Hewlett-Packard Development Company, L.P. v. Joshua Paul / I cloud
Claim Number: FA1611001700940
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Joshua Paul / I cloud (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <123-hp.com> and <123hpremoteassistance.com> registered with GoDaddy.com, LLC; and <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, and <123hpenvy.com>, registered with 1&1 Internet SE.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2016; the Forum received payment on November 1, 2016.
On November 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <123-hp.com> and <123hpremoteassistance.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 2, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com> domain names are registered with 1&1 Internet SE and that Respondent is the current registrant of the names. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On November 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@123-hp.com, postmaster@123hpdeskjet.com, postmaster@123hpofficejet.com, postmaster@123hpofficejetpro.com, postmaster@123hpphotosmart.com, postmaster@123hplaserjet.com, postmaster@123hpremoteassistance.com, and postmaster@123hpenvy.com. Also on November 4, 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 December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates in the computer hardware industry. In promotion and furtherance of its business, Complainant has used the HP trademark since 1941, and has registered several iterations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Complainant has also registered the following marks: DESKJET (Reg. No. 1,498,420, registered Aug. 2, 1988), PHOTOSMART (Reg. No. 2,362,503, registered June 27, 2000), LASERJET (Reg. No. 1,458,061, registered Sept. 22, 1987), and ENVY (Reg. No. 4,271,615, registered Jan 8, 2013). Respondent’s <123-hp.com>, <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com> are confusingly similar to the marks because they each incorporate the HP mark fully, while adding the number sequence “123,” the “.com” generic top-level domain (“gTLD”), and one of the following: a hyphen, “deskjet,” “officejet,” “officejetpro,” “photosmart,” “laserjet,” “remoteassistance,” and “envy.” The foregoing terms relate directly to the business areas for which Complainant’s HP mark is well known, and largely correspond with Complainant’s registered marks.
ii) Respondent has no rights or legitimate interests in <123-hp.com>, <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com>. Respondent is not commonly known by the domain names, nor is it licensed to use Complainant’s marks. Further, Respondent uses the domain names to display products and images associated with the HP mark and invites Internet users to call a tech support number. The service is associated with a refund policy, establishing that it is a paid service in which Respondent passes itself off as Complainant. Passing off is not a bona fide, legitimate noncommercial, or fair use.
iii) Respondent registered and used the domain names in bad faith. Based on the number of HP-based registrations by Respondent, all 8 registered in the course of 2 days, a pattern of bad faith per Policy ¶ 4(b)(ii) is evident. Respondent disrupts Complainant’s business under Policy ¶ 4(b)(iii) by offering competing technical support services, passing itself off as Complainant, and also giving consumers the impression that Complainant charges for 123.hp.com setup services when it does not. These competing services are for Respondent’s commercial benefit, showing bad faith pursuant to Policy ¶ 4(b)(iv). Lastly, it is clear that Respondent had actual knowledge of Complainant’s rights in the above marks—bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes the following registration dates for the domain names:
<123-hp.com>.......................................................................... February 1, 2016;
<123hpdeskjet.com>.............................................................. February 1, 2016;
<123hpofficejet.com>............................................................. February 1, 2016;
<123hpofficejetpro.com>...................................................... February 1, 2016;
<123hpphotosmart.com>...................................................... February 1, 2016;
<123hplaserjet.com>.............................................................. February 1, 2016;
<123hpremoteassistance.com>.......................................... February 2, 2016; and
<123hpenvy.com>.................................................................. February 1, 2016.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the domain names are owned by the same individual or entity for the following reasons:
• All of the domain names are registered by the same nominal registrant, Joshua Paul, who in the registrant information for all of the domain names is located in same city and country, Chennai, India. See Compl., at Attached Ex. A.
• All of the domain names list the same email address, hpallwyn@gmail.com, for the admin information. See id.
• All of the domain names were registered over the course of 2 days. See id.
• All of the domain names promote the same toll-free number, 1-888-413-5486. See Compl., at Attached Ex. B.
• All of the domain names have the same structure, namely combining the HP trademark with the numeric sequence 123. All of the domain names except for <123-hp.com> share the same additional structural element of adding the name of one of Complainant’s products or services to the HP trademark with the numeric sequence 123.
• All of the domain names have nearly identical refund policies. See Compl., at Attached Ex. C.
• The modus operandi of all the domain names is the same—i.e., to attract traffic to technical support services. See Compl., at Attached Ex. B; Compl., § 8.
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
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 (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.”).
