Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd.
Claim Number: FA1506001625637
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpindigo.com>, registered with eName Technology Co., Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his 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 Forum electronically on June 23, 2015; the Forum received payment on June 23, 2015. The Complaint was submitted in both English and Chinese.
On June 23, 2015, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <hpindigo.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. 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 July 1, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 21, 2015 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@hpindigo.com. Also on July 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
As used herein, “Complainant” or “HP” means Hewlett-Packard Development Company, L.P. and its licensees and predecessors in interest, including but not limited to Hewlett-Packard Company.
Founded in 1939, HP is one of the world's largest Information Technology companies, with revenue totaling more than $111 billion for fiscal 2014. HP ranked 17th on Fortune’s 2014 U.S. 500 and 50th on the 2014 Global 500, 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. Id. HP provides products, services and support via its official web site www.hp.com.
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 recognized and valuable brands. See Interbrand’s Best Global Brands rankings from 2001, 2013 and 2014)
The HP trademark has been found by previous UDRP Panelists to be distinctive, well-known and famous. See e.g. Hewlett-Packard Co. v. Rayne, FA0110000101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that HEWLETT PACKARD and HP are “famous trademarks”); Hewlett-Packard Co. v. Homepage Org., FA 94446 (Nat. Arb. Forum May 11, 2000) (finding that the HP trademark is “famous and distinctive”); Hewlett-Packard Dev. Co., L.P. v. Nelson, D2012-2315 (WIPO Feb. 7, 2013) (finding that the trademark HP is a “distinctive and well-known mark” and referring to its “considerable fame”); Hewlett-Packard Co. v. 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 Int’l 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.”); Hewlett-Packard Co. v. 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); Hewlett-Packard Dev. Co., L.P. v. Mirzaitov, FA1110001412435 (Nat. Arb. Forum Nov. 15, 2011) (“the initials [HP] 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”); and Hewlett-Packard Dev. Co., L.P. v. Fransson, DNU2013-0005 (WIPO Dec. 23, 2013) (“the Panel notes that the trademark HP is well-known worldwide in connection with the technology products and services provided by the Complainant”).
In 1985, the HP incorporated China Hewlett-Packard Company Limited in China, the first Sino-US high technology company. HP (China) is headquartered in Beijing, with nine regional offices in Guangzhou, Shanghai, Hangzhou, Nanjing, Wuhan, Chengdu, Chongqing, Shenyang and Xi'An, and two manufacturing bases in Shanghai and Chongqing. HP (China) has also established seven distribution centers in China, as well as HP Labs China, HP Business School, HP IT Management School and HP Software Engineering Institute. HP (China) has received awards for China's Best Performing Companies and China's Most Respected Companies.
The HP trademark is registered in the United States, China and elsewhere around the world. See e.g., U.S. Registration No.’s 1,116,835, 1,840,215 and 4,411,307; CN Reg. No. 4118913. “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA0703000932344 (Nat. Arb. Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
For more than 20 years, HP has used the trademark INDIGO for printing presses, label and packaging presses, computer printers and associated printing and maintenance services. As of 2005, HP Indigo reportedly had a 75-80% share of the world market for digital photo printing. As of 2007, the HP Indigo press line was reportedly the leading brand for digital presses in the U.S. high-volume segment. As of 2012, Indigo customers were expected to print more than 20 billion pages using Indigo presses. Today, with 6,000 HP Indigo digital presses installed and over 4,000 customers in 120 countries, HP Indigo is both a market leader and well-known brand in the field of digital printing. The INDIGO trademark is registered in the United States, China and elsewhere around the world. See U.S. Registration No.’s 1,949,728 and 1,885,749; CN Reg. No. 606175.
HP uses the following famous, internationally registered logo in connection with its businesses, including digital printing (the “HP Logo”):
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 name is confusingly similar to the HP and INDIGO trademarks.
The disputed domain name incorporates the HP and INDIGO trademarks in their entireties, adding only the generic TLD, .com.
