Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj
Claim Number: FA1609001696174
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 (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <123hpsetup.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 September 30, 2016; the Forum received payment on September 30, 2016.
On October 3, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <123hpsetup.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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.us. Also on October 3, 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 October 31, 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 usTLD 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 usTLD Policy, usTLD 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
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. For printers, 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.
Complainant uses the famous HP Logo, shown below, 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: usTLD Rule 3(c)(ix).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, prior usTLD Panelists have drawn upon UDRP precedent as applicable in their decisions. See Akbank Turk A.S. v. Ridvan Uctuk, FA 211477 (Nat. Arb. Forum Aug. 14, 2008). Accordingly, Complainant has cited decisions made under the UDRP in its arguments.
A. CONFUSINGLY SIMILAR DOMAIN NAME (usTLD Rule 3(c)(ix)(1); usTLD Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to the famous HP trademark in which Complainant has rights. The disputed domain name incorporates the HP trademark in its entirety, adding only a ccTLD (.us), the numerals “123” and the generic or descriptive term “setup.” The resulting domain imitates Complainant’s <123.hp.com> printer setup URL.
Respondent’s addition of the generic or descriptive term “setup” to the well-known HP mark does not avoid confusion, particularly where the added term relates directly to Complainant’s business conducted under the mark. 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 UDRP 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).
Adding the number sequence “123” to the HP trademark also fails to distinguish the disputed domain. 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 [UDRP] 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 chose the disputed domain <123hpsetup.us> precisely because it is confusingly similar to and easily mistaken for Complainant’s <123.hp.com> official printer setup URL.
Finally, adding a ccTLD fails to distinguish the disputed domain names from the HP trademark. 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 Policy, 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 satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (usTLD Rule 3(c)(ix)(2); usTLD 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 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 Policy.
Respondent is identified as Navamani Mathavadian Selvaraj. Respondent is not commonly known by the HP trademark. Respondent is not licensed by Complainant or HP Hewlett Packard Group LLC to use the HP mark. 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 UDRP Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domain is entitled “123 HP Printer Setup - 123.hp.com,” (emphasis added), reflecting Respondent’s intention to mimic Complainant’s 123.hp.com URL. . Respondent adds various HP product images and beckons users to call a toll free number for Respondent’s purported technical support service. This is a paid service, evidenced by the Refund Policy at the bottom of the landing page. Respondent makes no effort to distinguish itself from Complainant, adopting 123 HP as its trade name, service mark, and primary brand. Respondent even employs a site logo that is derived from and confusingly similar to the HP Logo.
Respondent’s prominent and pervasive use of the HP trademark, 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 [UDRP] 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 [UDRP] 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 [UDRP] 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 a domain name confusingly similar to HP 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 UDRP 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”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
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 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 claims rights in the HP mark pursuant to its longstanding registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,116,835, registered Apr. 24, 1979). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶4(a)(i). 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). Complainant has rights in the HP mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <123hpsetup.us> is confusingly similar to the HP mark because the addition of the number sequence “123,” the generic/descriptive term “setup,” and the “.us” ccTLD are not distinguishing features. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Forum October 28, 2015) (concluding that simply adding the ccTLD “.us” to a complainant’s mark “does nothing to distinguish an at-issue domain name from a Complainant’s trademark for the purposes of the Policy”). In Nervous Tattoo, Inc. v. lin jia and linjia co.ltd, it was found that <edhardy123.com> was 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 [UDRP] Policy ¶4(a)(i).” FA0907001276302 (Forum Sept. 17, 2009). Related generic terms are not considered distinguishing under a Policy ¶4(a)(i) analysis. 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.). Complainant uses the domain name 123.hp.com to provide set up information regarding Complainant’s printers. This Panel finds the <123hpsetup.us> domain name is confusingly similar to the HP mark under 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 (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.”).
According to the WHOIS, Respondent’s name is “Navamani Mathavadian Selvaraj”, which bears no obvious relationship to the <123hpsetup.us> domain name. Where a respondent has not submitted any arguments to the contrary, the WHOIS information is generally dispositive of a Policy ¶4(c)(ii) analysis. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In the absence of a response from Respondent, this Panel finds Respondent is not commonly known as the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent has not used <123hpsetup.us> in connection with bona fide offering of goods or services or any legitimate noncommercial or fair use. The landing page of the domain name is actually entitled “123 HP Printer Setup - 123.hp.com,” reflecting Respondent’s intention to mimic Complainant’s <123.hp.com> URL. This includes mimicking Complainant’s <123.hp.com> URL on the “tattletales” when Respondent’s website prints. Respondent includes various HP products and images on its website, and urges Internet users to call a toll-free number for Respondent’s competing technical support service (which charges a fee). This type of competitive and imitating use by a respondent constitutes “passing off” and provides no evidence of rights and legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Respondent has no rights or legitimate interests under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered or used <123hpsetup.us> in bad faith. Complainant claims Respondent has registered and used domain names in a pattern of bad faith under Policy ¶4(b)(ii), as evidenced by numerous domain names registered by Respondent involved in a concurrent UDRP proceeding (FA1609001696018) (which has also been assigned to this Panel). 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).
Promoting competing tech support services for profit confuses Internet users and constitutes bad faith per Policy ¶¶4(b)(iii) and (iv), especially since Respondent uses a similar logo and refers to Complainant’s products. Where a respondent has passed itself off as a complainant, this disrupts complainant’s legitimate business offerings. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶4(b)(iii)). When this this passing off is done for commercial gain, panels have also found Policy ¶4(b)(iv) bad faith because passing off is confusing by design. 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). Respondent has engaged in both Policy ¶¶4(b)(iii) and (iv) bad faith registration and use of the disputed domain because Respondent incorporates Complainant’s marks and likeness for commercial gain.
Complainant claims it is inconceivable Respondent could have registered the <123hpsetup.us> domain name without actual knowledge of Complainant's rights in the mark because of the fame and notoriety of Complainant's HP mark. 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 mark 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <123hpsetup.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, November 2, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page