DECISION

 

Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj / Nava Mani / Whois Agent LiquidNet US LLC / 123-hp.co

Claim Number: FA1609001696018

 

PARTIES

Complainant is Hewlett-Packard Development Company, L.P. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Navamani Mathavadian Selvaraj / Nava Mani / Whois Agent LiquidNet US LLC / 123-hp.co (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hp-officejetpro.co> and <i-123-hp.com>, registered with GoDaddy.com, LLC; <123-hp.co>, <123hpsetup.co>, and <123-hp-setup.co>, registered with eNom, Inc.; and <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com>, <123hp-officejet.com>,  <123-hp-setup.com>, and <123-hp-com-setup.com>, registered with LiquidNet Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 29, 2016; the Forum received payment on September 29, 2016.

 

On September 29, 2016 eNom, Inc. confirmed by e-mail to the Forum that <123-hp.co>, <123hpsetup.co>, and <123-hp-setup.co> are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 30, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that <hp-officejetpro.co> and <i-123-hp.com> are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 the Policy.

 

On October 5, 2016, LiquidNet Ltd. confirmed by e-mail to the Forum that <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com>, <123hp-officejet.com>,  <123-hp-setup.com>, and <123-hp-com-setup.com> are registered with LiquidNet Ltd. and that Respondent is the current registrant of the names.  LiquidNet Ltd. has verified that Respondent is bound by the LiquidNet Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

 

On October 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2016 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@123hpsetup.com, postmaster@123hpprinter.com, postmaster@123hpprintersetup.com, postmaster@123hp-officejet.com, postmaster@123-hp.co, postmaster@123-hp-setup.com, postmaster@123-hp-com-setup.com, postmaster@123-hp-setup.co, postmaster@123hpsetup.co, postmaster@i-123-hp.com, postmaster@hp-officejetpro.co.  Also on October 5, 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 November 1, 2016, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

As used herein, “Complainant” or “HP” means Hewlett-Packard Development Company, L.P. (“HPDC”), and its licensees and predecessors in interest, including HP Inc. formerly known as Hewlett-Packard Company. 

 

Complainant is a leading global provider of printers, PCs, mobile devices, solutions, and services.  Complainant’s website <hp.com> is one of the most visited websites in the United States and Worldwide, and the No. 1 most visited site in the category of computer hardware, according to statics provided by Alexa Internet.  Complainant ranked 20th on Fortune’s 2015 U.S. 500 and 53rd on the Global 500.

 

Complainant has used the “HP” trademark since at least as early as 1941 and has invested tremendous resources in promoting this trademark over the last 75 years.  As a result of Complainant’s promotional efforts and commercial success, the HP trademark has become famous and is consistently recognized as being among the world’s most recognized and valuable brands. 

 

The HP trademark has been found by previous UDRP Panelists to be distinctive, well-known and famous.  See e.g. 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”); 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. Rayne, FA0110000101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that HEWLETT PACKARD and HP are “famous trademarks”); 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); 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”).

 

HP is a registered trademark owned by HP Hewlett Packard Group LLC.  “The 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”).

 

Complainant HPDC is HP Hewlett Packard Group LLC’s exclusive licensee for the HP trademark and has written authorization to enforce the HP mark, file UDRP complaints, and obtain transfers for domain names that are confusingly similar to HP.  As exclusive licensee, HPDC has the right to bring proceedings under the Policy.  See MGM Resorts International v. Calhoun, FA1607001685559 (Nat. Arb. Forum Sept. 1, 2016) (“a licensing agreement stands to confer rights in the licensed mark” for purposes of the Policy); Nat’l Assoc. for Stock Car Auto Racing Inc. v. DeFillippo, FA0306000165152 (Nat. Arb. Forum Aug. 14, 2003) (“Complainant has established rights in the WINSTON CUP mark via the submission of proof that it is licensed to use the mark, which is registered with the U.S. Patent and Trademark Office”); Good Chevrolet Inc. v. Ukolen / Poste restante, FA1410001586324 (Nat. Arb. Forum Jan 12, 2015) (“Complainant holds rights in the CHEVROLET mark as a licensee of General Motors, Inc., which owns the CHEVROLET mark through registration with the USPTO.  Thus, the Panel finds that Complainant has established rights in the CHEVROLET mark for purposes of Policy ¶4(a)(i)”); Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, D2003-0624 (WIPO Oct. 16, 2003) (“As a matter of U.S. law, which governs these proceedings, even a non-exclusive licensee has the right to assert trademark rights in a licensed mark and to take action to protect the licensed mark”); and Dale Earnhardt, Inc. v. Noramar Enters., FA0207000117040 (Nat. Arb. Forum Oct. 1, 2002) (relying on an affidavit to establish that the Complainant was an exclusive licensee and accordingly established rights under the Policy).  

 

Complainant offers free and paid help and support for its products.  Complainant offers a simple and intuitive device setup site at the URL <123.hp.com>.  Complainant’s printer documentation guides users to enter a URL at <123.hp.com> to download appropriate software.  For example, a user would enter http://www.123.hp.com/ENVY4520 for an HP ENVY 4520 printer. 

 

OFFICEJET is a registered trademark and printer brand owned by Complainant HPDC.

 

Complainant uses the famous HP Logo to promote its goods and services. The HP Logo is a registered trademark, and a work protected by international copyright law, and is exclusively licensed to Complainant HPDC. 

 

            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)):

 

All of the disputed domain names are confusingly similar to the famous HP trademark in which Complainant has rights.  The disputed domain names <123hp-officejet.com> and <hp-officejetpro.co> are also confusingly similar to Complainant’s well-known OFFICEJET trademark.

 

The disputed domain names all incorporate the HP trademark in its entirety, adding only a TLD (.com) or ccTLD (.co) and one or more of the following: the numerals “123”; the generic or descriptive terms “setup,” “printer” or “pro”; the letter “i”; one or more hyphens; or Complainant’s registered trademark OFFICEJET.  The resulting URL’s generally imitate Complainant’s <123.hp.com> printer setup URL.

 

Respondent’s addition of generic terms to the well-known HP mark does not avoid confusion, particularly where those terms relate directly to precisely the business areas for which the HP mark is well known.  See American Express Co. v. MustNeed.com, FA0404000257901 (Nat. Arb. Forum June 7, 2004) (“The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶4(a)(i)”); Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (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”); 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); Amazon Technologies, Inc. v. Kumar, FA1602001659580 (Nat. Arb. Forum March 3, 2016) (finding <amazonechosetup.com> confusingly similar to AMAZON ECHO); and Hewlett-Packard Development Co., L.P. v. Joban, FA1406001563533 (Nat. Arb. Forum July 14, 2015) (finding <hpprinter.support> confusingly similar to HP).

 

Respondent’s combination of HP and OFFICEJET in two disputed domains also fails to avoid confusion.  See 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”); and 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). 

 

Adding a single letter to the well-known HP trademark is also not sufficient to distinguish the disputed domain.  See Google, Inc. v. DktBot.org, FA0406000286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”); and Ashley Furniture Industries, Inc. v. Kim Bum, FA1210001467301 (Nat. Arb. Forum Nov. 27, 2012) (“Adding a single letter to a trademark to create a domain name fails to distinguish the resulting domain name from the mark”).

 

Adding hyphens or other punctuation to the HP or OFFICEJET trademarks also fails to distinguish the disputed domains.  See Microsoft Corp. v. The Private Whois Privacy Service, FA1302001484502 (Nat. Arb. Forum March 24, 2013) (“addition of a hyphen or a top level domain name are never significant changes to a trademark under the Policy”); and Twitch Interactive, Inc. v. xie huijie, FA1501001599255 (Nat. Arb. Forum Feb. 12, 2015) (“the addition of punctuation is an irrelevant change under Policy ¶4(a)(i)”).

