Hewlett-Packard Development Company, L.P. v. Eric Jhons
Claim Number: FA2304002038748
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Eric Jhons (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <www-8hp.com>, registered with Turkticaret.net Yazilim Hizmetleri Sanayi ve Ticaret A.S..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on April 4, 2023; Forum received payment on April 4, 2023.
On April 11, 2023, the Registrar confirmed by e-mail to Forum that the <www-8hp.com> domain name is registered with it and that Respondent is the current registrant of the name. The Registrar verified that Respondent is bound by the Turkticaret.net Yazilim Hizmetleri Sanayi ve Ticaret A.S. 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 April 11, 2023, Forum served the Complaint and all Annexes, including a Turkish and English Written Notice of the Complaint, setting a deadline of May 1, 2023 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@www-8hp.com. Also on April 11, 2023, the Turkish and English 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Turkish. You have two options: 1. Translate the Complaint and Table of Contents into Turkish, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. The Complaint states that “[t]he the landing page for the disputed domain contains dozens of English phrases (e.g., “Fully Customizable,” “Awesome Features,” “Fully Responsive,” “Why Choose Us,” “Happy Client,” “Awards won,” “Cups of Coffee,” “Projects completed,” “Pricing Table,” “Our Team,” “Web Designer,” etc.), other pages are entirely in English, and Respondent is using the disputed domain name to target a US company.”
The evidence provided with the Complaint shows pages of a website still in a state of development. Certainly, much of the text is Turkish, but there are also tranches of boilerplate material such as “John Doe” customer feedback statements, and gibberish text belonging to no language where product description might otherwise exist. The look and feel of the emerging site is that of Complainant’s own website and, albeit that the site is not in finished form, its shape and structure requires an understanding of Complainant’s official site and, implicitly, and understanding of English. The Panel finds that Respondent has proficiency in the English language and determines, pursuant to Rule 11(a), that the proceedings should be conducted in English.
A. Complainant
Complainant asserts trademark rights in HP. It holds national registrations for that trademark and asserts that the domain name is confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells printers, printer supplies, computers, mobile devices and other goods by reference to the trademark, HP;
2. Complainant is the owner of United States Patent & Trademark Office (“USPTO”) Reg. No. 1,116,835, registered April 24, 1979, for the mark, HP;
3. the disputed domain name was registered on January 3, 2022 and resolves to a website as described above and purporting to offer Complainant’s goods/services; and
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 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.
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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant has registered both trademark, HP, with the USPTO, a national trademark authority, and so has rights in that mark.
The gTLD, “.com”, can be disregarded for the purposes of that comparison (see, for example, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Likewise, the letters, “www” (worldwide web) are equally non-distinctive. What is left is the essential element of the domain name, “8hp”, and the question is whether it would be confused with the trademark, HP.
Addition of the numeral “8” might in certain circumstances avoid confusion but Complainant submits that it uses “URL’s (sic) comprising <www8.hp.com> for anticounterfeit validation pages and other content” and it points to the earlier case of Hewlett-Packard Development Company, L.P. v. avci, FA2109001963902 (Forum Oct. 11, 2021) which found <8-hp.com> confusingly similar to HP. The Panel finds the disputed domain name to be confusing similar to the trademark and accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000‑0624 (WIPO Aug. 21, 2000).
The domain name holder is ““Eric Jhons”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
Complainant provides evidence that the disputed domain name resolves to a website featuring Complainant’s trademark and a logo version thereof and offering similar goods/services to those which Complainant provides. Complainant states that this offering is not unauthorized and by Complainant. There is also an assertion that counterfeit goods are on offer. In either case there is clearly no bona fide offering of goods or services (see, for example, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”; Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain name. The onus thus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel finds that the disputed domain name directs Internet users to an online location which promotes services competitive with Complainant’s business under the trademark and most likely does so for commercial gain in some form or another. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <www-8hp.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 11, 2023
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