIS information identifies the domain name registrant as “Milan Kovac,” which is not similar to the <hpprinterdriver.com> domain name. Previous panels have found in similar circumstances that a respondent is not commonly known by a disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel agrees with the these prior panels and holds that Respondent is not commonly known by the <hpprinterdriver.com> domain name according to Policy ¶ 4(c)(ii).
According to Complainant, Respondent’s <hpprinterdriver.com> domain name resolves to a website hosting third-party advertising hyperlinks that resolve to other websites offering printer goods that compete with Complainant’s printer products. Complainant claims that Respondent commercially benefits from this use by receiving pay-per-click fees. Past panels have determined that a respondent is making 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) when a respondent uses the disputed domain name to provide, and profit from, competing third-party hyperlinks. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”) This Panel finds accordingly.
Finally, Complainant argues that Respondent is attempting to sell the <hpprinterdriver.com> domain name by soliciting offers via a third-party, Sedo.com. Prior panels have found that an offer to sell a confusingly similar disputed domain name is evidence that a respondent lacks rights and legitimate interests in a disputed 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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights). Thus, the Panel holds that Respondent’s offer to sell the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the <hpprinterdriver.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent has offered to sell the disputed domain name via the third-party Sedo.com. Previous panels have found that a general offer to sell demonstrates a respondent’s bad faith registration and use under 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). In accordance with this precedent, the Panel concludes that Respondent registered and uses the <hpprinterdriver.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also contends that Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business. Complainant claims that Respondent uses the <hpprinterdriver.com> domain name to resolve to a pay-per-click website that features advertising hyperlinks to Complainant’s competitors in the printer industry. Past panels have held that such a use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Therefore, the Panel holds that Respondent’s registration and use of the <hpprinterdriver.com> domain name constitutes bad faith registration and use according to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent receives revenues from the third-party hyperlinks found on the resolving website. Complainant argues that Respondent is receiving this revenue from its attraction of Internet users to the resolving website by creating a likelihood of confusion with Complainant’s HP mark. Prior panels have found that a respondent’s use of a disputed domain name to offer competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Thus, the Panel determines that Respondent’s registration and use of the <hpprinterdriver.com> domain name was, and is, in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the HP mark. While previous panels have found that constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). This Panel finds that Respondent likely had actual notice of Complainant’s trademark rights based on the use and the confusing similarity of the <hpprinterdriver.com> domain name. The Panel holds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpprinterdriver.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 27, 2011
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