 

Adding the number sequence “123” to the HP or OFFICEJECT trademarks also fails to distinguish the disputed domains.  See e.g., Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, FA0907001276302 (Nat. Arb. Forum Sep. 17, 2009) (finding <edhardy123.com> confusingly similar to ED HARDY and noting that “the domain name incorporates Complainant’s mark in its entirety with the addition of the generic numerals ‘123’ … [t]he Panel finds that this addition does nothing to negate a finding of confusing similarity under Policy ¶4(a)(i)”); World Wrestling Entertainment, Inc. v. Wuxing, FA1111001415514 (Nat. Arb. Form Jan 11. 2012) (finding <wwe123.com> confusingly similar to WWE); and Microsoft Corp. v. XUEJIAO, FA1203001435117 (Nat. Arb. Forum May 7, 2012) (finding <bing123.com> confusingly similar to BING).

 

In fact, Respondent’s domains combining 123 with the HP trademark were chosen precisely because they are confusingly similar to and easily mistaken for Complainant’s <123.hp.com> official printer setup URL. 

 

Finally, adding a TLD or ccTLD fails to distinguish the disputed domain names from the HP or OFFICEJET trademarks.  See Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009) (“addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”) and L’Oréal v. van der Linden, DNU2012-0001 (WIPO Feb. 15, 2012) (“addition of the ccTLD denomination to a trademark is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark”).

 

Accordingly, Paragraph 4(a)(i) of the UDRP, requiring that the domain names at issue be "identical or confusingly similar to a trademark or service mark in which the complainant has rights" is 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 names in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; and Respondent has never been legitimately known as or referred to as HP or OFFICEJET, or any variation thereof.  As a result, Respondent does not have a legitimate interest in the disputed domain names, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.

 

Respondent is identified as Navamani Mathavadian Selvaraj /Nava Mani/ Whois Agent LiquidNet US LLC/123-hp.co.  Respondent is not commonly known by the HP or OFFICEJET trademarks.  Respondent is not licensed by Complainant or HP Hewlett Packard Group LLC to use the HP or OFFICEJET 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 pages for all of the disputed domains except <123-hp-com-setup.com> display HP product images and beckon users to call 888-287-4081 or 888-304-8988 for purported technical support service offered by Respondent.  Refund policies establish that this is a paid service.  Respondent makes no effort to distinguish itself from Complainant, adopting 123 HP and variants as its trade names, service marks, and primary brands.

Respondent employs site logos derived from and confusingly similar to the HP Logo and which use filenames like <123-hp-com-logo1.png> reflecting Respondent’s intention to mimic Complainant’s 123.hp.com URL. Other site logos are derived from and confusingly similar to the HP and OFFICEJET word marks.

 

Respondent’s websites structure URL’s in the same way Complainant’s genuine support URL’s are structured.  For example, if Complainant’s legitimate support URL is http://www.123.hp.com/ENVY4520, Respondent establishes URL’s such as http://123-hp.co/envy4520/ and http://123hpsetup.com/123-hp-com-envy-4520/ to promote its toll free number.  Note Respondent’s gratuitous use of hp-com in URL’s. 

Respondent’s prominent and pervasive use of the HP and/or OFFICEJET trademarks, along with corresponding product images and lookalike logos and URL’s, is calculated and likely to confuse and mislead the public as to the source of Respondent’s fee-based services and constitutes passing off.  This is not a fair, nominative or otherwise legitimate use.  See Hewlett-Packard Dev. Co., L.P. v. Joban, FA1406001563533 (Nat. Arb. Forum July 14, 2014) (“[using] the <hpprinter.support> domain name to pass itself off as Complainant in order to sell product service plans to unsuspecting consumers … [was] 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)”); Dell Inc. v. Geeks Tech. Solutions Inc., FA1509001637797 (Nat. Arb. Forum Oct. 13, 2015) (finding no legitimate or bona fide use where “Respondent’s websites prominently display pictures of Complainant’s products and alleged marks, and promote Respondent’s competing computer support services”); Yahoo! Inc. v. Rohatgi et al., D2015-2323 (WIPO Feb. 15, 2016) (finding that domains such as <yahootechsupport.net> “are themselves suggestive of being related to customer support provided by the Complainant, [that] there is a reasonable inference that the Respondents have registered and used the disputed domain names to obtain some financial advantage from the confusion with the Complainant’s mark [and that such] use cannot be a basis for rights or legitimate interests under the Policy”) (emphasis added); Amazon Technologies, Inc. v. null, FA1303001488185 (Nat. Arb. Forum April 17, 2013) (“Respondent has chosen to take Complainant’s AMAZON service mark and to use it in its domain name, adding additional words that relate to part of Complainant’s business, thus giving the false impression by the construction of the domain name that it is an official domain name of Complainant dealing with book club services provided by Complainant which will lead to an official website of Complainant dealing with book clubs”) (emphasis added); Microsoft Corp. and Skype v. M-Style, 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”); and Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010) (finding no bona fide or legitimate use where the “disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant”).

Furthermore, Respondent’s use of domain names confusingly similar to HP and OFFICEJET to promote its own competing technical support services under the circumstances set forth above is not a legitimate use.  See Amazon Technologies, Inc. v. Aaron / Tech Base Help, FA1605001674975 (Nat. Arb. Forum June 27, 2016) (“promoting technical support services for Complainant’s Kindle device in competition with the technical support services offered by Complainant” was not a bona fide or legitimate use); Amazon Technologies, Inc. v. Singh, FA1607001685229 (Nat. Arb. Forum Aug. 26, 2016) (using Complainant’s mark in a misleading manner to promote services that compete with those offered by Complainant does not give rise to rights or legitimate interests under the Policy); 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”); and 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”).

The landing page for <123-hp-com-setup.com> promotes domain registration and hosting services.  The hosting company is “Mathavadian Selvaraj Hosting,” which is presumably associated with the nominal registrant Navamani Mathavadian Selvaraj.  Using the well-known HP trademark to attract traffic to Respondent’s hosting service is not a legitimate use.  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).  To the extent the domain is merely parked or inactive, “[o]ne does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009) (citations omitted).  In fact, failure to develop the site demonstrates a lack of genuine interest in the domain name.  Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000).  See also Sun Microsystems, Inc. v. Color Vivo Internet, FA0909001282898 (Nat. Arb. Forum October 21, 2009) (noting that failure to make any active use of a domain name 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)); and Hewlett-Packard Co. v. Shemesh, FA0503000434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark 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)).

For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.

 

C.        REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):

 

Respondent registered the disputed domain names in bad faith.

 

At the time Respondent registered the disputed domain names, the HP and OFFICEJET trademarks were familiar to countless consumers worldwide.  The fact that Respondent’s web sites feature images of Complainant’s products, logos derived from the HP Logo, and URL’s and filenames containing variations of <hp.com> demonstrates that Respondent registered the disputed domain names 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 names with actual 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, FA 1431445 (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)”); Twitter, Inc. v. accueil des solutions inc, D2013-0062 (WIPO April 1, 2013) (“where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith) (emphasis added, citations omitted); and Twitter, Inc. v. Accueil des Solutions, Inc, Case No. D2014-0645 (WIPO June 15, 2014) (“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 the well-known HP and OFFICEJET trademarks into its domain names, and by using these trademarks, Complainant’s product images and lookalike logos and URL’s in a misleading manner, Respondent creates the false impression that its services are offered or sponsored 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 gave 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 mislead Internet users by implying that the respondent was affiliated with the complainant); and 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)); Yahoo! Inc. v. Kalra, FA1512001650447 (Nat. Arb. Forum Dec. 31, 2015) (Respondent's registration of domain names obviously intended to create confusion with Complainant [such as <yahootechnicalhelp.org>], together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”); and Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith).^[1] 

Furthermore, by using domain names that are confusingly similar to the HP and OFFICEJET trademarks to identify itself and promote competing services for profit, 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. 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)”); 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 Respondent’s competing technical support services, and giving consumers the impression Complainant charges for 123.hp.com setup services when it does not, diverts and disrupts Complainant’s business and falls under Policy ¶4(b)(iii).  See 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)); 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)); 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)”).

Furthermore, Respondent’s use of multiple privacy shields and aliases is calculated to frustrate the purposes of WHOIS and obscure registrant’s true identity, and this is further evidence of bad faith.  See Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Nat. Arb. Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service.  In the commercial context, this raises the rebuttable presumption of bad faith registration and use.  Respondent has done nothing to rebut this presumption.  That alone justifies a finding of bad faith”); Enterprise Holdings, Inc. v. Enterptise Online Services, Ltd., FA1205001444232 (Nat. Arb. Forum June 14, 2012) (“[providing false WHOIS information] alone is sufficient grounds to find bad faith registration and use of the domain name”); and Cactus Restaurants Ltd. v. Web Master, FA0604000671297 (Nat. Arb. Forum May 23, 2006) (inferring bad faith from, inter alia, inadequate or inoperative contact details).

Respondent’s failure to make bona fide use of <123-hp-com-setup.com> is further evidence of bad faith. See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009) (“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”); Chrisma Productions, Inc. v. Quinn Jr., FA0905001263592 (Nat. Arb. Forum July 13, 2009) (finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶4(a)(iii) of the Policy); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered the disputed domain name in bad faith); and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, Respondent has engaged in the practice of typo-squatting by intentionally registering domain names that are misspellings of Complainant’s core <123.hp.com> printer setup URL with the intent to divert Internet users for commercial gain.  Previous Panels have found that typo-squatting constitutes bath faith registration and use pursuant to the Policy.  See Nat’l Ass’n of Prof’l Basketball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); and CHEAPCARIBBEAN.COM, Inc. v. Domain Admin / Private Registrations, FA1501001598348 (Nat. Arb. Forum Feb. 12, 2015) (“Respondent’s typosquatting, in itself, is evidence of Policy ¶4(a)(iii) bad faith”).

 

Finally, the sheer number of HP-based domains registered by Respondent shows a pattern of bad-faith domain name registration and is itself evidence of bad faith.  See Microsoft Corp. v. Eliran Mishal, FA1101001370342 (Nat. Arb. Forum March 16, 2011) (registration of nine domain names incorporating Complainant’s mark is evidence of a pattern of bad faith registration and use under Policy ¶4(b)(ii)); and 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)).  Respondent has registered at least 12^[2] domains containing the HP trademark within just a few months, and registering multiple infringing domain names within a short period of time is further evidence of bad faith registration and use under Policy ¶4(b)(ii)). See Microsoft Corp. v. August Communication, FA1106001394983 (Nat. Arb. Forum July 22, 2011). 

 

Based on the foregoing, Respondent has registered the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

The Panel notes the following registration dates for the disputed domain names:

 

<123hpsetup.com>....................................................................... March 29, 2016;

<123hpprinter.com>..................................................................... February 10, 2016;

<123hpprintersetup.com>.......................................................... February 10, 2016;

<123hp-officejet.com>................................................................. February 10, 2016;

<123-hp.co>.................................................................................... February 15, 2016;

<123-hp-setup.com>.................................................................... April 5, 2016;

<123-hp-com-setup.com>........................................................... April 5, 2016;

<123-hp-setup.co>........................................................................ April 5, 2016;

<123hpsetup.co>.......................................................................... April 5, 2016;

<i-123-hp.com>.............................................................................. August 18, 2016; and

<hp-officejetpro.co>..................................................................... June 21, 2016.

 

FINDINGS

(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.

 

DISCUSSION

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 cancelling 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(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.”).

 

Preliminary Issue—Multiple Respondents

In this proceeding, Complainant claims the entities who control the domain names at issue are effectively controlled by the same person and/or entity, even though they are operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  It is evident to this Panel the various domain names are owned by the same entity for the following reasons:

•      All domains except <123-hp.co>, <hp-officejetpro.co> and <i-123-hp.com> have the same nominal owner “Navamani Mathavadian Selvaraj” (identical name, address, phone number and email).

•      The nominal registrant for <hp-officejetpro.co> and <i-123-hp.com>, “Nava Mani,” has the same address and phone number and a very similar e-mail address. In addition, the nominal registrant name “Navamani” appears to be a contraction of “Nava Mani.”

•      The privacy shield used for <123-hp.co> is the same privacy shield previously used by Respondent Navamani Mathavadian Selvaraj for <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com> and <123hp-officejet.com>.

•      The only domain name remaining shielded, <123-hp.co>, promotes the same toll free number (1-888-287-4081) as the other domains clearly held by Respondent.

•      All of the disputed domains are promoting or have promoted the same toll-free number, 1-888-287-4081, except <123-hp-com-setup.com> which is commonly owned according to the WHOIS.

•      All of the domains have the same structure, namely combining the HP trademark with the numeric sequence 123 and/or the name of one of Complainant’s products.

•      The modus operandi of all the domains that are commercially active is the same – i.e., to attract traffic to paid technical support plans.

 

Respondent does not deny it owns all of the disputed domain names.

 

Identical and/or Confusingly Similar

Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Complainant also registered the OFFICEJET mark with the USPTO (Reg. No. 1,968,861, registered Apr. 16, 1996). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i).  USPTO registrations are considered prima facie evidence of complainants’ rights in their asserted marks.  See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO) and see Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption). Complainant does not need to show superior rights to Respondent under Policy ¶4(a)(i); merely that Complainant has some rights somewhere. The fact Complainant and Respondent are in different countries is immaterial.  Complainant has adequately proven its rights in the HP and OFFICEJET marks under Policy ¶4(a)(i).

 

Complainant claims Respondent’s domain names are all confusingly similar because they include the HP and/or OFFICEJET marks as the dominant feature, and merely add the numerals “123,” the generic/descriptive terms “setup,” “pro,” or “printer,” hyphenation, and/or the letter “i.”  The domain names also append the top-level domains “.co” or “.com.” Combination of marks increases confusion. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Adding “123” to a mark “does nothing to negate a finding of confusing similarity.” Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, FA0907001276302 (Forum Sept. 17, 2009). Generic and descriptive terms are not considered distinguishing under a Policy ¶4(a)(i) analysis, especially where they relate to the goods and services offered under a complainant’s mark(s). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Adding single letters and hyphenation is insufficient in overcoming a finding of confusing similarity under a Policy ¶4(a)(i) analysis.  See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). It should be noted Complainant also uses the 123.hp.com subdomain (which explains why Respondent picked the disputed domains.  A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.  See EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Forum Nov. 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶4(a)(i) analysis); see also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). The disputed domain names are confusingly similar to the HP and/or OFFICEJET marks pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

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 (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 (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 has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or authorized Respondent to incorporate the marks in domain registrations.  In Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014), it was held the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark. In this proceeding, the publicly available WHOIS shows no obvious connection between any Respondent’s name and the disputed domain names.  Respondent has not claimed to the contrary and certainly has submitted no rebuttal evidence. It is clear Respondent is not commonly known by the HP or OFFICEJET marks, or any of the disputed domain names under Policy ¶4(c)(ii).

 

Complainant claims the domain names, with the exception of <123-hp-com-setup.com>, display Complainant’s products and images and prompt users to call 888-287-4081 or 888-304-8988 for technical support services.  This is true. Respondent also uses logos closely derived from Complainant’s logos. Respondent is passing itself off as Complainant for financial gain. When a respondent clearly copies a complainant’s web offerings or marks, this usually results in a panel finding they have no rights or legitimate interest. 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)). This Panel agrees and so finds under Policy ¶4(a)(ii).

 

<123-hp-com-setup.com> promotes domain registration and hosting services. Respondent’s failure to use the domain name demonstrates Respondent has no rights or legitimate interests under a Policy ¶4(a)(ii) analysis. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“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).”). Respondent’s use of <123-hp-com-setup.com> represents a failure to make any active use of the domain, which means Respondent has no rights and legitimate interests to the <123-hp-com-setup.com> domain name.

