Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Numan c/o Qtechsol
Claim Number: FA1101001370036
Complainant is Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Numan c/o Qtechsol (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hpcertification.net>, <hpcertifications.com>, and <hpcertificationsite.com>, registered with OnlineNIC, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2011; the National Arbitration Forum received payment on January 28, 2011.
On February 10, 2011, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <hpcertification.net>, <hpcertifications.com>, and <hpcertificationsite.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 February 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2011 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@hpcertification.net, postmaster@hpcertifications.com, postmaster@hpcertificationsite.com. Also on February 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The terms “HP” and “Complainant,” as used herein, include all licensees and predecessors in interest.
Founded in 1939, HP is the world's largest IT company, with revenue totaling $126 billion for fiscal 2010. HP ranks 10th on the 2010 Fortune 500, has approximately 304,000 employees, and serves more than a billion customers in 170 countries on six continents. HP ships more than 1 million printers per week and ships 48 million PC units annually. One out of every three servers shipped worldwide is from HP. HP has been ranked as the world’s seventh largest software company.
HP uses numerous trademarks in connection with its goods and services, including but not limited to the trademark “HP.” HP began using the HP trademark at least as early as 1941. HP has invested tremendous resources in promoting this trademark over the last 70 years. As a result, the HP trademark has become famous. In fact, the HP trademark is consistently recognized as being among the world’s most valuable brands. See Interbrand’s Best Global Brands rankings from 2001 and 2010.
The HP trademark has been found by previous panelists of the National Arbitration Forum to be famous and distinctive. See e.g. Hewlett-Packard Co. v. Mike Rayne, FA0110000101465 (Nat. Arb. Forum Dec. 17, 2001)(finding that HEWLETT PACKARD and HP are “famous trademarks”); Hewlett-Packard Co. v. Homepage Organisation, FA 94446 (Nat. Arb. Forum May 11, 2000) (finding that the HP trademark is “famous and distinctive”); Hewlett-Packard Co. v. Kim Yong Hwan, FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (noting that “Complainant’s mark ‘HP’ is famous and distinctive, and, thus, is entitled to the higher protection afforded it by law”); Hewlett-Packard Co. v. Compu-D International Inc., FA 99660 (Nat. Arb. Forum Oct. 5, 2001) (“Over the last sixty years HP has become a famous and distinctive mark due to Complainant’s promotional efforts.”); and Hewlett-Packard Co. v. Skip Zwahlen, FA 99755 (Nat. Arb. Forum Oct 24, 2001) (finding that HP is recognized in the United States and throughout the world as distinctly designating products originating with Complainant).
HP has registered “HP” in the U.S. and internationally. For example, U.S. Registration No. 1,116,835 for HP issued on April 24, 1979 and covers, among other things, computers and programs for computers. U.S. Registration No. 1,840,215 for HP issued on June 21, 1994 and covers, among other things, computers and computer software. U.S. Registration No. 1,775,518 for HP & Design issued on June 8, 1993 and covers, among other things, training courses in the field of computer systems. The HP mark is also registered in the United Kingdom, where Respondent purportedly resides, and the European Union. These and other registrations for the HP trademark issued well prior to the registration date for the disputed domain name.
HP owns the domain name <hp.com> and uses this domain name to offer computer-related goods and services, including technical training, certification in various categories, and certification exam preparation services. HP has provided and promoted these services under the HP mark since well before registration of the disputed domain name.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s well-known HP trademark which was used by Complainant and registered as a trademark well before Respondent registered the disputed domain names.
The disputed domain names incorporate Complainant’s famous HP trademark in its entirety, adding only the generic term “certification,” which describes Complainant’s certification and exam preparation services, the generic term “site,” and the generic top level domains “.com” or “.net.” The mere addition of generic, common terms to Complainant’s HP trademark does not negate confusing similarity between Respondent’s domain name and Complainant’s mark, especially where the added terms merely describe products or services Complainant provides under the HP mark. See Hewlett-Packard Co. v. Numan c/o Qtechsol, FA1009001347938 (Nat. Arb. Forum Nov. 9, 2010)(finding <hpcertification.com> confusingly similar to HP and awarding transfer); Hewlett-Packard Development Co. v. Simon Gong, FA1009001347937 (Nat. Arb. Forum Nov. 4, 2010)(finding <hpexams.com> confusingly similar to HP and awarding transfer); Hewlett-Packard Co. v. steve lee c/o steve lee, FA1009001347939 (Nat. Arb. Forum Nov. 12, 2010)(finding <hp-exam-certification.com> confusingly similar to HP and awarding transfer); Microsoft Corp. v. DNS MANAGER c/o ABSOLUTEE CORP. LTD., FA1001001304377 (Nat. Arb. Forum March 26, 2010)(finding <microsoftcert.com>, <microsoftcert.net>, <microsoftcertifications.net>, <microsoftcertification.biz> and other domains confusingly similar to MICROSOFT and awarding transfer); Hewlett-Packard Dev. Co. L.P. v. Surya Tech. c/o Manoj Kumar Allakattu, FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain names are confusingly similar to Complainant’s HP trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s HP trademark, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Numan c/o Qtechsol. Respondent is not commonly known by Complainant’s HP trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s HP trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain names resolve to commercials sites with the title banners, “HP Certification Net,” “HP Certifications,” and “HP Certification Site” respectively. The sites sell and/or promote the sale of third-party exam preparation materials or services that compete with exam preparation materials and services offered by HP. Respondent’s site also features materials relating to certification by Complainant’s competitors (e.g., Apple, IBM and Sun). This is not a legitimate or bona fide use of the disputed domain names.
Indeed, a previous Panel found a lack of legitimate or bona fide use under very similar circumstances in Microsoft Corp. v. DNS MANAGER c/o ABSOLUTEE CORP. LTD., FA1001001304377 (Nat. Arb. Forum March 26, 2010):
The Panel finds that Respondent’s use of the … [disputed] domain names to intentionally attract Internet users to its websites where it offers exam preparations for Complainant’s exams, in direct competition with Complainant, while displaying Complainant’s marks is not a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Similarly, the panel in Hewlett-Packard Co. v. Numan c/o Qtechsol, FA1009001347938 (Nat. Arb. Forum Nov. 9, 2010) found that the Respondent lacked legitimate or bona fide use for <hpcertification.com> and noted:
Respondent uses the disputed domain name to offer IT certification exam preparation materials and other services that compete with Complainant’s exam preparation services. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii).
See also SAS Institute Inc. v. Shaukat Miraj, FA0909001286507 (Nat. Arb. Forum Nov. 9, 2009)(concluding that “using the <sas-institute-exams.com> domain name to host a website that advertises software and other exam products that compete with Complainant’s business” … “is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the domain under Policy ¶4(c)(iii)”); and Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶4(c)(i) or (iii) because that respondent used the domain there in issue to take advantage of a complainant's mark by diverting Internet users to a competing commercial site).
There are no visible source identifiers on Respondent’s web sites, other than the famous HP trademark in the URL’s, copyright notices and elsewhere. As a result, consumers are likely to believe that these sites originate with or are sponsored by Complainant. Attempting to pass oneself off as a trademark holder is not a legitimate use. See Crow v. LOVEARTH.net, FA203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant....”); and Computerized Sec. Sys., Inc. v. Hu, FA157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time that Respondent registered the disputed domain names, Complainant’s HP trademark was already famous, and was associated by consumers with exam-preparation and professional certification services. It is clear from the disputed domain names themselves, as well as the pages to which the domain names resolve, that Respondent was not only familiar with Complainant’s trademark at the time of registration of the domain names, but intentionally adopted names combining the famous HP mark with the term “certification” to create an association with Complainant.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corporation v. Cedric Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Respondent’s sites directly compete with Complainant’s exam preparation services and/or link to third parties that do so. In either case, these are commercial operations competing with Complainant and acquiring traffic through the misuse of Complainant’s famous mark. This is further evidence of bad faith. See Microsoft Corp. v. DNS MANAGER c/o ABSOLUTEE CORP. LTD., FA1001001304377 (Nat. Arb. Forum March 26, 2010)(“by using confusingly similar domain names to divert Internet users to its website where it sells competing programs for Complainant’s exams … Respondent has engaged in registration and use of the disputed domain names in bad faith under Policy ¶4(b)(iii)”); Hewlett-Packard Development Co. v. Simon Gong, FA1009001347937 (Nat. Arb. Forum Nov. 4, 2010)(finding that the respondent’s use of <hpexams.com> for a website featuring products and services or links to products and services in direct competition with Complainant’s exam preparation business disrupted Complainant’s business and constituted bad faith registration and use under Policy ¶4(b)(iii)); and Hewlett-Packard Co. v. Numan c/o Qtechsol, FA1009001347938 (Nat. Arb. Forum Nov. 9, 2010)(“Internet users seeking Complainant’s exam preparation services are confused as to the source, affiliation, or endorsement of Respondent’s disputed domain name [hpcertification.com]. The Panel finds that such use of the disputed domain name constitutes bad faith registration and use under Policy ¶4(b)(iv).”). Use of Complainant’s mark to redirect traffic to competing products amounts to unfair competition and disruption of Complainant’s business under Policy ¶4(b)(iii).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant's HP trademark as to the source, sponsorship, affiliation, or endorsement of third-party products and services. This constitutes bad faith under §4(b)(iv) of the Rules. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
Respondent’s web sites are designed to appear to emanate from Complainant, and their function is to sell Respondent’s or third-party products and services. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS v. Robertson. See also Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“...imitating Complainant’s official website … constitutes bad faith use and registration pursuant to Policy ¶4(a)(iii)”); MidFirst Bank v. Adam Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and to provide misleading information to the public supported a finding of bad faith); and DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s bad faith use of the title “Dodgeviper.com Official Home Page” gave consumers the misimpression that the complainant endorsed and sponsored a respondent’s website).
Finally, Respondent has engaged in a pattern of registering infringing domain names, having registered the 3 names at issue in this Complaint and having been previously named in at least one adverse UDRP decision: Hewlett-Packard Co. v. Numan c/o Qtechsol, FA1009001347938 (Nat. Arb. Forum Nov. 9, 2010)(finding <hpcertification.com> confusingly similar to HP and awarding transfer). A pattern of registering infringing domain names is evidence of bad faith registration and use pursuant to Policy ¶4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Based on the foregoing, Respondent has registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used its HP mark since 1941 in connection with an assortment of products including, computers, computer programs and software, computer training programs, and exam preparation services. Complainant holds numerous trademark registrations for its HP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 issued April 24, 1979).
Respondent, Numan c/o Qtechsol, registered the <hpcertification.net> and <hpcertifications.com> domain names on December 12, 2008 and the <hpcertificationsite.com> domain name on January 19, 2008. The disputed domain names resolve to websites which sell and/or promote the sale of third-party exam preparation materials or services in competition with the products and services offered by 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 relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
There are two Complainants in this matter: Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company. The Panel finds that Complainants are related companies. See Hewlett-Packard Dev. Co., L.P. and Hewlett-Packard Co. v. HaiZhi Zheng, FA 1293311 (Nat. Arb. Forum Dec. 23, 2009); see also Hewlett-Packard Dev. Co., L.P. and Hewlett-Packard Co. v. Jonathan Kaiser, FA 1299317 (Nat. Arb. Forum Feb. 10, 2010). Therefore, the Panel chooses treat them as a single entity in this proceeding. Complainants will hereinafter be referred to as “Complainant.”
Complainant asserts it has established its rights in the HP mark. Previous panels have found a complainant can establish rights in a mark through federal trademark registration. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). It is not necessary for Complainant to register its mark within the country of Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Here, Complainant holds numerous trademark registrations for its HP mark with the USPTO (e.g., Reg. No. 1,116,835 issued April 24, 1979). Therefore, the Panel concludes Complainant has adequately demonstrated its rights in the HP mark under Policy ¶4(a)(i).
Complainant argues Respondent’s disputed domain names are confusingly similar to Complainant’s HP mark. The disputed domain names contain Complainant’s mark in its entirety and merely add the descriptive words “certification,” “certifications,” or “certification site,” which describe Complainant’s certification and exam preparation services, and add the generic top-level domains (“gTLD”) “.com” or “.net.” The Panel finds adding descriptive words relating to Complainant’s business fails to properly differentiate the disputed domain name from Complainant’s mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶4(a)(i).”). The Panel also finds that affixing a gTLD does not help to avoid a finding of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Thus, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s HP mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant argues Respondent lacks rights and legitimate interests in the disputed domain names. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held the complainant must first make a prima facie case the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie showing in support of its claims against Respondent. Since no response was submitted to the Complaint, the Panel is allowed to assume Respondent has no rights and legitimate interests pursuant to Policy ¶4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel agrees to first look at the record to determine whether Respondent has rights or legitimate interests under Policy ¶4(c).
Complainant asserts Respondent is not commonly known by the disputed domain names. In the WHOIS information provided, Respondent is identified as “numan/qtechsol,” which is not similar to the disputed domain name. Complainant maintains Respondent is not affiliated with its HP mark in any way and is not licensed by Complainant to use the mark in the disputed domain names. The Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii), because there is no evidence in the record which indicts otherwise. See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the disputed domain names to redirect Internet users to commercial websites which sell and/or promote the sale of third-party exam preparation material or services in direct competition with the materials and services provided by Complainant. Complainant’s HP mark is displayed visibly on the resolving websites apparently in an attempt to pass itself off as one of Complainant’s official websites. The Panel finds Respondent’s use of the disputed domain names to operate websites which display Complainant’s mark and feature and sell products in competition with Complainant 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant alleges Respondent’s use of the disputed domain names disrupts its business. Internet users intending to purchase Complainant’s exam preparation materials or services may find Respondent’s website instead due to the confusingly similar disputed domain names. Users may then purchase similar materials or services from a competitor as a result. The Panel finds Respondent’s use of the disputed domain names does disrupt Complainant’s business, which is evidence of bad faith use and registration under Policy ¶4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
The disputed domain names resolve to commercial websites offering for sale third-party exam preparation materials and services. Respondent likely profits from the sale of these materials or from click-through fees from the third-parties. Given the confusingly similar disputed domain names and use of Complainant’s HP mark on the resolving websites, users may become confused as to Complainant’s sponsorship of, or association, with the websites and materials offered for sale. Respondent attempts to capitalize off this confusion through sales profits or click-through fees. The Panel finds Respondent’s use of the disputed domain names constitutes bad faith use and registration under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel also finds Respondent’s attempt to pass itself off as Complainant provides further evidence of registration and use in bad faith under Policy ¶4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶4(a)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds Policy ¶4(a)(iii) 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 <hpcertification.net>, <hpcertifications.com>, and <hpcertificationsite.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 18, 2011
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