Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. PrivacyProtect.org c/o Domain Admin
Claim Number: FA1108001403841
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 PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hpprinterdrivers.com> and <hprewards.com>, registered with POWER BRAND CENTER CORP.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2011; the National Arbitration Forum received payment on August 18, 2011.
After numerous requests, the Registrar, Power Band Center Corp. did not confirm to the National Arbitration that the <hpprinterdrivers.com> and <hprewards.com> domain names are registered with Power Band Center Corp. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. ICANN’s policy is, and the FORUM’s standing instructions are, to proceed with this dispute.
On September 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@hpprinterdrivers.com and postmaster@hprewards.com. Also on September 9, 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.
On September 27, 2011, POWER BRAND CENTER CORP. responded to the Forum’s numerous requests by explaining that the failure to respond previously was based on personnel issues that had arisen and confirming by e-mail to the National Arbitration Forum that the <hpprinterdrivers.com> and <hprewards.com> domain names are registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. verified that Respondent is bound by the POWER BRAND CENTER CORP. 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”). The Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to the e-mail address in the new contact information provided by POWER BRAND CENTER CORP., csrusenterprises@gmail.com, on September 27, 2011.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hpprinterdrivers.com> and <hprewards.com> domain names are confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or legitimate interests in the <hpprinterdrivers.com> and <hprewards.com> domain names.
3. Respondent registered and used the <hpprinterdrivers.com> and <hprewards.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Development Company, L.P., is a subsidiary of Hewlett-Packard Company, and the two will be collectively referred to hereafter as “Complainant.” Complainant owns numerous trademark registrations for the HP mark with multiple trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 registered April 24, 1979) and IP Australia (e.g., Reg. No. 477,820 registered December 4, 1984). Complainant uses the mark to promote its global computer products business.
Respondent, PrivacyProtect.org / Domain Admin, registered the <hpprinterdrivers.com> domain name on September 9, 2002 and the <hprewards.com> domain name on January 16, 2008. The disputed domain names resolve to pay-per-click websites which offer links to Complainant’s competitors in the IT industry, including Dell, Canon, Kodak, and Lexmark.
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 its rights in the HP mark under Policy ¶ 4(a)(i) by registering it with the USPTO and IP Australia. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the complainant has rights in the mark SYDNEY OPERA HOUSE where parliament authorized the complainant to manage and administer the building and the complainant holds Australian trademark registrations).
Respondent’s <hpprinterdrivers.com> and <hprewards.com> domain names are confusingly similar to Complainant’s HP mark. Both disputed domain names include the entire mark, merely adding the generic top-level domain (“gTLD”) “.com.” The disputed domain names also separately add the generic term “rewards” or terms descriptive of Complainant’s business, “printers” and “drivers.” The Panel finds that these changes are de minimis and have little distinguishing effect on the HP mark. Therefore, the Panel also finds that Respondent’s <hpprinterdrivers.com> and <hprewards.com> domain names are confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also 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 finds that Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds that Complainant has successfully shifted the burden of proof under Policy ¶ 4(a)(ii) to Respondent by making a sufficient prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent failed to file a Response in this matter which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain names in accordance with Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Respondent has submitted no evidence to support a finding to the contrary. The WHOIS information identifies the registrant of the disputed domain names as “PrivacyProtect.org c/o Domain Admin,” which the Panel finds does not suggest a relationship between Respondent and the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain names resolve to a website offering third-party links in a classic pay-per-click format. Many of the links resolve to the websites of Complainant’s competitors, such as Dell, Canon, and Lexmark. Previous panels have concluded that this use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain names. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s resolving website features third-party links to competitors of Complainant in the computer industry. Complainant alleges that Respondent’s “promotion of Complainant’s competitors disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii).” The Panel finds that such use of confusingly similar domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel presumes that Respondent commercially benefits from its use of the disputed domain names. Respondent does so by creating an impression that it is affiliated with, or sponsored by, Complainant, and then collecting click-through or affiliate fees from the businesses advertised on its resolving website when an Internet users mistakenly clicks on one of the links. The Panel finds that such use is evidence that Respondent registered and is using the disputed domain name in bad faith under 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 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 finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpprinterdrivers.com> and <hprewards.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 12, 2011
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