Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Rinat Mirzaitov
Claim Number: FA1110001412435
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 Rinat Mirzaitov (“Respondent”), Kyrgyz Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpcloud.org>, registered with UK2 Group 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2011; the National Arbitration Forum received payment on October 20, 2011.
On October 21, 2011, UK2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <hpcloud.org> domain name is registered with UK2 Group Ltd. and that Respondent is the current registrant of the name. UK2 Group Ltd. has verified that Respondent is bound by the UK2 Group Ltd. 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 October 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@hpcloud.org. Also on October 25, 2011, the 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.
A timely Response was received and determined to be complete on November 7, 2011.
On November 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Respondent’s <hpcloud.org> domain name is confusingly similar to Complainant’s HP mark as it contains the whole of the HP mark together with a generic word describing the business of Complainant.
2. Respondent does not have any rights or legitimate interests in the <hpcloud.org> domain name as (i) Respondent has not show that it is commonly known by the disputed domain name, (ii) the domain name resolves to a website that contains hyperlinks to third-party websites, both competing with and unrelated to Complainant and (iii) Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <hpcloud.org> domain name.
3. Respondent registered and used the <hpcloud.org>, domain name in bad faith on the grounds that (i) Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <hpcloud.org> domain name, (ii) Respondent has registered multiple domain names that contain famous, third-party marks and hosts competing hyperlinks on the resolving website ,(iii)Respondent receives click-through revenue from the hyperlinks and (iv) , because Respondent must be inferred to have had knowledge of Complainant and its rights in the HP mark.
B. Respondent submitted that:
1. The <hpcloud.org> domain name is not confusingly similar to the HP mark because the initials HP do not sand for the name of Complainant and they are also understood to stand for other words.
2. The disputed domain name is parked with Sedo and Sedo controls the content of the resolving website.
3. The disputed domain name is for sale and it is open to Complainant to buy it.
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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company. Complainants contend that Complainant, Hewlett-Packard Development Company, L.P., is a wholly-owned subsidiary of Complainant, Hewlett-Packard Company. The question therefore arises as to whether those two parties may proceed as one party that has initiated the Complaint.
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.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint establishes a sufficient nexus or link between the Complainants and it will therefore treat them both as a single entity in this proceeding. Accordingly, the Complainants will be collectively referred to as “Complainant” in this decision.
Complainant contends and it has established by evidence to the satisfaction of the Panel that it offers information technology products, including computers and printers, under its HP mark and that it owns trademark registrations with national trademark agencies around the world for its HP mark, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835 registered April 24, 1979) and the State Intellectual Property Service of the Kyrgyz Republic (“SIPSKR”) (Reg. No. 2,116 registered January 26, 1995). See Complainant’s Exhibit E. Prior panels have determined that evidence of trademark registrations with a national trademark authority is sufficient to establish rights under Policy ¶ 4(a) (i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <hpcloud.org> domain name is confusingly similar to Complainant’s HP mark as the disputed domain name incorporates Complainant’s entire HP mark and also contains the generic term “cloud” and the generic top-level domain (“gTLD”) “.com.” The Panel accepts that submission. Prior panels have maintained that the additions of a generic term and a gTLD are insufficient to distinguish adequately a disputed domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also 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).
The generic word “cloud” is often taken to refer to computing and when Complainant’s mark invokes, as it does, the name of the Complainant, a famous computer company, the objective bystander would naturally conclude that the whole domain name referred to Complainant’s activities in cloud computing. Consequently, the Panel holds that Respondent’s <hpcloud.org> domain name is confusingly similar to Complainant’s HP mark under Policy ¶ 4(a) (i).
Respondent, however, contends that the <hpcloud.org> domain name is not confusingly similar to the HP mark, for HP stands not for Hewlett-Packard but
“Headphone” and that, as well as Hewlett-Packard, it also stands for words like “horsepower” and “hire purchase.” The Panel does not accept that submission. It is, of course, true that initials or abbreviations can invoke more than one name or object. But in the present case, the initials in question are widely associated with Complainant, one of the most famous companies in the world and one that is also known as a famous computer company. In these days, with the advent of cloud computing, the combination of the mark with its identification with Complainant and the word “cloud “ with its identification with cloud computing shows beyond any doubt at all that the domain name means the cloud computing activities of Complainant and nothing else.
Accordingly, Complainant has made out the first of the three elements that it must prove.
It is well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out its prima facie case and that Respondent has not rebutted it.
