Hewlett-Packard Company and Hewlett-Packard
Development Company, L.P. v. Charles McCleary
Claim Number: FA0605000707110
PARTIES
Complainants are Hewlett-Packard
Company and Hewlett-Packard Development Company, L.P.,
(collectively “Complainant”) represented by Molly Buck Richard, of Richard
Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Charles McCleary (“Respondent”), 206 Nassau Street #3, Princeton,
NJ 08542.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapfish.us>,
registered with Go Daddy Software, Inc.
PANEL
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.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on May 16, 2006; the Forum received a hard copy of
the Complaint on May 17, 2006.
On May 16, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
Forum that the <snapfish.us>
domain name is registered with Go Daddy Software, Inc. and that
Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by
the Go Daddy Software, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 8, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On June 14, 2006, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <snapfish.us> domain name is identical to Complainant’s SNAPFISH mark.
2.
Respondent does not have any rights or legitimate
interests in the <snapfish.us> domain name.
3.
Respondent registered and used the <snapfish.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainants, Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. (hereinafter “Complainant”), hold a
trademark registration with the United States Patent and Trademark Office
(“USPTO”) for the SNAPFISH mark (Reg. No. 2,643,556 issued October 29, 2002),
in connection with the provision of photographic and image processing services,
as well as the offering of online access to digital images. In connection with its business, Complainant
holds the domain name registration for the <snapfish.com> domain name,
and uses the domain name to operate a website offering products and services
related to its digital photography and online photo sharing services.
Respondent registered the <snapfish.us> domain name on December 24, 2005. Respondent’s disputed domain name resolves to a website offering links to Complainant’s website and the websites of Complainant’s competitors. The website located at the disputed domain name also offers the <snapfish.us> domain name registration for sale for $500 and provides a link to a website facilitating such a transaction.
DISCUSSION
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 the 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 (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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
The Panel finds that Complainant has sufficiently demonstrated rights in the SNAPFISH mark pursuant to Policy ¶ 4(a)(i) through Complainant’s federal trademark registration of the mark with the USPTO. See 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.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Complainant asserts
that Respondent’s <snapfish.us> domain name is identical to
Complainant’s SNAPFISH mark.
Respondent’s disputed domain name incorporates Complainant’s mark in its
entirety, adding only the country code “.us.”
Prior panels have concluded that
such an alteration to a complainant’s mark renders the domain name identical to
the mark. In Tropar Mfg. Co.
v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002), the panel held that the
addition of the country-code “.us” in the disputed domain name failed to add
any distinguishing characteristic to the <tropar.us> domain name, and
therefore the disputed domain name was identical to the complainant’s TROPAR
mark. Moreover, in Rollerblade, Inc.
v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel found that the top
level of the domain name such as “.net” or “.com” did not affect the domain
name for the purpose of determining whether it was identical or confusingly
similar. Thus, in the present case, the
Panel finds that the alteration to Complainant’s
SNAPFISH mark inherent in the
disputed domain name renders the <snapfish.us> domain name identical to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights and legitimate interests in the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests with regard to the <snapfish.us> domain name pursuant to Policy ¶ 4(c).
Respondent has failed to provide any evidence demonstrating that it is the owner or beneficiary of a trade or service mark that is identical to the <snapfish.us> domain name. Consequently, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). Furthermore, Complainant asserts that Respondent’s <snapfish.us> domain name resolves to a website that features commercial links to third-party websites, some of which directly compete with Complainant’s business. Complainant also contends that the website located at Respondent’s disputed domain name offers the <snapfish.us> domain name registration for sale. The Panel finds that such use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Moreover, Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that nothing in the WHOIS information indicates that Respondent is commonly known by the <snapfish.us> domain name. Additionally, Complainant alleges that Respondent is not a licensee of Complainant, and is not authorized to use the SNAPFISH mark in any manner. Therefore, in the absence of any evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s <snapfish.us>
domain name resolves to a website offering the disputed domain name
registration for sale at a price of $500, and providing a link to a third-party
website that would facilitate such a sale.
Consequently, the Panel finds that such conduct evinces bad faith
registration and use by Respondent pursuant to Policy ¶ 4(b)(i). See Neiman
Marcus Group, Inc. v. AchievementTec, Inc.,
FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to
sell the domain name for $2,000 sufficient evidence of bad faith registration
and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”).
Moreover, Respondent is using the <snapfish.us> domain name to operate a website featuring links to Complainant’s website, as well as the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent is taking advantage of the likelihood of confusion between Respondent’s <snapfish.us> domain name and Complainant’s SNAPFISH mark and attempting to capitalize on the goodwill established by Complainant in the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is
Ordered that the <snapfish.us> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 22, 2006
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