Complainant operates in the computer hardware industry. In promotion and furtherance of its business, Complainant has used the HP trademark since 1941, and claims it has registered several iterations of the mark with the USPTO (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Complainant has also claimed to have registered the following marks with the USPTO: DESKJET (Reg. No. 1,498,420, registered Aug. 2, 1988), PHOTOSMART (Reg. No. 2,362,503, registered June 27, 2000), LASERJET (Reg. No. 1,458,061, registered Sept. 22, 1987), and ENVY (Reg. No. 4,271,615, registered Jan 8, 2013). USPTO registrations confer rights under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Therefore, the Panel agrees that Complainant has rights in the HP, DESKJET, PHOTOSMART, LASERJET, and ENVY marks under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <123-hp.com>, <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com> are confusingly similar to the marks because they each incorporate the HP mark fully, while adding the number sequence “123,” the “.com” generic top-level domain (“gTLD”), and one of the following: a hyphen, “deskjet,” “officejet,” “officejetpro,” “photosmart,” “laserjet,” “remoteassistance,” and “envy.” “123” has not been considered a distinguishing feature. See Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, FA0907001276302 (Forum Sept. 17, 2009) (finding <edhardy123.com> confusingly similar to ED HARDY and noting that “the domain name incorporates Complainant’s mark in its entirety with the addition of the generic numerals ‘123’ … [t]he Panel finds that this addition does nothing to negate a finding of confusing similarity under Policy ¶ 4(a)(i)”). Addition of hyphenation and gTLDs are irrelevant under Policy ¶ 4(a)(i). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding that “[t]he addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a complainant’s mark.”). Further, combination of marks and adding descriptive terms have not been considered distinguishing features under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel agrees that the weight of the precedent bears in favor of finding the disputed domain names confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in <123-hp.com>, <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com>. Respondent is not commonly known by the domain names, nor is it licensed to use Complainant’s marks. Where no response is on record, WHOIS information is looked to in determining Policy ¶ 4(c)(ii) along with a complainant’s assertions. See Reese v. Morgan, FA 917029 (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 notes that the WHOIS lists “Joshua Paul / I cloud” as registrant. Therefore, the Panel agrees that Respondent is not commonly known by the domain names per Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent uses the domain names to display products and images associated with the HP mark and invites Internet users to call a tech support number. The service is associated with a refund policy establishing that it is a paid service in which Respondent passes itself off as Complainant. Passing off is not a bona fide, legitimate noncommercial, or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Accordingly, the Panel agrees that Complainant has presented sufficient evidence that Respondent has incorporated several elements of Complainant’s web offerings and marks such that Respondent has passed itself off as Complainant and thus has not made any 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).
Complainant argues that Respondent registered and used the domain names in bad faith. Based on the number of HP-based registrations by Respondent, all 8 registered in the course of 2 days, Complainant asserts that a pattern of bad faith per Policy ¶ 4(b)(ii) is evident. Numerous domain name registrations can impute bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). While Respondent has registered 8 domain names which include the HP mark, the Panel agrees that a pattern of bad faith is evident per Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent disrupts Complainant’s business under Policy ¶ 4(b)(iii) by offering competing technical support services, passing itself off as Complainant, and also giving consumers the impression that Complainant charges for 123.hp.com setup services when it does not. Competing and misleading use can serve as evidence of Policy ¶ 4(b)(iii) disruption. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore agrees that Respondent, in passing itself off as Complainant, or otherwise offering competing services regarding HP products, has disrupted the business of Complainant under Policy ¶ 4(b)(iii).
Furthermore, Complainant argues that these competing services are for Respondent’s commercial benefit, showing bad faith pursuant to Policy ¶ 4(b)(iv). Evidence of a commercial benefit through a confusingly similar domain has returned findings of Policy ¶ 4(b)(iv) bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel notes Respondent’s refund policy at Complainant’s Attached Exhibit, which demonstrates the commercial nature of its tech support services. Accordingly, the Panel agrees that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that it is clear that Respondent had actual knowledge of Complainant’s rights in the above marks—bad faith registration and use per Policy ¶ 4(a)(iii). Panels look to a totality of circumstances in making findings of actual knowledge. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Like Google Inc., Respondent here has arranged the disputed domain names in a manner which induces Internet users to believe it is Complainant or at the very least competes with the services offered by Complainant. In addition, Respondent has included Complainant’s <123.hp.com> URL in the metatag information of one or more of the disputed domains. Therefore, the Panel finds sufficient evidence in the record to infer that Respondent had actual knowledge of Complainant and its rights at the time of registration, and during its subsequent use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <123-hp.com>, <123hpdeskjet.com>, <123hpofficejet.com>, <123hpofficejetpro.com>, <123hpphotosmart.com>, <123hplaserjet.com>, <123hpremoteassistance.com>, and <123hpenvy.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm. Esq., Panelist
Dated: December 12, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page