Combining a product name with a house mark to form a domain name does not negate confusing similarity – it makes confusion even more likely. See Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb 8, 2011) (adding the name of a product the Complainant markets to Complainant’s mark is “likely to compound the likelihood of confusion”) (emphasis added); Hewlett-Packard Dev. Co., L.P. v. Kaiser, FA0912001299317 (Nat. Arb. Forum Feb. 10, 2010) (finding <hpproliantservers.com> confusingly similar to HP and PROLIANT and noting that “the combination of Complainant’s two marks creates confusing similarity between the disputed domain name and the marks”); Hewlett-Packard Dev. Co., L.P. v. ORM LTD, FA1405001561092 (Nat. Arb. Forum June 26, 2014) (finding <hpsuresupply.com> confusingly similar to HP and SURESUPPLY and noting that “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”); Hewlett-Packard and Compaq v. Gu Bei et al., FA0911001292980 (Nat. Arb. Forum Dec. 22 2009) (finding <hpcompaqpresario.com> and <hpcolorlaserjet.com> confusingly similar to HP); Microsoft Corp. v. a zhong GG Ltd, FA0912001297546 (Nat. Arb. Forum Jan 20, 2010) (combining MICROSOFT with the Microsoft product name ONEAPP did not distinguish the disputed domain name from MICROSOFT or ONEAPP); Microsoft Corp. v. Newton c/o (P), FA1006001332788 (Nat. Arb. Forum Aug. 21, 2010) (finding <kinectxbox.com> confusingly similar to XBOX, where KINECT is the name of an XBOX accessory); 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”).
Accordingly, Paragraph 4(a)(i) of the UDRP, requiring that the domain name at issue be "identical or confusingly similar to a trademark or service mark in which the complainant has rights" is clearly satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain name; and Respondent has never been legitimately known as or referred to as HP, INDIGO or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as Qingyuan Tianheng Trading Company Ltd. c/o Yangxiaoyi. Respondent is not commonly known by Complainant’s HP or INDIGO marks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s HP or INDIGO marks. 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 landing page for the disputed domain name is entitled “HP Indigo digital presses │ digital printing solutions” and gratuitously displays the HP Logo to falsely suggest that HP operates, sponsors or endorses Respondent’s business:
Among other things, Respondent refers to itself as “HP Indigo” and “TH. HP Indigo” even though it has no association with Complainant. Furthermore, Respondent offers support and maintenance services which directly compete with Complainant’s HP Indigo services. Furthermore, Respondent promotes Complainant’s competitors, including Océ, Canon and Xerox. Furthermore, Respondent’s landing page links to sites that promote various industry competitors.
Respondent’s prominent and pervasive use of Complainant’s HP Logo and the HP and INDIGO trademarks to identify itself is calculated and likely to confuse and mislead the public as to the source of Respondent’s site or Respondent’s relationship with Complainant and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is 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)”); Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Nat. Arb. Forum May 10, 2013) (“Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶4(c)(i) bona fide offering of goods and services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010) (“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services”); Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) (factors that support a finding of no bona fide or legitimate include failure to accurately disclose the registrant’s relationship with the trademark owner); Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010) (finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)).
Furthermore, Respondent’s use of a domain name that is confusingly similar to Complainant’s HP and INDIGO trademarks to attract consumers to Respondent’s unaffiliated and unauthorized business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (no rights or legitimate interest where respondent did not apply for permission or license from complainant to use mark, nor was respondent commonly known by the mark).
Furthermore, Respondent’s use of Complainant’s HP Logo and a domain name confusingly similar to the HP and INDIGO trademarks to offer competing services and promote Complainant’s competitors is not a legitimate use. See Acument Intellectual Props., LLC v. Aaron's General Store.com, FA1009001348931 (Nat. Arb. Forum Nov. 8 2010) (“Such usage improperly leverages the goodwill of the brand name toward the end of selling product in competition with it”); Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Amazon Technologies, Inc. v. Lin, FA1301001480702 (Nat. Arb. Forum Feb 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services 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)”); Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (“[t]he competitive nature of Respondent's use of the … domain name renders this use neither bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of the … domain name under Policy ¶4(c)(iii)”); and Florists' Transworld Delivery v. Malek, FA0604000676433 (Nat. Arb. Forum June 6, 2006) (finding no rights or legitimate interests where the disputed domain was “used in connection with a business that directly competes with Complainant’s business”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time that Respondent registered the disputed domain name, Complainant’s HP trademark was famous and familiar to countless consumers worldwide. Furthermore Complainant’s INDIGO trademark was well known in the printing industry. Since Respondent’s domain name combines two of Complainant’s distinctive trademarks, HP and INDIGO, and since Respondent uses the HP Logo to identify itself, it is clear that Respondent registered the disputed domain name with knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See 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"); Amazon Technologies, Inc. v. Souders, FA1503001610740 (Nat. Arb. Forum April 21, 2015) (finding it inconceivable that Respondent was not familiar with Complainant’s AMAZON mark and that “actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii)); Skype v. Caruso, FA1202001431445 (Nat. Arb. Forum May 4, 2012) (“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”); Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith); 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 Twitter, Inc. v. Accueil des Solutions, Inc, Case No. D2014-0645 (WIPO June 15, 2014) (“The Panel finds that, taking into account the significant reputation associated with the Trade Mark, there is no conceivable legitimate use of the Disputed Domain Name by the Respondent”).
