Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v Michael Huang
Claim
Number: FA0501000411727
Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented
by Heather C. Brunelli, of Thompson & Knight, LLP,
1700 Pacific Ave., Suite 3300, Dallas, TX 75201. Respondent is Michael
Huang (“Respondent”), 5 Newton Road #8, Singapore SG 307944.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwhpshopping.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 31, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <wwwhpshopping.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@wwwhpshopping.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <wwwhpshopping.com>
domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwhpshopping.com> domain name.
3. Respondent registered and used the <wwwhpshopping.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Hewlett-Packard
Development Company is an affiliate of Hewlett-Packard Company (collectively
“Complainant”). Complainant uses the HP
mark in connection with the sale of computer hardware, printers, peripherals,
software, and other related goods and services. The HP mark was first used by Complainant in commerce as early as
1941 and has been continuously used thereafter. Complainant holds several registrations for the HP mark with the
U.S. Patent and Trademark Office (“USPTO), including Reg. No. 2,539,942
(registered on February 19, 2002).
Moreover, the HP mark has been registered in Singapore, Respondent’s
country of residence, since as early as 1988 (Trademark No. 5663/88).
Complainant
holds the registration to the <hpshopping.com> domain name, which is used
in conjunction with its business.
Respondent
registered the <wwwhpshopping.com> domain name on March 12,
2003. The domain name redirects
Internet users to a website that provides search engine services and provides
links to websites that advertise computers, printers and laptop computers.
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."
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.
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.
Complainant has
established that it has rights in the HP mark through registration with the
USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive.
Respondent has the burden of refuting this assumption).
Respondent’s <wwwhpshopping.com>
domain name is confusingly similar to Complainant HP mark because the
domain name incorporates the mark and merely adds the generic term “shopping,”
the prefix “www,” and the generic top level domain “.com.” These additions are insufficient to
distinguish the domain name from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat.
Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established
because the prefix "www" does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark);
see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a Response; therefore, the Panel may accept all reasonable
allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel
presumes that Respondent lacks rights and legitimate interests in the <wwwhpshopping.com>
domain name. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <wwwhpshopping.com>
domain name. Moreover, Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the mark precede Respondent’s registration; (3) Respondent is not
commonly known by the domain name in question).
In addition, Respondent’s
registration and use of the <wwwhpshopping.com> domain name
constitutes typosquatting. Respondent’s
domain name takes advantage of Internet users who intend to access
Complainant’s website located at the <hpshopping.com> domain name
but mistakenly forget to place a period after the “www” prefix. Typosquatting itself is evidence that
Respondent lacks rights and legitimate interests in the domain name. See Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in
and of itself that Respondent lacks rights or legitimate interests in the
disputed domain name vis á vis Complainant); see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where
Respondent used the typosquatted <wwwdewalt.com> domain name to divert
Internet users to a search engine webpage, and failed to respond to the
Complaint).
Also, the Panel
infers that Respondent receives pay-per-click fees for referring Internet users
to commercial websites via the <wwwhpshopping.com> domain
name. Thus, Respondent uses a domain
name confusingly similar to Complainant’s mark for commercial gain. Respondent’s use of the misleading domain
name for commercial gain does not fall within the parameters of Policy ¶¶
4(c)(i) or (iii). See Black &
Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24,
2002) (holding that Respondent’s use of the disputed domain name to redirect
Internet users to commercial websites, unrelated to Complainant and presumably
with the purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wwwhpshopping.com>
domain name resolves to a website that provides links to websites that sell
products that compete with Complainant’s products. The Panel infers that Respondent is using the confusingly similar
domain name for commercial gain by receiving click-through fees and, therefore,
concludes that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
Moreover, the <wwwhpshopping.com>
domain name resolves to a website that provides links to Complainant’s
competitors. Respondent’s use of a domain
name confusingly similar to Complainant’s mark to redirect Internet users to
Complainant’s competitors is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000)
(finding bad faith where Respondent, a company financially linked to
Complainant’s main competitor, registered and used the domain name in question
to disrupt Complainant’s business).
Furthermore,
Respondent’s typosquatting itself is evidence that Respondent registered and
used the <wwwhpshopping.com> domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See RE/MAX
Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring
that Respondent’s registration of the <wwwremax.com> domain name,
incorporating Complainant’s entire mark, was done with actual notice of
Complainant’s rights in the mark prior to registering the infringing domain
name, evidencing bad faith); see also Nat’l Ass’n of Prof’l Baseball Leagues
v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwhpshopping.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
March 15, 2005
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