Hewlett-Packard Development Company, L.P. v. BUSINESS VENTURE
Claim Number: FA1410001584297
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is BUSINESS VENTURE (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpenterprise.com>, registered with eNom, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2014; the National Arbitration Forum received payment on October 10, 2014.
On October 10, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpenterprise.com> domain name is registered with eNom, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2014 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@hpenterprise.com. Also on October 13, 2014, the 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 November 11, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following contentions:
i. Complainant owns the HP mark through its trademark registrations with the United States Patent and trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered April 24, 1979).
ii. Complainant uses the HP mark in connection with its business as an Information Technology company.
i. Policy ¶ 4(a)(i)
1. The <hpenterprise.com> domain name is confusingly similar to Complainant’s HP mark because respondent has simply added the generic term “enterprise” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <hpenterprise.com> domain name. Respondent is neither licensed nor authorized to use the HP mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent has made a general offer to sell the disputed domain name.
5. Respondent has not made an active use of the disputed domain name.
iii. Policy ¶ 4(a)(iii)
1. Respondent has made a general offer to sell the disputed domain name.
2. Respondent has previously engaged in this type of behavior, and Complainant argues that it has become a type of pattern of bad faith registration of domain names.
3. Due to Complainant’s fame worldwide, Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the HP mark.
4. Respondent has failed to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous United States company engaged in the information technology industry and related fields.
2. Complainant owns the HP mark through its trademark registrations with the United States Patent and trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered April 24, 1979).
3. Respondent registered the disputed domain name on July 2, 2005.
4. Respondent has not made an active use of the disputed domain name and has made a general offer to sell it.
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.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the HP mark in connection with its Information Technology computer business. Complainant submits that it owns the HP mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,116,835, registered April 24, 1979). Complainant argues that such registrations are sufficient to establish rights in the HP mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decisions. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HP mark. Complainant argues that the <hpenterprise.com> domain name is confusingly similar to Complainant’s HP mark because Respondent has simply added the generic word “enterprise” to the mark. Complainant urges that the word “enterprise” relates to Complainant’s market-leading enterprise hardware which comprises a significant proportion of Complainant’s business and would convey that meaning to the internet user. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name differing from a mark by the addition of a generic or descriptive term does not negate a finding of confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). As such, the Panel finds that the <hpenterprise.com> domain name is confusingly similar to Complainant’s HP mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HP mark and to use it in its domain name and has simply added the generic word “enterprise” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the enterprise hardware of Complainant;
(b) Respondent registered the disputed domain name on July 2, 2005;
(c) Respondent has not made an active use of the disputed domain name and has made a general offer to sell it;
(d) Respondent registered and retained the disputed domain name without the permission or authority of Complainant;
(e) It is Complainant’s position that Respondent lacks rights or legitimate interests in the <hpenterprise.com> domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “Business Venture” as the registrant organization of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the HP mark. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <hpenterprise.com> domain name pursuant to 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 domain name);
(f) Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. While Complainant claims Respondent has made no active use of the domain name, the Panel notes that the domain name resolves to a website promoting its sale as well as advertisements. See Complainant’s Ex. J. Complainant notes that Respondent has placed a general offer to sell the disputed domain name, and claims that it demonstrates Respondent’s lack of rights. See Complainant’s Ex. J. Previous panels have declined to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was put up for sale. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent’s offer to sell the disputed domain name is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has put up a general offer to sell the disputed domain name. Prior panels have held that offers to sell a disputed domain name qualify as evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). As a result, the Panel holds that Respondent’s general offer to sell the disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent has previously engaged in such bad faith registration of domain names, and Complainant submits that this behavior is becoming a pattern of bad faith registration. In so arguing, Complainant cites a previous decision in which Respondent was found to have registered a disputed domain name in bad faith. See PerkinElmer, Inc. v. Mark Segal c/o Business Venture, FA1005001326639 (Nat. Arb. Forum July 8, 2010) (finding that Respondent registered <perkinelmer.net> in bad faith and awarding transfer). Previous panels have not hesitated to find evidence of bad faith if they believe the respondent has engaged in a pattern of bad faith registration. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). As such, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(ii), in that Respondent has engaged in a pattern of bad faith registration of domain names.
Additionally, Complainant argues that due to its worldwide fame, it is inconceivable that Respondent registered the disputed domain name without actual or constructive knowledge of Complainant’s rights in the HP mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's HP mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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”).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed <hpenterprise.com> domain name using the HP mark, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 13, 2014
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