Hewlett-Packard Development Company, L.P. v. Bandeep Singh
Claim Number: FA1612001709313
Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Bandeep Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <hpprinterinstalls.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2016; the Forum received payment on December 22, 2016.
On December 27, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hpprinterinstalls.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@hpprinterinstalls.com. Also on December 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Hewlett-Packard Development Company, L.P., through its licensees and predecessors in interests, is a global provider of printers, PCs, mobile devices, solutions, and services. Complainant has rights in the HP mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Respondent’s <hpprinterinstalls.com> is confusingly similar to the HP mark, as it contains the mark in its entirety, merely differing by adding the generic or descriptive terms “printer” and “installs,” and appending the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by <hpprinterinstalls.com>, nor has Complainant authorized Respondent to use the HP mark. The disputed domain name resolves to a web page which incorporates Complainant’s marks and logos, and offers competing technical support services and printer software. Further, the resolving web site is being used to distribute malware or false adware warnings. Respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent’s registration and use of <hpprinterinstalls.com> is in bad faith. Respondent’s passing off as Complainant in order to compete with Complainant shows bad faith under Policy ¶¶ 4(b)(iii) & (iv). Respondent’s registration and subsequent use of <hpprinterinstalls.com> was done with actual knowledge of Complainant’s rights in the mark. Further, Respondent’s use of the resolving website to distribute malware shows bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Development Company, L.P., through its licensees and predecessors in interests, is a global provider of printers, PCs, mobile devices, solutions, and services. Complainant has rights in the HP mark based upon registration with the USPTO (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Respondent’s <hpprinterinstalls.com> is confusingly similar to the HP mark.
Respondent, Bandeep Singh, created the <hpprinterinstalls.com> domain name on February 24, 2016.
Respondent has no rights or legitimate interests in the <hpprinterinstalls.com> domain name. The disputed domain name resolves to a web page which incorporates Complainant’s marks and logos, and offers competing technical support services and printer software. Further, the resolving web site is being used to distribute malware or false adware warnings.
Respondent’s registration and use of <hpprinterinstalls.com> is 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 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(f), 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 (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 has rights in the HP mark under Policy ¶ 4(a)(i) based upon registration with the USPTO (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <hpprinterinstalls.com> is confusingly similar to Complainant’s HP mark, as the domain contains the mark in its entirety, merely adding the descriptive words “printer” and “installs,” and appending the gTLD “.com.”
Respondent has no rights or legitimate interests in the <hpprinterinstalls.com> domain name. Complainant has not authorized Respondent to use the HP mark. The WHOIS information of record identifies the registrant as “Bandeep Singh.” Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Respondent has failed to use the domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s <hpprinterinstalls.com> resolves to a web page featuring the HP mark and related marks and logos of Complainant, and a similar color scheme to Complainant’s website. Such passing off behavior is evidence of a lack of rights or legitimate interests. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Additionally, Respondent is using the resolving website to offer competing technical support services. Use of a domain name to offer competing goods or services does not evidence rights or legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Respondent’s <hpprinterinstalls.com> resolves to a website disturbing malware or false malware warnings. Use of a disputed domain to distribute malicious software is evidence of a lack of rights or legitimate interests in a domain name. See Baker v. J M, FA 1259254 (Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)).
Respondent registered and is using the <hpprinterinstalls.com> domain name to pass itself off as—and compete with—Complainant, evidence of Policy ¶¶ 4(b)(iii) and (iv) bad faith. Bad faith has been found when a respondent registered and used a disputed domain name and resolving website to pass off as the complainant. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Likewise, attempts to use a disputed domain name to compete with a complainant’s business can be evidence of a respondent’s bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Respondent had actual knowledge of Complainant's rights in the HP mark. Therefore, Respondent registered the <hpprinterinstalls.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 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").
Respondent’s attempts to distribute malicious software at the resolving website are evidence of bad faith under Policy ¶ 4(a)(iii). See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpprinterinstalls.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 8, 2017
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