HCL CORPORATION PRIVATE LTD. aka HCL CORPORATION LIMITED, HCL AMERICA, INC. and HCL TECHNOLOGIES LTD. v. Hugo Contreras
Claim Number: FA2302002033005
Complainant is HCL CORPORATION PRIVATE LTD. aka HCL CORPORATION LIMITED, HCL AMERICA, INC. and HCL TECHNOLOGIES LTD. (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Hugo Contreras (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hclsoftware.com> (“Domain Name”), registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on February 23, 2023; Forum received payment on February 22, 2023.
On February 23, 2023, eNom, LLC confirmed by e-mail to Forum that the <hclsoftware.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2023 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@hclsoftware.com. Also on February 24, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
On March 23, 2023 the the Panel issued a Panel Order under Rule 12 of the Rules. The context of this Panel Order arose following its review of the Complaint which:
a) was filed by 3 Complainants but did not contain any information about any link between the Complainants; and
b) noting that the Domain Name was registered in 2003, provided little or no evidence of Complainant’s activities and reputation outside of India at the registration date or any use of the Domain Name between 2003 and 2023.
The Panel Order sought additional material from Complainant about the relationship between the Complainants, any reputation in the HCL mark held by the Complainant at the time of registration and any other details held by Complainant regarding the use of the Domain Name between 2003 and the commencement of the proceeding including, if available, all Internet Archive Wayback Machine records showing any use of the Domain Name.
On March 29, 2023 Complainant provided an additional submission including exhibits in response to the Panel Order. The content of this material is summarized later in the decision. On April 3, 2023 a second Panel Order was issued providing Respondent with a deadline of April 12, 2023 to provide any evidence or submissions in response to Complainant’s additional submission. On April 11, 2023 Respondent provided material in response to the second Panel Order, which the Panel has treated as a Response in this matter.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel has reviewed the Complaint (including the additional submissions) and is satisfied that that HCL CORPORATION PRIVATE LTD. aka HCL CORPORATION LIMITED and HCL AMERICA, INC.are wholly owned subsidiaries of HCL TECHNOLOGIES LTD and all companies own intellectual property relevant to the proceeding. This is sufficient to establish a sufficient nexus or link between the Complainants such that, unless otherwise required, they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
A. Complainant
Complainant is a global technology and software company. Complainant has rights in the HCL mark through numerous trademark registrations, including with Intellectual Property India (e.g., Appl. No. 771603, which was filed on October 3, 1997 and registered on January 4, 2006). Respondent’s <hclsoftware.com> domain name is identical or confusingly similar to the HCL mark as it includes the entire mark and merely adds a generic term that relates to Complainant’s services and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <hclsoftware.com> domain name since Respondent is not licensed or authorized to use Complainant’s HCL mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to actively use the Domain Name.
Respondent registered and uses the <hclsoftware.com> domain name in bad faith. Respondent is not actively using the Domain Name. Respondent registered <hclsoftware.com> with constructive and/or actual knowledge of Complainant’s rights in the HCL mark.
B. Respondent
The Domain Name <hclsoftware.com> was registered by Respondent on December 23, 2003. The Domain Name was chosen because HCL is an abbreviation of the Respondent’s full name, Hugo Contreras Lopez. The Respondent is involved in the software industry and in particular works on the development of software systems, sometimes for companies and sometimes as an independent consultant. The Domain Name was registered while Respondent was unemployed with the aim of offering his services as a software consultant. For a period in the past 20 years the Domain Name was active and used for an active site (“Respondent’s Website”), which promoted the Respondent’s software consultancy services. The Respondent is currently working for a private company in Argentina and registered the Domain Name in good faith.
At the time of registration, the Complainant did not trade under the term HCL Software, rather it traded under the HCL or HCL Technologies name. At the time of registration, the Complainant operated from a website at the domain name <hcltech.com>. In 2019 the Complainant launched a new software company called HCL Software which Respondent submits prompted the present Complaint.
C. Additional Submissions
The Complainants are related corporate entities with Complainant HCL TECHNOLOGIES LTD. being the parent entity of the Complainant’s broader business enterprise and the other Complainants being wholly owned subsidiaries. The majority of Complainant’s IP is held by HCL TECHNOLOGIES LTD. but the other Complainants also have rights over Complainant’s IP.
The Complainant was established in 1976 in India. Prior to 2003 the Complainant had established or acquired subsidiaries trading under the HCL mark that provided IT Services and software/hardware development in various jurisdictions, including the United States (1995), United Kingdom (1997), Australia, Hong Kong and Japan in 1998 and Singapore in 2003. In April 2003 Complainant entered into a contract with British telecom worth $160 Million to establish a significant outsourcing service based in India. As of April 2003 Complainant had 370 clients and quarterly revenue of 4.66 billion INR (USD 100 Million based on approximate USD/INR exchange rates as of 2003). It had a significant list of clients including Compaq, EMC, General Motors, Hewlett-Packard, Hitachi, Mercedes-Benz, NTT, Samsung and Toshiba.
