HP Hewlett Packard Group LLC v. Private Registration / SyncSuite LLC
Claim Number: FA1602001661276
Complainant is HP Hewlett Packard Group LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Private Registration / SyncSuite LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpesoftware.com>, registered with Deluxe Small Business Sales, Inc. d/b/a Aplus.net.
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 Forum electronically on February 17, 2016; the Forum received payment on February 17, 2016.
On February 17, 2016, Deluxe Small Business Sales, Inc. d/b/a Aplus.net confirmed by e-mail to the Forum that the <hpesoftware.com> domain name is/are registered with Deluxe Small Business Sales, Inc. d/b/a Aplus.net and that Respondent is the current registrant of the name. Deluxe Small Business Sales, Inc. d/b/a Aplus.net has verified that Respondent is bound by the Deluxe Small Business Sales, Inc. d/b/a Aplus.net 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 February 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2016 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@hpesoftware.com. Also on February 17, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 uses the HPE mark in connection with its business creating and selling computer software. Complainant has registered the HPE mark with the likes of the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 005057450, registered June 19, 2007). Respondent’s <hpesoftware.com> is confusingly similar to Complainants HPE mark as it incorporates the mark in its entirety while adding the descriptive term “software.” Further, Respondent has appended the generic top-level domain (“gTLD”) “.com,” which is an insufficient addition when considering confusing similarity of a domain.
Respondent has no rights or legitimate interests in respect of the <hpesoftware.com> domain name per Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii) because it is neither indicated in the WHOIS to be so, nor has Respondent submitted information to the record which would support rights under this prong. Further, the resolving website is merely a parked page, with a number of click-through links which may be seen to compete with Complainant. See Compl., at Attached Exhibit H (links include, “VoIP Review,” “Software,” and “Internet”).
Respondent registered and used the disputed <hpesoftware.com> domain in bad faith under Policy ¶ 4(a)(iii). Respondent’s uses the disputed domain name to resolves to a parked webpage that advertises the domain for sale. Respondent presumably profits commercially via the inclusion of various click-through hyperlinks, therefore bad faith attraction for commercial gain has been demonstrated, pursuant to the language of Policy ¶ 4(b)(iv). Further, Respondent registered the disputed domain name at a time when there was widespread publicity surrounding the creation of Hewlett Packard Enterprises (HPE), which suggests opportunistic bad faith. In addition, due to the longstanding use and notoriety of the HPE mark, Respondent had actual or constructive knowledge of the mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the computing and related industries and creating and selling software.
2. Complainant has registered the HPE mark with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 005057450, registered June 19, 2007) and other authorities and has rights in that trademark.
3. Respondent registered the <hpesoftware.com> domain name on May 18, 2015.
4. The website to which the disputed domain name resolves is merely a parked page, with a number of click-through links which compete with Complainant and Respondent has caused the domain name to be advertised for sale.
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(f), 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 HPE mark in connection with its business creating and selling computer software. Complainant claims rights in the HPE mark based on its registration with the OHIM (Reg. No. 005057450, registered June 19, 2007). See Compl., at Attached Ex. F. Past panels have found that registration with the OHIM suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i) even when a respondent does not reside or operate in the European Union. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum February 18, 2015) (“The Panel concludes that Complainant’s valid registration of LYCA with OHIM sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); 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 finds that Complainant has rights in the HPE mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <hpesoftware.com> domain name is identical or confusingly similar to Complainant’s HPE mark. Complainant contends that Respondent’s <hpesoftware.com> is confusingly similar to Complainants HPE mark as it incorporates the mark in its entirety while adding the descriptive term “software” and the gTLD “.com.” Previous panels have held that the addition of a term descriptive of a complainant’s mark and a gTLD is insufficient to overcoming a finding of confusing similarity which is otherwise present. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Nat. Arb. Forum November 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that Respondent’s <hpesoftware.com> domain name is confusingly similar to Complainant’s HPE 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 HPE mark and to use it in its domain name and has added the descriptive term “software” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the software products of Complainant;
(b) Respondent registered the disputed domain name on May 18, 2015;
(c) Respondent engaged in the aforementioned conduct without the permission or authority of Complainant;
(d) It is Complainant’s contention that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant contends that Respondent is not commonly known by the disputed domain name as evidenced by the available WHOIS information for the disputed domain name. The Panel recalls that Respondent has failed to submit a Response in this proceeding. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name. 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);
(e) Complainant contends that Respondent’s use of the domain name, to resolve to a website displaying links to Complainant’s competitors’ products, and Respondent’s willingness to sell the domain name, indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed <hpesoftware.com> domain, as resolved for Complainant on September 24, 2015, appears to display various click-through advertisements links such as, “Software,” “Internet,” and “Antivirus Software.” See Compl., at Attached Ex. H. Panels have held that using a disputed domain name to sell a complainant’s or a complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techs., 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).”). This Panel thus concludes that Respondent’s use does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii);
(f) Additionally, Complainant alleges that Respondent’s resolving webpage contains a link offering the domain name for sale to the general public, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Compl., at Attached Ex. G. The Panel agrees that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
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’s bad faith is evident from Respondent attempting to sell the disputed <hpesoftware.com> domain name. See Compl., at Attached Ex. G (“Purchase this domain name”). Panels have found bad faith where a respondent offered a domain name for sale. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). This Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent uses the disputed domain name to redirect Internet users to its own website, through which Respondent purportedly hosts hyperlinks to businesses that compete with Complainant. See Compl., at Attached Ex. H. Typically, panels have treated such behavior as an indication of a respondent’s bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Consequently, the Panel finds that Respondent has engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Thirdly, Complainant alleges that Respondent uses the <hpesoftware.com> domain to attract Internet users for commercial gain because the resolving website contains links to competitors of Complainant, from which Respondent presumably receives pay-per-click fees. Complainant has provided evidence of this use in its Exhibit H, showing the resolving website hosting the hyperlinks. Past panels have found hosting pay-per-click links to constitute bad faith pursuant to Policy ¶ 4(b)(iv). See 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.’”). As the Panel finds such behavior by Respondent here, the Panel finds that Respondent uses the <hpesoftware.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant's HPE mark, it is inconceivable that Respondent could have registered the <hpesoftware.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that arguments of bad faith based on constructive notice have generally not been accepted. 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."). The Panel, however, agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii) and is so in the present case. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Fifthly, Complainant argues that Respondent has engaged in opportunistic bad faith registration of the <hpesoftware.com> domain name because Respondent registered the domain name at the time Complainant announced the creation of Hewlett Packard Enterprises (“HPE”). Complainant has provided Exhibit E which evidences the extensive media coverage the HPE mark was receiving in the period the domain name was registered. Past panels have found that when domain names are registered at the same time as an announcement related to the use of a particular mark that this constitutes opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). As the Panel finds Complainant’s evidence sufficient, the Panel finds that Respondent registered the <hpesoftware.com> domain name in bad faith by engaging in opportunistic bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <hpesoftware.com> domain name using the HPE mark and in view of the conduct that Respondent engaged in when using the domain name, 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 <hpesoftware.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: March 17, 2016
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