Complainant contends that Respondent is not commonly known by the <hpcloud.org> domain name. Complainant alleges that Respondent is not affiliated with Complainant and that Complainant has not licensed Respondent to use its HP mark in a domain name. The WHOIS information lists “Rinat Mirzaitov” as the registrant of the disputed domain name, which the Panel finds is not similar to the <hpcloud.org> domain name. Past panels in similar situations have determined that the respective respondents were not commonly known by the respective domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain 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). In accordance with these decisions, the Panel holds that Respondent is not commonly known by the <hpcloud.org> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also submits and has established that Respondent’s <hpcloud.org> domain name resolves to a website that contains hyperlinks to third-party websites, both competing with and unrelated to Complainant. Complainant provides screenshots of the resolving website that reveal hyperlinks relating to cloud technology, a picture of a competing computer, and hyperlinks to Complainant’s competitors. Prior panels have found that the resolution of a disputed domain name to such a website is evidence that a respondent lacks rights and legitimate interests. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Accordingly, the Panel determines that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <hpcloud.org> domain name.
While Respondent contends that the disputed domain name is parked with a third-party, Sedo, and that Sedo controls the content of the resolving website, past panels have consistently concluded that Respondent is ultimately responsible for the content of the website resolving from the disputed domain name. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”). The Panel finds accordingly.
Complainant also alleges that Respondent is attempting to sell the <hpcloud.org> domain name for $2,998. Respondent admits that the domain name is for sale. The Panel infers that such an amount exceeds Respondent’s likely registration costs. Previous panels have held that an offer to sell a disputed domain name is evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Consequently, the Panel finds that Respondent’s offer to sell is further evidence that Respondent lacks rights and legitimate interests in the <hpcloud.org> domain name under Policy ¶ 4(a) (ii).
The Panel is also influenced by the fact that in his Response, Respondent virtually says that if Complainant is interested in the disputed domain name it can buy it. Selling property is, of course, legitimate but when a registrant constructs a domain name that is so obviously designed to mislead the user into thinking it is genuine and then attempts to sell it so soon after its registration, the conclusion is irresistible that all of this has been done for an illegitimate purpose.
No other reasons have been advanced as to how Respondent has a right or legitimate interest in the disputed domain name and accordingly the Panel concludes that it has none. Complainant has thus made out the second of the three elements that it must establish.
Complainant claims that Respondent has offered to sell the <hpcloud.org> domain name for $2,998. Prior panels have found that an offer to sell the disputed domain name is evidence of Policy ¶ 4(b)(i) bad faith registration and use. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Respondent is advertising the <bigtow.com> domain name for sale for $5,000. Furthermore, Respondent offered to sell the disputed domain name to Complainant for $4,000. The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Thus, based on the views expressed in these decisions and drawing reasonable inferences from the evidence, the Panel finds that Respondent registered and uses the <hpcloud.org> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also alleges that Respondent has registered multiple domain names that contain famous, third-party marks. Complainant provides a list of these domain names. See Complainant’s Exhibit J. Past panels have found in similar circumstances that registration of domain names that contain third-party marks is evidence of Policy ¶ 4(b)(ii) bad faith registration and use. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b) (ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks). The Panel makes a similar holding in this case.
Complainant claims that Respondent hosts some competing hyperlinks on the resolving website and Complainant’s screenshots support this claim. Previous panels have held in similar cases that such a use disrupts a complainant’s business and is evidence of Policy ¶ 4(b)(iii) bad faith registration and use. 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). The Panel agrees with these decisions and concludes that Respondent registered and is using the <hpcloud.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent receives revenue from the aforementioned hyperlinks in the form of click-through fees. Prior panels have found that the registration and use of a confusingly similar domain name to profit from pay-per-click hyperlinks is evidence that a respondent is attempting to gain commercially by creating confusion, which constitutes Policy ¶ 4(b)(iv) bad faith registration and use. 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.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Therefore, the Panel holds that Respondent registered and uses the <hpcloud.org> domain name in bad faith under Policy ¶ 4(b)(iv). While Respondent claims that it is not responsible for the content found on the resolving website, previous panels have consistently found that a respondent is responsible for any content found on the resolving website. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); see also Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”). The Panel finds accordingly.
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the HP mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, a Panel may nonetheless find that a respondent registered and used a disputed domain name in bad faith under Policy ¶ 4(a) (iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). In the present case, the Panel finds that Respondent had actual notice of the HP mark as that is the only reasonably open conclusion that can be drawn from the composition of the domain name and the fame of the HP mark which is contained in the domain name.
Accordingly, the Panel finds that Complainant has made out the third element that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpcloud.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: November 15, 2011.
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