A review of the use of the Domain Name using the Internet Archive Wayback Machine indicates that there was little use in 2004-2006. In 2007 the Domain Name resolved to the Respondent’s Website in Spanish that offered IT services and includes the following (translated) statement “Understanding the business of companies and their processes is a fundamental issue both for IT managers, for vendors of technology solutions and for managers of all types of organizations, when it comes to aligning and integrating IT technology with the business, so that it really becomes a strategic factor that optimizes global management and also adds value”. These are the same services as offered by the Complainant. The Respondent’s Website also indicates that Respondent purported to offer development and implementation of IBM platforms for others which are also services offered by Complainant. The Respondent’s Website remained active until 2009 after which it remained inactive until 2020 when it resolved to a page with the title “Hugo Contreras Lopez Software” and a statement that the site was under maintenance and the following statement “2019 HCLSoftware.com - Dominio perteneciente a Hugo Contreras Lopez desde 2003. Owned by Hugo Contreras Lopez since 2003.”
Complainant, having failed to establish that Respondent registered the Domain Name in bad faith, has not established all required elements of its claim, and thus its complaint must be denied.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has rights in the HCL mark under Policy ¶ 4(a)(i) through its registration of the mark with Intellectual Property India (e.g., Appl. No. 771603, which was filed on October 3, 1997 and registered on January 4, 2006). Registration of a mark with a national trademark authority is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <hclsoftware.com> Domain Name is confusingly similar to the HCL mark as it fully incorporates the HCL mark and adds the generic or descriptive term “software” and the “.com” gTLD. The addition of a generic term to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
The Panel finds that Complainant has failed to meet its burden of proof of bad faith registration under Policy ¶ 4(a)(iii), and thus the Panel need not consider the other elements. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”). The Panel notes that the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).
At the time the Domain Name was registered Complainant had a not insignificant reputation in the field of software development but no registered rights in Argentina (the location of Respondent). Nor did it have, based on the evidence before the Panel, any obvious or significant business presence in South America.
The Domain Name consists of the acronym “HCL” and the word “software”. The Respondent’s initials are HCL and he works in the software industry. The Panel notes that the Domain Name is only registered to “Hugo Contreras” and not “Hugo Contreras Lopez” but appreciates that this issue may arise due to the common Spanish-language custom of an individual having two surnames but only using one for day-to-day matters. The Panel also notes that the Respondent’s e-mail address uses the formulation “hlcont…” which further supports the Respondent’s claim that his initials are “H” “C” and “L”.
Between 2007 and 2009, well before the present proceeding commenced and well before any contact between the parties, the Domain Name resolved to the Respondent’s Website where the Respondent offered services as a software consultant under the name “HCL Software”. Respondent gives evidence that the Respondent’s Website became inactive after 2009 as he obtained employment with various companies later in his career.
The Respondent’s Website does not either explicitly or (to the best of the Panel’s knowledge) implicitly make any reference to Complainant or otherwise suggest an affiliation. The record does not indicate that Respondent has sought to register any other domain names incorporating the HCL mark or engage in any other conduct that suggests the use of the Domain Name for the Respondent’s Website was anything other than for a bona fide offering of services. The Respondent does not appear to have ever contacted the Complainant in order to sell the Domain Name to it, rather he has held the Domain Name for almost 20 years, mostly inactively but with some use. Furthermore, while the services offered by the Complainant and the Respondent (for the 2-3 year period where the Respondent’ Website was active) are in the software field, the scale and nature of the services offered by the respective parties (one being a global technology company and one being a software development consultancy apparently based in Chile) are so different that it is difficult to imagine that the parties would compete in any realistic manner.
Finally, there is no other evidence that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith). Respondent has not offered the Domain Name for sale, nor is there a basis for inferring such an intention. Respondent has not, on the basis of the evidence before the Panel, engaged in a pattern of conduct of registering domain names to prevent the owner of a mark for reflecting such a mark in a corresponding domain name. I am not satisfied that Respondent has registered the Domain Name for the purpose of disrupting the Complainant’s business nor is there any other evidence that he has sought to associate himself with Complainant in any way.
For these reasons I am unsatisfied that the registration of the Domain Name was motivated by any desire to take advantage of the reputation Complainant had in 2003 in the HCL mark as opposed to the use of the abbreviation HCL to represent the initials of the Respondent who sought to register the Domain Name to support his career as a software developer/consultant, and indeed later used the Domain Name to offer his services, under a business name that reflected his initials, as a software consultant.
The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited -- designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting -- and not intended to thwart every sort of questionable business practice imaginable. ”). This is not such a case. The Panel finds that Complainant has failed to prove that the Domain Name was registered in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hclsoftware.com> domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
Dated: April 12, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page