Furthermore, by incorporating Complainant’s well-known marks into the disputed domain, and using Complainant’s HP Logo at the corresponding web site, Respondent creates the false impression of a site that originates with or is endorsed by Complainant. “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, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant). See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. 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 respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009) (finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, by promoting Respondent’s services using the HP Logo and a domain name that is confusingly similar to the HP and INDIGO trademarks, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with these marks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Moreover, promoting competing services and Complainant’s competitors using a domain containing Complainant’s well-known HP and INDIGO trademarks diverts and disrupts Complainant’s business and falls under Policy ¶4(b)(iii). See Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011) (featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)); LEGO Juris A/S v. Mark E, FA1108001403833 (Nat. Arb. Forum Oct 5, 2011) (“By selling Complainant’s products without authorization, Respondent’s commercial activities at the disputed domain name disrupt Complainant’s business and compete with Complainant, which the Panel finds shows bad faith registration and use pursuant to Policy ¶4(b)(iii)”); and Microsoft Corp. and Skype v. ATF The Veil Super Fund, FA1211001470016 (Nat. Arb. Forum December 20, 2012) (“Respondent attempts to facilitate competition with Complainant and disrupt Complainant’s business, which indicates bad faith use and registration under Policy ¶4(b)(iii)”).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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.”).
Complainant uses the HP and INDIGO marks in connection with its business as one of the world’s largest information technology companies. Complainant owns the HP and INDIGO marks through its numerous trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (HP-- e.g., Reg. No. 1,116,835, registered April 24, 1979) (INDIGO-- e.g., Reg. No. 1,885,749, registered March 28, 1995) and China (CN Reg. No. 4118913), which demonstrate its rights in the marks under Policy ¶4(a)(i). Registrations with the USPTO (or other governmental authorities) are sufficient evidence to show rights in a mark according to Policy ¶4(a)(i), even where a complainant and respondent operate and reside in different countries. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has rights in the HP and INDIGO marks under Policy ¶4(a)(i).
Complainant claims Respondent’s <hpindigo.com> domain name is confusingly similar to the HP and INDIGO marks because Respondent has simply combined the two marks. The disputed domain name also differs from the marks by the addition of the gTLD “.com.” As a general rule, the addition of a gTLD must be disregarded in a Policy ¶4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i). See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). Omitting a space does not prevent a finding of confusing similarly under Policy ¶4(a)(i) because spaces are prohibited in domain names. See Julia Fiona Roberts v. Russell Boyd, D2000-0210 (5/29/2000), Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000). Respondent’s <hpindigo.com> domain name is confusingly similar to the HP and INDIGO marks pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). The WHOIS information lists “Yangxiaoyi” as registrant of the disputed domain name. Respondent’s name has no obvious relationship to the disputed domain name. As Respondent has failed to submit a response and given the available WHOIS information, there is no evidence Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See 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 is neither licensed nor authorized to use the HP or INDIGO marks, although they appear on its web site.
Complainant claims Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent utilizes a confusingly similar disputed domain name and website to offer competing support and maintenance services. Respondent also promotes Complainant’s competitors through hyperlinks at the disputed domain name’s website. This behavior is inconsistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii), respectively.
Complainant claims Respondent’s use of a confusingly similar domain name to host a confusingly similar website that prominently displays Complainant’s HP and INDIGO marks constitutes passing off. While this Panel does not read Chinese, the logos are identical to Complainant’s logos. Respondent’s behavior seems to be consistent with passing off and further demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See 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). Respondent does not dispute the claim it is passing itself off as Complainant.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii). Respondent uses a confusingly similar domain name and website to offer services that compete with Complainant, as well as links to Complainant’s competitors. This behavior disrupts Complainant’s business, demonstrating bad faith registration and use under Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii).”). Respondent disputes none of this. The Panel finds Respondent has acted in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent also registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv). Respondent uses a confusingly similar domain name along with a confusingly similar website to offer competing services and links to Complainant’s competitors. While this Panel does not read Chinese, Respondent seems to be doing just that. Respondent does not dispute Complainant’s contention Respondent has acted in bad faith under Policy ¶4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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.’”).
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HP and INDIGO marks because the marks are so famous. Respondent prominently displays Complainant’s marks along with competing services and links to Complainant’s competitors. Respondent had actual knowledge of Complainant's mark and rights based upon the use of Respondent's web site. It seems fairly clear Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's 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").
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <hpindigo.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 23, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page