Hewlett-Packard Development Company, L.P. v. ORM LTD
Claim Number: FA1405001561092
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is ORM LTD (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpsuresupply.com>, registered with TUCOWS, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2014; the National Arbitration Forum received payment on May 23, 2014.
On May 23, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <hpsuresupply.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 May 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2014 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@hpsuresupply.com. Also on May 23, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Hewlett-Packard Development Company, L.P., is one of the world’s largest information technology companies.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HP mark (e.g., Reg. No. 1,116,835, registered April 24, 1979) and for the SURESUPPLY mark (Reg. No. 2,949,932, registered May 10, 2005).
The disputed domain name is confusingly similar to Complainant’s HP and SURESUPPLY marks.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the disputed domain name. Respondent’s website displays pay-per-click advertising. Respondent’s website features the solicitation “The domain <hpsuresupply.com> is for sale! To purchase, call at +1 339-222-5147 or 866-836-6791 or click here to BUY NOW!”
Respondent registered and is using the disputed domain name in bad faith. Respondent is attempting to sell the disputed domain name. Respondent is using the disputed domain name to promote supplies for and from Complainant’s competitors and by using the HP mark diverts and disrupts Complainant’s business. Respondent is using Complainant’s HP mark to obtain pay-per-click revenue through the promotion of third-party products.
Respondent had knowledge of Complainant’s marks at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HP and SURESUPPLY marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website promoting pay-per-click links to third-party products including some that compete with Complainant’s products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights under Policy ¶ 4(a)(i) via its registration of the HP mark and of the SURESUPPLY mark with the USPTO. It is immaterial that Respondent may operate outside the jurisdiction of the trademark registrar. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO; see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether or not the complainant has registered its trademark in the country of the respondent’s residence).
In forming the at-issue domain name Respondent concatenates Complainant’s HP and SURESUPPLY marks, and appends the generic top-level domain “.com” thereto. Respondent’s combination of Complainant’s marks and its attachment of a necessary top level domain name to the combination do not significantly distinguish the domain name from Complainant’s trademarks under the Policy. Therefore, the Panel concludes that Respondent’s <hpsuresupply.com> domain name is confusingly similar to Complainant’s trademarks pursuant to Policy ¶ 4(a)(i). See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “ORM LTD.” Furthermore, Respondent is not authorized to use Complainant’s trademarks and there is nothing in the record which tends to otherwise show that Respondent is known by the at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). 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).
The at-issue <hpsuresupply.com> domain name directs Internet users to a webpage that contains advertising titled “HP LASERJET 4 CARTRIDGES,” “INK CARTRIDGES,” “HP INK – STAPLES,” as well as other pay-per-click advertising. It is thus apparent that Respondent is using the confusingly similar domain name to divert consumers to a webpage hosting competing links. This use of the domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances, as well as other circumstances, are present from which the Panel concludes that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s webpage contains the solicitation “The domain <hpsuresupply.com> is for sale! To purchase, call at +1 339-222-5147 or 866-836-6791 or click here to BUY NOW!” Respondent has thus made the at-issue domain name available for sale which, when combined with Respondent’s lack of legitimate rights in the domain name, suggests bad faith under Policy ¶ 4(b)(i). See Trip.com, Inc. v. Daniel Deamone, D2001-1066 (WIPO November 4, 2001)(stating when discussing the respondent’s bad faith that "[a] fourth factor is that Respondent has offered the Domain Name for sale to the public.")
Second, the <hpsuresupply.com> website displays advertising links such as “CANON PIXMA CARTRIDGES,” “HP Ink Cartridge,” “TONER CARDTRIDGES DALLAS,” and others. Using the confusingly similar <hpsuresupply.com> domain name to promote supplies for and from Complainant’s competitors diverts and disrupts Complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Furthermore, using the confusingly similar domain name to improperly capitalize on the goodwill associated with Complainant’s trademarks as Respondent does here, additionally demonstrates Complainant’s bad faith registration and use of the domain name under Policy ¶4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Respondent had actual knowledge of Complainant’s rights in the HP and SURESUPPLY trademarks when it registered the at-issue domain name. Respondent’s knowledge of Complainant’s trademarks is shown in light of the notoriety of Complainant’s marks and the fact that Rx targeted two such trademarks to combine in forming the at-issue domain name. Respondent’s prior knowledge of Complainant’s trademark further indicates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpsuresupply.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 26, 2014
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