Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Bin g Glu
Claim Number: FA0605000714965
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 Bin g Glu (“Respondent”), G Design, no sale - building, 2-4-201 64 Shuangtaxijie, Taiyuan, Shanxi 30012, CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <snapfihs.com>, registered with Communigal Communications Ltd.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 26, 2006.
On May 29, 2006, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <snapfihs.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 May 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 20, 2006 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@snapfihs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <snapfihs.com> domain name is confusingly similar to Complainant’s SNAPFISH mark.
2. Respondent does not have any rights or legitimate interests in the <snapfihs.com> domain name.
3. Respondent registered and used the <snapfihs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Development Company, L.P., and its parent company, Hewlett-Packard Company, and its licensees and predecessors in interest, is a global technology solutions company. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) including one for its SNAPFISH mark (Reg. No. 2,643,556 issued October 29,2002). Complainant began using the SNAPFISH mark at least as early as April 2000 in connection with services being offered including photographic and image processing services and providing online access to digital images.
Respondent registered the <snapfihs.com> domain name on January 6, 2004. Respondent’s disputed domain name resolves to a website featuring links to Complainant’s website as well as third-party websites that offer a variety of goods and services, some of which are in direct competition with 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.
The Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the SNAPFISH mark. 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 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.”).
Complainant contends that
Respondent’s <snapfihs.com> domain name is confusingly
similar to Complainant’s SNAPFISH mark pursuant to Policy ¶ 4(a)(i) as it
transposes two of the letters of the mark.
In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26,
2002), the panel found <googel.com> to be confusingly similar to the
complainant’s GOOGLE mark and noted that the transposition of two letters did
not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflected a very probable typographical error. See Pier
1 Imps., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to the complainant's PIER 1 mark). Accordingly, the Panel finds that the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <snapfihs.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have 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 Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Furthermore, Respondent’s failure to answer the complaint raises a presumption that Respondent has no rights or legitimate interests in the <snapfihs.com> domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also 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). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use
Complainant’s SNAPFISH mark, and that Respondent is not associated with
Complainant in any way. Moreover,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain name.
There is also no evidence in the record to suggest that Respondent is or
has ever been known by the disputed domain name. In Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found
that the respondent did not have rights in a domain name where the respondent
was not known by the mark. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Consequently, the Panel finds that Respondent is not commonly known by
the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record indicates
that Respondent is using the disputed domain name to divert Internet users
attempting to find Complainant’s website to a website which displays links to
Complainant’s website and other third-party websites, some of which are in
direct competition with Complainant.
The Panel finds that such use of Respondent’s disputed domain name does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate or noncommercial or fair use under Policy ¶
4(c)(iii). See Wells
Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (holding that the respondent’s use of
“confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements” was not a bona
fide offering of goods or services); see also 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).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains a misspelled
variation of Complainant’s mark.
Respondent is using the <snapfihs.com> domain name to
redirect Internet users to a website that features links to third-party
websites, some of which are in direct competition with Complainant. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); 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).
Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to a third-party website. Furthermore, Respondent’s disputed domain
name incorporating Complainant’s SNAPFISH mark is capable of creating confusion
as to Complainant’s affiliation with the <snapfihs.com>
domain name. In Bank of Am. Corp. v. Out Island Props., Inc., FA 154531
(Nat. Arb. Forum June 3, 2003), the panel found that since the disputed domain
names contained entire versions of Complainant’s marks and were used for
something completely unrelated to their descriptive quality, a consumer
searching for Complainant would become confused as to Complainant’s affiliation
with the resulting search engine website and held that the domain names were
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). The Panel thus concludes that Respondent’s
use of the disputed domain name for commercial gain is equivalent to bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
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 <snapfihs.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: June 30, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum