Hewlett-Packard
Company and Hewlett-Packard Development Company, L.P. v.
Claim Number: FA0910001290315
Complainant is Hewlett-Packard
Company and Hewlett-Packard Development
Company, L.P. (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hpcomputer.com>, registered with Register.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 21, 2009.
On October 20, 2009, Register.com confirmed by e-mail to the National Arbitration Forum that the <hpcomputer.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 October 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 2009 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@hpcomputer.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <hpcomputer.com> domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpcomputer.com> domain name.
3. Respondent registered and used the <hpcomputer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Company and Hewlett-Packard Development Company, L.P., is an information technology company. Complainant promotes its computer products and services under the HP mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 24, 1979 (Reg. No. 1,116,835). Complainant has used the HP mark continuously in commerce since at least as early as 1941, and now ships 48 million personal computers annually, which makes it number one globally in desktop PC and notebook sales.
Respondent, Hyde Park Computers.net c/o Micah Wissman, registered the <hpcomputer.com> domain name on June 5, 1997. The disputed domain name resolves to a website that offers products and services 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 has established rights in the HP mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO (Reg. No. 1,116,835 issued April 24, 1979). 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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that
Respondent’s <hpcomputer.com>
domain name is confusingly similar to its HP mark. The <hpcomputer.com> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “computer” has been added to the mark; and (2) the
generic top-level domain (“gTLD”) “.com” has been added. The Panel finds that the addition of a term
that describes a mark holder’s business, as does “computer” in this case, does
not sufficiently distinguish a domain name from a mark that it incorporates for
the purposes of Policy ¶ 4(a)(i). The Panel also finds that the addition of a
gTLD does not reduce the likelihood of confusion between the domain name and
the mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so the <hpcomputer.com>
domain name is confusingly similar to
Complainant’s HP mark pursuant to Policy ¶ 4(a)(i). See Marriott
Int’l, Inc. v. Café au lait, FA
93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the
respondent’s domain name <marriott-hotel.com> is confusingly similar to
the complainant’s MARRIOTT mark); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to the complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which the complainant is
engaged, does not take the disputed domain name out of the realm of confusing
similarity); see
also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <hpcomputer.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to respond to these proceedings. See 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); 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).
Complainant contends that Respondent is not commonly known
by the <hpcomputer.com> domain name nor has it ever been the owner
or licensee of the HP mark. Respondent has been identified in the WHOIS
registrant information as “Hyde Park Computers.net c/o Micah Wissman,” and
although the HP mark could be construed as an abbreviation of Respondent’s
name, nothing in the WHOIS record for the disputed domain name lists Respondent
as any variant on the HP mark. Complainant
also points out that “Hyde Park Computers” is defunct as a business, having had
all of its customers transferred to another company in 2005. Also, Respondent has failed to show any
evidence contrary to Complainant’s contentions.
The Panel therefore finds that Respondent is not commonly known by the <hpcomputer.com>
domain name pursuant to
Policy ¶ 4(c)(ii).
See Starwood Hotels &
Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum
Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW
Hotels Worldwide,’ part of which constitutes the disputed domain name, there is
no evidence before the Panel that Respondent was actually commonly known by
that name.”); see
also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
Complainant contends
that Respondent is using the <hpcomputer.com> domain name to operate a website of one of
Complainant’s competitors, and to advertise others. The Panel finds that using a domain name to
promote a complainant’s competitors’ businesses is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use of a domain name under
Policy ¶ 4(c)(iii). See
Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the
respondent’s use of domain names confusingly similar to the complainant’s
WAL-MART mark to divert Internet users seeking the complainant’s goods and
services to websites competing with the complainant did not constitute 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 also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”).
The Panel therefore finds that Respondent’s use of the <hpcomputer.com> domain name is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <hpcomputer.com> domain name under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that
Respondent is using the <hpcomputer.com> domain name (initial registration: June 5, 1997) to host a website advertising competitors of Complainant,
and that this diversion of Internet users to competing businesses is an
intentional disruption of Complainant’s business by Respondent. Consequently, Complainant contends that
Respondent’s actions are evidence of Respondent’s registration and use
of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel
agrees with Complainant’s contentions and finds that Respondent’s competitive
use of the disputed domain name indicates that Respondent registered and is
using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between the complainant and the
respondent, the respondent likely registered the contested domain name with the
intent to disrupt the complainant's business and create user confusion); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr.
9, 2007) (finding that the respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the
disputed domain name to advertise goods and services of complainant’s
competitors, thereby disrupting the complainant’s business).
Complainant also contends that Respondent is gaining commercially from the sales of computer services and products, and that these sales are evidence of Respondent’s bad faith registration and use of the <hpcomputer.com> domain name pursuant to Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent’s commercial gain from its use of the <hpcomputer.com> domain name is evidence of its bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <hpcomputer.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 1, 2009
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