Hewlett-Packard Development Company, L.P. v. huangwei
Claim Number: FA1410001584446
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is huangwei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hewlettpackardenterprise.com>, <hewlett-packardenterprise.com>, <hewlettpackardinc.com>, <hewlett-packardinc.com>, and <hpenterprise.net>, registered with eName Technology Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2014; the National Arbitration Forum received payment on October 13, 2014. The Complaint was submitted in both English and Chinese.
On October 14, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <hewlettpackardenterprise.com>, <hewlett-packardenterprise.com>, <hewlettpackardinc.com>, <hewlett-packardinc.com>, and <hpenterprise.net> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., 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 20, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 10, 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@hewlettpackardenterprise.com, postmaster@hewlett-packardenterprise.com, postmaster@hewlettpackardinc.com, postmaster@hewlett-packardinc.com, and postmaster@hpenterprise.net. Also on October 20, 2014, the Chinese language 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 November 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Policy ¶ 4(a)(i). Complainant owns the HEWLETT PACKARD mark through registrations with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,861,560 registered Nov. 8, 1994). Complainant has also registered HP with the USPTO (Reg. No. 1,116,835 registered Apr. 24, 1979). Complainant uses the mark in connection with computers, printers, software, and data systems. The <hewlettpackardenterprise.com>, <hewlett-packardenterprise.com>, <hewlettpackardinc.com>, <hewlett-packardinc.com> domain names are confusingly similar to the HEWLETT PACKARD mark, while the <hpenterprise.net> domain name is confusingly similar to the HP mark.
2. Policy ¶ 4(a)(ii). Respondent lacks rights in the dispute domain names. WHOIS identifies Respondent as “huangwei,” showing Respondent is not commonly known by the HP or HEWLETT PACKARD marks, or the disputed domain names. Respondent has not used the disputed domain name for a bona fide offering, or for a legitimate noncommercial or fair use. The disputed domain names are inactive.
3. Policy ¶ 4(a)(iii). Respondent has engaged in bad faith registration and use. By registering these five disputed domain names on the same day, Respondent has engaged in a pattern of bad faith by preventing Complainant from reflecting its own trademarks online. In addition, Respondent registered the disputed domain name within moments of global press coverage on Complainant’s plans to separate into HP Inc. and Hewlett Packard Enterprise, which is emblematic of opportunistic bad faith. These circumstances also suggest Respondent had full knowledge of Complainant and its relevant trademark rights at the time of registration. Finally, Respondent’s failure to make an active use of the disputed domain names evinces bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Hewlett-Packard Development Company, L.P. of Houston, TX, USA. Complainant is the owner of domestic and international registrations for the marks HEWLETT PACKARD and HP which it has used continuously since at least as early as 1979 in connection with sale and service of computers, printers, and other related items in the information technology industry.
Respondent is huangwei, of Jiang Su, China. Respondent’s registrar’s address is listed as the same. Respondent registered the domain names on or about October 6, 2014.
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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
As a major information Technology company, Complainant uses the HEWLETT PACKARD and HP marks in connection with computers, printers, software, and data systems. Complainant claims to own the HEWLETT PACKARD mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,861,560 registered Nov. 8, 1994). Complainant also points to USPTO registrations for the HP mark (e.g., Reg. No. 1,116,835 registered Apr. 24, 1979). The Panel finds that Complainant has sufficiently demonstrated Policy ¶ 4(a)(i) rights in the HEWLETT PACKARD and HP marks through such registrations. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <hewlettpackardenterprise.com>, <hewlett-packardenterprise.com>, <hewlettpackardinc.com>, <hewlett-packardinc.com> domain names are confusingly similar to the HEWLETT PACKARD mark. The Panel notes that the additions of the generic-top level domain (“gTLD”) “.com” and hyphens add no distinguishing value to the otherwise included marks. 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). Complainant argues that the added terms “enterprise” and “inc” relate directly to Complainant’s enterprise hardware, software, and solutions businesses, and therefore fail to negate confusing similarity. The Panel agrees that the descriptive/generic terms “enterprise” and “inc” do not sufficiently distinguish the disputed domain names from the HEWLETT PACKARD mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA1059665 (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”); Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Next, Complainant argues that the <hpenterprise.net> domain name is confusingly similar to the HP mark. Again the Panel notes that Respondent has added the term “enterprise,” which Complainant claims to be descriptive of its operation, as well as the gTLD “.net,” which has been deemed irrelevant to the Policy ¶ 4(a)(i) analysis. The Panel agrees that the addition of the term “enterprise” is descriptive of Complainant’s business, and therefore has no distinguishing value relative to the fully incorporated HP mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel here finds that the disputed domain names are confusingly similar to Complainant’s protected marks.
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that Respondent lacks rights in the dispute domain names. Complainant points out that WHOIS identifies Respondent as “huangwei,” showing Respondent is not commonly known by the HP or HEWLETT PACKARD marks, or the disputed domain names. The Panel notes that Respondent has failed to submit any evidence to the contrary, and therefore finds that there is no indication that Respondent is commonly known by the disputed domain names pursuant to 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).
Complainant claims Respondent has not used the disputed domain name for a bona fide offering, or for a legitimate noncommercial or fair use as the disputed domain names are inactive. The Panel notes that Complainant has included a copy of the DomainTools WHOIS Record, which indicates “Domain Name Status: Registered and No Website.” Prior panels have determined that inactive use can be used to find a respondent without Policy ¶ 4(a)(ii) rights. For example, in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), the panel wrote, “The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” The Panel here finds that Respondent is neither using the disputed domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor as a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that by registering these five disputed domain names on the same day, Respondent has engaged in a pattern of bad faith by preventing Complainant from reflecting its own trademarks online. The Panel agrees and finds that Respondent’s registration pattern supports a finding of Policy ¶ 4(b)(ii) bad faith. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
In addition, Complainant argues that Respondent registered the disputed domain name within moments of global press coverage on Complainant’s plans to separate into HP Inc. and Hewlett Packard Enterprise, which is emblematic of opportunistic bad faith. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel wrote, “If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.” The Panel here agrees that Respondent’s registration of the now disputed domain names within close proximity to Complainant’s delineation of the HP Inc. and Hewlett Packard Enterprise efforts supports a finding that Respondent engaged in Policy ¶ 4(a)(iii) bad faith.
Finally, Complainant argues that Respondent’s failure to make an active use of the disputed domain names evinces bad faith. The Panel again notes that the disputed domain names are not used in connection with an active website. The Panel finds that Respondent’s inactive holding of the confusingly similar domain names amounts to bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hewlettpackardenterprise.com>, <hewlett-packardenterprise.com>, <hewlettpackardinc.com>, <hewlett-packardinc.com>, and <hpenterprise.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 28, 2014
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