Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Jason Banks
Claim Number: FA0603000664373
Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively “Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Jason Banks (“Respondent”), 12765 SW 112 TER, Miami, FL 33186.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwsnapfish.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2006.
On March 23, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwsnapfish.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwsnapfish.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwsnapfish.com> domain name is confusingly similar to Complainant’s SNAPFISH mark.
2. Respondent does not have any rights or legitimate interests in the <wwwsnapfish.com> domain name.
3. Respondent registered and used the <wwwsnapfish.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard Development Company, L.P., is
an affiliate of Complainant, Hewlett-Packard Company (collectively
“Complainant”). Complainant owns the
SNAPFISH mark, which it uses in connection with photographic and image
processing services and online access to digital images. Complainant holds a registration with the
United States Patent and Trademark Office (“USPTO”) for the SNAPFISH mark (Reg.
No. 2,643,556 issued October 29, 2002).
Complainant began using the mark as early as April 2000 in association
with its services.
In addition, Complainant operates a website at the
<snapfish.com> domain name, where Complainant provides a variety of
products and services related to digital photography uploading services, online
photo sharing services and personalized photographic products under its SNAPFISH
mark. These services are used by more
than 19 million members with more than 350 million unique photos stored online.
Respondent registered the <wwwsnapfish.com> domain name on August 9, 2004. The domain name resolves to a directory website that displays links to various third-party websites unrelated to Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has provided evidence of its registration of the SNAPFISH mark with the United States Patent and Trademark Office (“USPTO”). The Panel finds that this is sufficient to establish Complainant’s rights in the mark as provided in Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Furthermore, Complainant contends that the <wwwsnapfish.com> domain name is confusingly similar to Complainant’s SNAPFISH mark, because the addition of the “www” prefix does not distinguish the disputed domain name. In Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000), the panel found the respondent’s <wwwbankofamerica.com> domain name confusingly similar to the complainant’s registered BANK OF AMERICA mark because it “[i]t takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.” The Panel finds that the disputed domain name is a typosquatted version of Complainant’s mark and is, therefore, confusingly similar to the mark in satisfaction of Policy ¶ 4(a)(i). See Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature).
Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has the initial burden of establishing a prima facie case that Respondent lacks rights and legitimate interests in the <wwwsnapfish.com> domain name under Policy ¶ 4(a)(ii). Once Complainant has satisfied its burden, that burden falls on Respondent to provide evidence of its rights or legitimate interests under Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Due to Respondent’s failure to respond, the Panel may presume that Respondent has failed to meet its burden. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel chooses to evaluate whether the evidence provided supports a finding of Respondent’s rights or legitimate interests under Policy ¶ 4(c).
According to the WHOIS information, Respondent has registered the <wwwsnapfish.com> domain name as “Jason Banks.” In Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), the panel found the respondent was not known by the <awvacations.com> domain name, where the respondent had registered the domain name as “Ilyoup Paik a/k/a David Sanders.” Other than the WHOIS information, there is no other evidence in the record to identify Respondent, which leaves the Panel with no evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant asserts that the <wwwsnapfish.com> domain name resolves to a generic search engine website that displays links to various third-party products and services unrelated to Complainant’s business, presumably for the purpose of earning commissions. The panel in Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002), found that the respondent’s use of a confusingly similar domain name to operate a website that displayed links to various commercial websites for profit through click-through fees was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Thus, Respondent’s use of the disputed domain name to divert Internet users to a directory website through which Respondent earns click-through fees does not establish rights or legitimate interests pursuant to Policy ¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant maintains that Respondent’s use of the <wwwsnapfish.com> domain name to operate a directory website to earn click-through fees is evidence of bad faith registration and use. In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the Panel found that the respondent’s use of a confusingly similar domain name in connection with a website that displayed links to various third-party websites was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), where the respondent made “a profit from the amount of Internet traffic it diverts to these websites.” Similarly, the Panel finds that Respondent’s use of the disputed domain name to profit from diversions constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, Respondent is engaging in typosquatting, which is further evidence of Respondent’s bad faith registration and use. The panel in Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003), found bad faith where the respondent registered the <wwwdewalt.com> domain name, because the respondent was “engaging in a practice to ensnare those individuals who forget to type the period after the “www” portion of the web-address and diverting them to a search engine webpage for its monetary benefit.” Thus, the Panel finds that the evidence supports a finding that Respondent engaged in typosquatting and, therefore, registered and used the typosquatted <wwwsnapfish.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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.”).
Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwsnapfish.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 3, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum