National Arbitration Forum

 

DECISION

 

Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. DigitaLive.com c/o S. Hadi

Claim Number: FA0911001295073

 

PARTIES

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 DigitaLive.com c/o S. Hadi (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpmobile.com>, registered with Enom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2009.

 

On November 18, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpmobile.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 9, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@hpmobile.com by e-mail.

 

A Response was received on December 9, 2009, that was deemed deficient by the National Arbitration Forum because it was not received in hard copy prior to the Response deadline.

 

An Additional Submission was received from Complainant on December 11, 2009 and determined to be timely and complete pursuant to Supplemental Rule 7.

 

On December 16, 2009, 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.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Founded in 1939, HP is among the world’s largest IT companies, ranking ninth on the 2009 Fortune 500, and reporting total revenue of $118.4 billion for fiscal 2008.  HP has approximately 321,000 employees and serves more than a billion customers in 170 countries on six continents.  HP ships 48 million PC units annually and is No. 1 globally in desktop PC and notebook sales and is No. 1 in inkjet and laser printers, and ink and laser supplies, and ships more than 1 million printers a week.  HP sells a variety of mobile devices, including notebook computers, netbooks, personal digital assistants, mobile phones and mobile printers.  HP began using the HP trademark as early as 1941.  HP has invested tremendous resources in promoting this trademark over the last 70 years. The HP trademark is consistently recognized as being among the world’s most valuable brands.  HP has registered “HP” in the U.S. and internationally.  HP owns the domain name <hp.com> and uses the domain name to offer computer-related goods and services, including mobile devices, under the HP trademark.

 

The domain name <hpmobile.com> is confusingly similar to Complainant’s HP trademark, which was used by Complainant and registered as a trademark well before Respondent registered the disputed domain name.

 

Respondent has no rights or legitimate interests in the disputed domain name.  Respondent is not commonly known by Complainant’s HP trademark, 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.  The disputed domain name is currently inactive.  Until Complainant corresponded with Respondent regarding the disputed domain name, the domain name resolved to a table of links to third-party sites.  These sites feature products and services offered by parties unaffiliated with Complainant, including Complainant’s competitors.  Before this time, the disputed domain name offered links to sites involved with adult sexual content.

 

At the time Respondent registered the domain name, Complainant’s trademark was famous.  Respondent’s web site recently included references to HP’s online store and to HP products.  Thus, it is clear that Respondent was not only familiar with Complainant’s trademark at the time of registration, but intentionally adopted a name incorporating this famous trademark in order to create an association with Complainant and its products and services.

 

B. Respondent

The Response was not filed in proper form under ICANN Rules.  It is at the discretion of the Panel to consider or not to consider the Response.  The Panel decides that it is a reasonable solution to consider the Response so that the case is decided on its merits.  See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).

 

Respondent contends that it did not act in bad faith by purchasing and owning the domain name.  There was no mention of “mobile” in the <hp.com> web site when we purchased the domain name in 2002.  We have never intended to sell the domain name.  The word HP means “handphone” in Asian countries, especially in Indonesia.  “HP” is a very popular word describing hand phone for mobile users in Indonesia.  A popular Indonesian online newspaper uses the term “HP” to describe the handphone mobile.  We registered in 2002 for the purposes of developing a site to provide information about handphones targeting Asian users.

C. Additional Submissions

Complainant’s Additional Submission.

“HP” is a registered trademark in Class 9 throughout Asia, including Indonesia.  Complainant’s Indonesia registrations were applied for or issued prior to the registration date for the disputed domain name.  The domain name has been registered for over 7 years.  During this time, the domain name has never resolved to substantive content. Respondent’s web site does not mention and has never mentioned handphones, Indonesia or Asia.   Thus, Respondent’s self-serving comments about Respondent’s intentions to use the domain name in connection with services relating to handphones or directed to Indonesia lack any credibility.  Respondent is a professional IT company that has been doing business in the United States since 1999.  Given the fame of the HP mark and Respondent’s obvious familiarity with the computing industry, there is no question that Respondent registered the disputed domain name with full knowledge of HP and its association with mobile products and services.

FINDINGS

1.      Complainant’s trademark registrations give Complainant standing to proceed with this action to transfer the disputed domain name.

2.      The disputed domain name is confusingly similar to Complainant’s trademark.

3.      Respondent has no rights to or legitimate interests in the disputed domain name.

4.      Respondent registered and used the disputed domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 owns rights in the HP mark through its numerous trademark registrations around the world and with the United States Patent and Trademark Office (“USPTO”).  Complainant’s evidence of numerous trademark registrations has established rights in the HP mark pursuant to Policy ¶ 4(a)(i).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat.  Arb. Forum Apr. 15, 2002) which found that the complainant had established rights to the MILLER TIME mark through federal registration.  See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) holding that “Complainant has established rights to the MICROSOFT mark through registration of the mark with the USPTO.”

 

Respondent’s disputed domain name contains Complainant’s HP mark in its entirety, adds the generic term “mobile,” and adds the generic top-level domain (“gTLD”) “.com.”  In its Additional Submission, Complainant provides evidence of various mobile devices that Complainant offers to the public.  The term “mobile” has a relationship to Complainant’s business and when added to the HP mark in the disputed domain name creates a confusing similarity between Complainant’s mark and the disputed domain name.  See Kohler Co. v. Curley. FA 890812 (Nat. Arb. Forum Mar. 5, 2007) finding confusing similarity where <kohlerbaths.com>, the disputed domain name contained the complainant’s mark in its entirety adding the “descriptive term “baths” which is an obvious allusion to complainant’s business.  See also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) finding that by adding the term “security” to complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased”  the likelihood of confusion with the complainant’s mark.  See also Google Inc. v. Xtraplus Corp, D2001-0125 (WIPO  Apr. 16, 2001) finding that where respondent merely added terms such a “buy” or “gear” to complainant’s GOOGLE mark these additions did not prevent the disputed domain names from being confusingly similar to complainant’s mark. The addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).

Complainant prevails under the requirements of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

 

Complainant must make 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 shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods.,  Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).  See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb.  Forum Sept. 25, 2006).

 

Complainant contends that Respondent is not commonly known by the disputed domain name or by Complainant’s HP mark by providing evidence that the WHOIS information identifies the registrant as “DigitaLive.com c/o S. Hadi.”  Respondent has not satisfied the requirements of Policy ¶ 4(c)(ii).  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 that it is commonly known by the disputed domain name. See also M. Shanken Commc’n v. WORLDTRAVELERSSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).

 

 Complainant’s evidence shows that Respondent’s disputed domain name, though now inactive, previously displayed third-party links to websites offering computer and computer related products in competition with Complainant.  This type of use of a confusingly similar domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to 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] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods  and services.”).  See also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA104580 (Nat. Arb. Forum  Apr. 9, 2002).

 

Complainant’s evidence further shows that just before the Respondent’s web site went inactive, the website under the disputed domain name resolved to third-party links offering adult-oriented materials.  Using a domain name confusingly similar to another’s mark to link Internet traffic to an adult-oriented website, does not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use.  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002).  See also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) which held that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not  evidence noncommercial or fair use of the domain name by a respondent”.

 

The evidence shows that Respondent’s website under the disputed domain name is presently inactive.  The failure of Respondent to make an active use of the domain is further evidence that Respondent lacks rights or legitimate interests.  See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) and Bloomberg L.P. v. Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004).

 

The Response does not deny or dispute the truth of any of the evidence presented by Complainant as discussed next above.  The sole argument made by Respondent is that Respondent is in the process of developing an informational website for “handphone” users in Asia.  Respondent presents no evidence of any kind to show any demonstrable preparations to develop the website for the purposes alleged as required for Respondent to prevail under Policy ¶ 4(c)(iii).  See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002).

 

Complainant prevails under the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain name previously resolved to a website that carried links to Complainant’s competitors in the computer industry through click through links.  This activity disrupted Complainant’s business, as Internet users seeking Complainant’s products were directed to Complainant’s competitors.  This qualifies as bad faith registration and use under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business.  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 disputed domain name constituted disruption under Policy ¶ 4(b)(iii).  The inference is made that Respondent conducts these activities for a commercial purpose.  It is evidence of bad faith for Respondent to profit by creating a likelihood of confusion between Complainant’s HP mark and the confusingly similar disputed domain name. 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)  stating “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”

 

Respondent’s disputed domain name previously resolved to a website offering links to websites offering adult-oriented materials.  Other Panels have found such use constitutes bad faith registration and use.  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003).  See also CCA Indus. Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000).

 

The fact that Respondent is currently failing to make an active use of the disputed domain name does not cure the earlier violations of the Policy, and under the facts and circumstances of this case, can be considered as further evidence of bad faith use.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000).  See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) which found that merely holding an infringing domain name without active use can constitute use in bad faith.

 

Complainant prevails under the requirements of 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 <hpmobile.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Tyrus R. Atkinson, Jr., Panelist
Dated: December 31, 2009

 

 

 

 

 

 

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