Hewlett-Packard Development Company, L.P. v. Alex Wu Wu / Wang Zhao Li / Wu Hua
Claim Number: FA1801001768429
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Alex Wu Wu / Wang Zhao Li / Wu Hua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science>, registered with Godaddy.Com, Llc and Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn).
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2018; the Forum received payment on January 23, 2018.
On January 24, 2018; Jan 25, 2018, Godaddy.Com, Llc and Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names are registered with Godaddy.Com, Llc and Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the names. Godaddy.Com, Llc and Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) have verified that Respondent is bound by the Godaddy.Com, Llc and Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) registration agreements 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 January 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@hp-vf.com, postmaster@hp-office.date, postmaster@hp-office.link, and postmaster@hp-office.science. Also on January 29, 2018, 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 February 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is a leading global provider of printers, printer supplies, PCs, mobile devices, and IT solutions and services. Complainant’s website <hp.com> is one of the most visited websites in the United States and worldwide, and the No. 1 most visited site in the category of computer hardware, according to statistics provided by Amazon Alexa Internet.
2. Complainant has rights in the HP mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,116,835, registered Apr. 24, 1979). Respondent’s <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names are confusingly similar to Complainant’s mark as they incorporate the HP trademark in its entirety, adding only a hyphen, the word “office” or the two-letter sequence “vf”, and a top-level domain (“TLD”) to the mark.
3. Respondent has no rights or legitimate interests in the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names. Respondent is not commonly known by the domain names, as the WHOIS information lists “Alex Wu Wu aka Wang Zhao Li aka Wu Hua” as the registrant. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark in any manner.
4. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to sell counterfeit HP security seals. The QR code redirects users to the website located at the <hp-vf.com> domain name, which sells counterfeit Complainant’s goods. Further, the <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names are all inactive, despite having been registered for nearly a year.
5. Respondent registered and uses the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names in bad faith. Respondent’s use of the <hp-vf.com> domain name to facilitate the sale of counterfeits disrupts Complainant’s business. By doing so, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark. Further, the <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names are all inactive.
6. Additionally, Respondent’s use of a privacy shield and using false information reflects bad faith. Finally, it is clear that Respondent registered the domain names with actual knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HP mark. Respondent’s domain names are confusingly similar to Complainant’s HP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names and that Respondent registered and uses the 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."
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceeding, 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 has provided evidence of the following. All of the domain names were registered with the same email address. Further, the contact phone numbers for the <hp-vf.com> and <hp-office.date> domain names are the same. Additionally, the registrant address, contact phone, and fax numbers for the <hp-office.link> and <hp-office.science> domain names are the same. Moreover, the <hp-office.date>, <hp-office.link> and <hp-office.science> domain name were all registered on the same day and are all inactive. Finally, all of the domain names contain the HP trademark followed by a hyphen. Accordingly, the Panel concludes that all of the domain names were registered by the same domain name holder.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence was presented by Complainant to show that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant has rights in the HP mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,116,835, registered Apr. 24, 1979). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Accordingly, the Panel finds that Complainant has established rights in the HP mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the HP trademark in its entirety, adding only a hyphen, the word “office” or the two-letter sequence “vf”, and a TLD to the mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the infringing domain names are confusingly similar to the HP mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The WHOIS identifies “Alex Wu Wu aka Wang Zhao Li aka Wu Hua” as the registrant. See Amend. Compl. There is no evidence in the record to show that Respondent has ever been legitimately known by the HP mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges, without contradiction, that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the HP mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names under Policy ¶ 4(c)(ii).
Further, Complainant claims Respondent uses the famous HP mark in its domain names to sell counterfeit products. The unauthorized selling of a complainant’s products can show a lack of a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services, or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides a screenshot of the resolving webpage for the <hp-vf.com> domain name, which shows a redirecting scheme to resolve to a webpage featuring the HP logo and an allegedly counterfeit QR code. As such, the Panel agrees that Respondent uses the domain names to provide counterfeit goods, failing to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant has shown that the <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names resolve to a website that lacks any content. Failure to make active use of a confusingly similar domain name can show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel holds that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names in bad faith by disrupting Complainant’s business and commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark. Using domain names containing a mark in which a complainant has rights to disrupt a complainant’s business and trade upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). As noted above, Complainant provides a screenshot of the alleged counterfeit QR code on the <hp-vf.com> domain name’s resolving webpage. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the HP mark at the time of registering the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). The Panel agrees that because the Respondent incorporated Complainant’s mark precisely in the domain names, it is apparent that Respondent knew of Complainant’s rights in the mark when the domain names were registered. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hp-vf.com>, <hp-office.date>, <hp-office.link>, and <hp-office.science> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 5, 2018
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