Hewlett-Packard Development Company, L.P. v. RICARDO SAMPERIO
Claim Number: FA1901001826722
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is RICARDO SAMPERIO (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hplicitaciones.com>, registered with Tucows Domains 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.
Charles A. Kuechenmeister.
Complainant submitted a Complaint to the Forum electronically on January 24, 2019; the Forum received payment on January 24, 2019.
On January 24, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hplicitaciones.com> domain name (the Domain Name) is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 14, 2019 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@hplicitaciones.com. Also on January 25, 2019, 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 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is a leading, global provider of printers, PCs, mobile devices, solutions, and services. Complainant has rights in the HP mark based on its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,116,835, registered April 24, 1979). Respondent’s Domain Name is confusingly similar to Complainant’s mark as it merely adds the generic term “licitaciones” (which in Spanish means “bids,” “bidding,” or “bidding at auction”), and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark.
Respondent lacks rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name. He is not an authorized vendor, supplier, or distributor of Complainant’s goods and services nor has Complainant authorized or licensed him to use its HP mark for any purpose. Additionally, Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name. The Domain Name resolves to an inactive web site, and Respondent uses an email associated with the Domain Name to send unsolicited emails which attempt to lure unsuspecting recipients into making advance payments for laptops which are never sent.
Respondent registered and is using the Domain Name in bad faith. He is using the Domain Name with Complainant’s mark to commercially benefit from the goodwill associated with Complainant’s mark, and this is evidence of bad faith. He is also diverting potential purchasers of Complainant’s laptops, thus disrupting its business. Respondent registered the Domain Name with full knowledge of Complainant’s rights in the HP mark. Finally, his failure to make any active use of the web site resolving from the Domain Name some eight months after the registration date is further evidence of bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Hewlett Packard Company registered the HP mark with the USPTO (Reg. No. 1,116,835) on April 24, 1979. HP Hewlett Packard Group LLC currently owns the mark (See, Complaint Exhibit D), and it has granted Complainant an exclusive license to use the mark, enforce the HP mark, file UDRP complaints, and obtain transfers of domain names that are confusingly similar to HP. See, Complaint Exhibit E. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant is fully authorized by the current owner of the mark to bring this proceeding, and this establishes its rights in the mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s Domain Name is confusingly similar to Complainant’s mark as it incorporates Complainant’s HP mark in its entirety, merely adding the generic term “licitaciones,” which in Spanish means “bids,” “bidding,” or “bidding at auction” (See, Complaint Exhibit F), and the gTLD “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the HP mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) he is not an authorized dealer or distributor of Complainant’s goods and Complainant has not authorized or licensed him to use its HP mark, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services. The web site resolving from the Domain Name is inactive, and Respondent is using the Domain Name for an email address from which he sends unsolicited emails which attempt to deceive recipients into making advance payments for laptops which are never sent. These allegations are supported by competent evidence.
Information provided to the Forum by the registrar submitted as Complaint Exhibit A-1 shows that the Domain Name is registered to “Ricardo Samperio.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that Respondent is not an authorized dealer or distributor of complainant’s goods, and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (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), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit G is a screenshot of the web page resolving from the Domain Name. The only content on it reads: “This site can’t be reached.” The site is obviously inactive. Hosting an inactive web site does not qualify as using a domain name for a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶4(c)(iii). George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complaint Exhibit H consists of copies of emails sent from the email address ricardo.samperio2@hplicitaciones.com to various persons in Mexico and responses from such persons, all regarding Respondent’s offer to sell HP Spectre laptop computers for 4,000 Mexican pesos. Complaint Exhibit I is an English translation of these emails. Respondent states that he is working with the manufacturer of the laptops and requests payment in advance. The actual retail value of one of these laptops is some 29,999 Mexican pesos, not the 4,000 quoted by Respondent. See, Complaint Exhibit J. Complaint Exhibits K and L are copies of fraud reports posted by consumers about an identical scam conducted under the same name, Ricardo Samperio, using similar infringing domain names and the same misspelling of the laptop model (Specter vs. Spectre). It is clear from these reports that consumers who responded and sent money never received the laptops. As the Domain Name contains Complainant’s HP mark, it implies a lawful affiliation with Complainant and amounts to Respondent passing himself off as such. Respondent is using that Domain Name to attempt to defraud consumers by offering HP laptops for sale and not delivering them when payment is made. Using a domain name to gain commercially through a fraudulent email scam is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”), Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use. Respondent registered and is using the Domain Name for an email address from which he fraudulently offers to sell Complainant’s computers with no intent except to induce them to pay money for goods that will never be sent. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name in furtherance of a fraudulent scheme has often been held to constitute bad faith pursuant to Policy ¶ 4(b)(iv). Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use), SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”), Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith), Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)), Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Additionally, Respondent is using the Domain Name to attempt to divert potential purchasers of Complainant’s laptops away from Complainant. This necessarily disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). See e.g. Yahoo! Inc. v. Kalra, FA1512001650447 (Forum Dec. 31, 2015) (“Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”).
Finally, it is evident from Complainant’s worldwide fame as a manufacturer of computers, from the use of Complainant’s HP mark in the Domain Name, and from Respondent’s purported offer to sell Complainant’s goods, that Respondent had actual knowledge of Complainant’s mark in April 2018 when he registered the Domain Name. See, Complaint Exhibit A for registration date. Respondent obviously intended to use Complainant’s mark in connection with its fraudulent scheme and selected the Domain Name with that purpose in mind. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hplicitaciones.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
February 19, 2019
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