 

Finally, the <123-hp.co>, <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com> and <123hp-officejet.com>domain names were registered using a privacy service.  This means the real party in interest has not publicly associated its name with the disputed domain names. The bare trustee has no interest in the disputed domain names (and even disclaims any ability to control the domain name).  Therefore, neither of them can claim to have acquired any rights to the disputed domain names in a commercial context.  

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and used the disputed domain names in bad faith. Complainant argues Respondent’s Registration of 11 domains in the instant case shows a pattern of bad faith under Policy ¶4(b)(ii). This panel is not convinced.  Policy ¶4(b)(ii) provides bad faith can be proven if “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.”  Complainant has not proven it was prevented from reflecting its mark in a domain name.  Not only does Complainant have HP.com, Complainant has 123.hp.com (which is technically a subdomain of HP.com). Respondent has NOT engaged in a pattern of bad faith domain registrations under Policy ¶4(b)(ii).

 

Complainant claims Respondent induces users to use its technical support services for a fee, which directly competes with Complainant’s free technical support services.  Respondent does this while passing itself off as Complainant, all for commercial gain (and upsetting Complainant’s customers).  This constitutes bad faith under Policy ¶¶4(b)(iii) and (iv).  See Toyota Jidosha Kabushiki Kaisha v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by the respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services.”); Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).  Respondent’s bad faith registration and use is adequately proven by offering paid support services while passing itself off as Complainant.

 

Complainant claims it is inconceivable Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in its marks because of the fame and notoriety of Complainant's marks. That may well be true, although each Panel has its own understanding of what is notorious.  What is evident is Respondent knew about Complainant’s marks (because Respondent used them), Respondent knew about Complainant’s printer business (because Respondent posted photographs of Complainant’s products) and Respondent certainly knew about Complainant’s free printer set up program at 123.hp.com (because Respondent essentially mimicked Complainant’s website and did nothing to notify the consumer of the difference between the two websites and the fact Respondent was charging for its services).  Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and that constitutes bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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).

 

Complainant claims Respondent registered some of the disputed domains with a privacy service and this constitutes bad faith registration and use of the affected domains (namely <123-hp.co>, <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com> and <123hp-officejet.com>).  This Panel would agree.  Registering a domain name with a WHOIS privacy service in a commercial context raises the rebuttable presumption of bad faith registration.  Respondent has done nothing to rebut that presumption.  See Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Nat. Arb. Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service.  In the commercial context, this raises the rebuttable presumption of bad faith registration and use.  Respondent has done nothing to rebut this presumption.  That alone justifies a finding of bad faith”); Enterprise Holdings, Inc. v. Enterptise Online Services, Ltd., FA1205001444232 (Nat. Arb. Forum June 14, 2012) (“[providing false WHOIS information] alone is sufficient grounds to find bad faith registration and use of the domain name”); and Cactus Restaurants Ltd. v. Web Master, FA0604000671297 (Nat. Arb. Forum May 23, 2006) (inferring bad faith from, inter alia, inadequate or inoperative contact details).  This fact alone justifies a finding of bad faith for the <123-hp.co>, <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com> and <123hp-officejet.com> domains.

 

Complainant claims Respondent has inactively held <123-hp-com-setup.com>, showing bad faith.  While having a website is only one way to use a domain name, there is nothing to suggest this particular domain name is being used in any fashion whatsoever.  <123-hp-com-setup.com> resolves to a website promoting web hosting services that appear to be provided by the domain name registrar.  Failing to make an active use of a disputed domain name demonstrates a respondent’s bad faith because no rational person would purchase a domain name and not intend to use it. Therefore, Respondent must have registered the domain for other reasons.  Since Respondent has failed to explain its actions, the Panel will presume the obvious.  See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <123hpsetup.com>, <123hpprinter.com>, <123hpprintersetup.com>, <123hp-officejet.com>, <123-hp.co>, <123-hp-setup.com>, <123-hp-com-setup.com>, <123-hp-setup.co>, <123hpsetup.co>, <i-123-hp.com>, and <hp-officejetpro.co> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Wednesday, November 2, 2016