Hewlett-Packard
Company and Hewlett-Packard Development Company, L.P. v. Alliance Printer
Solutions
Claim
Number: FA0507000511119
Complainants, Hewlett-Packard
Company and Hewlett-Packard
Development Company, L.P., (collectively
“Complainant”), are represented by Molly
Buck Richard of Richard Law Group,
8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Alliance
Printer Solutions (“Respondent”), 466 N. Wells Street, Suite 158, Chicago
IL 60610.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <hpwarranty.com>, registered with
Wild West Domains, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum electronically on July 11, 2005; the National
Arbitration Forum received a hard copy of the Complaint on July 13, 2005.
On July 12, 2005, Wild West Domains, Inc.
confirmed by e-mail to the National Arbitration Forum that the domain name <hpwarranty.com> is registered
with Wild West Domains, Inc. and that Respondent is the current registrant of
the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild
West Domains, 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 July 19, 2005, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 8, 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@hpwarranty.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 August 11, 2005, pursuant to Complainant's
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Judge Harold Kalina (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 <hpwarranty.com>
domain name is confusingly similar to Complainant’s HP mark.
2.
Respondent does not have any rights or legitimate interests in the <hpwarranty.com> domain name.
3.
Respondent registered and used the <hpwarranty.com> domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Since 1941, Complainant has been using the HP mark in connection with
its goods, services, and advertising throughout the world. Complainant holds registrations for its HP
mark in over 140 countries and regions around the world. Complainant also holds over forty-five
registrations for the HP mark with the United States Patent and Trademark
Office (“USPTO”) (E.g., Reg. No. 1,116,835 issued April 24,
1979; Reg. No. 1,474,656 issued February 2, 1988; Reg. No. 2,940,854 issued
April 12, 2005).
Additionally, Complainant owns various domain name registrations for
domain names incorporating its HP mark, such as <hp.com>, <hp.net,
<hp.org>, and <hpshopping.com>.
Complainant’s domain names resolve to websites that contain information
about its products, services, and the company.
Complainant also operates a commercial website that advertises and sells
computers, printers, and other related electronic products.
Respondent registered the <hpwarranty.com>
domain name on January 7, 2005.
Respondent initially used the disputed domain name to redirect Internet
users to Respondent’s website, located at the <allianceprinter.com>
domain name. The website featured
advertisements for toner cartridges and printer maintenance services for
Complainant’s and Lexmark’s printers.
Lexmark is not affiliated with Complainant and is considered its
competitor. Upon receipt of
Complainant’s letter requesting transfer of the disputed domain name,
Respondent stopped diverting Internet users to its website. Currently, the disputed domain name does not
resolve to an active website, but Respondent continues to hold the disputed
domain name and has failed to transfer it to Complainant.
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. 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.”).
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’s registrations for its HP mark with the USPTO are
sufficient to establish a prima facie case
of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent did not submit a response in this case. Thus, Complainant’s
presumption of rights in the mark is not disputed. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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.”). The
Panel finds that Complainant has established rights in the mark for purposes of
Policy ¶ 4(a)(i).
Complainant avers that Respondent’s <hpwarranty.com> domain name is confusingly similar to its HP
mark. The disputed domain name wholly
incorporates Complainant’s mark and adds the generic term “warranty.” The Panel holds that the addition of the
generic term is not sufficient to distinguish the disputed domain name. See
Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001)
(finding that the addition of the generic word “Net” to the complainant’s ICQ
mark, makes the <neticq.com> domain name confusingly similar to the
complainant’s mark); see also 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 the complainant combined with a generic word or term).
Therefore, the Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant asserts that Respondent does not have rights or legitimate
interests in the <hpwarranty.com>
domain name. Complainant’s assertion
establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide concrete evidence that it does have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Respondent does not offer any evidence to indicate that it is commonly
known by the disputed domain name.
Without such evidence, the Panel accepts as true Complainant’s
allegations that Respondent is not commonly known by the disputed domain name. See
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that the complainant’s allegations
are true unless clearly contradicted by the evidence). The Panel concludes that because Respondent
is not commonly known by the disputed domain name, it has not established
rights or legitimate interests under Policy ¶ 4(c)(ii). See
Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14,
2000) (finding no rights or legitimate interest where the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not commonly known by the mark).
Moreover, Complainant has provided evidence that Respondent was using
the disputed domain name to divert Internet users to its own website, offering
competing products and services. Because
Respondent did not provide the Panel with a response, the Panel accepts
Complainant’s descriptions of the website as accurate and Complainant’s
arguments as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”). Thus, the Panel holds that such use was not 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). See Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003)
(“Respondent's registration and use of the <gayaol.com> domain name with
the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”).
Complainant has also provided evidence that
currently, the disputed domain name does not resolve to an active website. Respondent’s failure to file a response
leads the Panel to infer that Respondent is currently passively holding onto
the disputed domain name. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the
complaint). The Panel holds that
passive holding is not 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). See TMP Int’l, Inc. v. Baker Enters.,
FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that
Respondent's passive holding of the domain name does not establish rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home
Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no
rights or legitimate interests in the domain name <solgarvitamins.com>
where the respondent passively held the domain name).
Consequently, the Panel concludes that
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s initial use of the disputed domain name featured
advertisements and provided services in direct competition with Complainant. The Panel holds that such use constitutes
disruption and is evidence of bad faith use and registration under Policy ¶
4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat.
Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and
used in bad faith where the respondent and the complainant were in the same
line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Additionally, Respondent’s registration of the confusingly similar
domain name provided Respondent with the ability to commercially benefit from
Internet user confusion. The Panel
holds that Respondent’s capitalization of the goodwill associated with
Complainant’s mark is evidence of bad faith use and registration under Policy ¶
4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”); see also
Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov.
10, 2003) (“Respondent used <land-cruiser.com> to advertise its business,
which sold goods in competition with Complainant. This establishes bad faith as
defined in Policy ¶ 4(b)(iv).”).
Furthermore, Respondent’s current passive
holding of the disputed domain name provides additional evidence of bad faith
use and registration under Policy ¶ 4(a)(iii).
See DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s
passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of
the Policy); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that merely holding an infringing domain name without active use can constitute
use in bad faith).
Thus, the Panel finds that 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 <hpwarranty.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge
Harold Kalina (Ret.), Panelist
Dated: August 24, 2005
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