WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hewlett-Packard Development Company, L.P. v. Nelson
Case No. D2012-2315
1. The Parties
The Complainant is Hewlett-Packard Development Company, L.P., of Houston, Texas, the United States of America, represented by Archer & Angel, India.
The Respondent is Nelson, of Chennai, India.
2. The Domain Name and Registrar
The disputed domain name <hpservicecenterinchennai.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on January 24, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is part of the Hewlett Packard group (hereafter ‘HP’), headquartered in California, USA and operating in more than 170 countries with a multi-billion dollar turnover. It has a work force of over 300,000 and specializes in a variety of computing, data storage and networking hardware, software and related services. It markets its products to households and businesses of all sizes.
HP is the proprietor of the HP mark which has been used since as early as 1941 and has been registered in several jurisdictions, for instance in the USPTO (mark HP registered on April 24, 1979, No. 1,116,835) and India (Trade Mark No. 1894436, as of December 10, 2009). HP is regarded as one of the world’s most valuable brands.
HP has considerable business interests in India.
HP is the owner of the domain name <hp.com>
The domain name in dispute, <hpservicecenterinchennai.com>, (the ‘Domain Name’) was created on February 17, 2012. Nothing is known of the Respondent as they have not taken part in these proceedings.
5. Parties’ Contentions
i. Identical or Confusingly Similar
The Domain Name is identical or confusingly similar to the HP mark.
The mark, HP, is the short form of Hewlett Packard and does not have a dictionary meaning. It is a coined term.
The Domain Name is used for undertaking business in identical trade channels as that of HP.
The Domain Name contains the HP mark. The addition of the words ‘service’, ‘center’ and ‘Chennai’ as a suffix to the Domain Name is an attempt to deceive the public.
ii. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Domain Name. It has never been authorized to use the HP mark.
It is believed that the Respondent has never used or made preparations to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Respondent was using the Domain Name to offer unauthorized sales and services of/for HP goods.
The addition of the words ‘Service’, ‘Center’ and ‘Chennai’ as a suffix to the Domain Name indicates an intention on the part of the Respondent to deceive the public into believing that some form of association exists between HP and the Respondent. This results in tarnishment of the goodwill and reputation enjoyed by HP worldwide thereby diluting the HP mark. Such use is not bona fide under the UDRP and does not confer on the Respondent any rights or legitimate interests.
To HP’s knowledge, the Respondent has never been known by the Domain Name nor acquired any trade mark rights in respect thereof.
The Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the HP mark and therefore has no rights or legitimate interests in the Domain Name. On the contrary, the Respondent has made illegitimate, commercial and unfair use of the Domain Name with intent for commercial gain.
iii. Registered and Used in Bad Faith
The Respondent has acted in bad faith under the UDRP because it has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with HP’s name and mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or services on the website.
There can be no doubt that the Respondent was aware of the HP mark when it registered the Domain Name. HP’s rights pre-date the Respondent’s registration of the Domain Name by several years.
The Respondent’s use of the Domain Name for unauthorized sales and service of HP’s products is also proof of bad faith.
The Respondent has acquired the Domain Name with the ulterior motive to cash in on the goodwill of the HP mark and brand, and considerable harm will be caused to HP if the Domain Name is not transferred to it.
Given the fame of the HP mark worldwide, the Respondent’s actions suggest opportunistic bad faith.
Finally, the Respondent failed to respond to a cease and desist letter sent to it by HP’s attorneys in September 2012, also indicating bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
HP clearly has rights in its HP trademark.
The Domain Name incorporates the Complainant’s trademark in its entirety but they are not identical. The trademark HP is very much the dominant element of the Domain Name, being a distinctive and well-known mark followed by the ordinary, generic or descriptive words – ‘service’, ‘center’, ‘in’ and ‘Chennai’.
Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given the distinctive nature and fame of the HP mark, readily recognizable within the Domain Name and very much its dominant element, the Panel is satisfied that the Domain Name is confusingly similar to the HP mark.
Even if one were to adopt a possibly slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the domain name in issue and the complainant and/or its goods and services, HP, given the considerable fame of its mark, would succeed in showing confusing similarity. This is particularly so given the inclusion of a term in the Domain Name commonly associated with technology suppliers such as HP i.e. ‘service center’.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s mark for the purposes of the Policy.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by HP, that the Respondent lacks rights or legitimate interests for the purposes of the Policy.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, however, the Respondent is not apparently known by the Domain Name.
Moreover, given the nature of the website to which the Domain Name resolves, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Can the use being made of the Domain Name by the Respondent constitute a bona fide use? There is nothing to indicate on the website to which the Domain Name resolves that it is not authorized by or associated with HP. On the contrary, the impression created is that it is, or that in fact it is the official website of HP servicing customers in Chennai. Indeed, the Panel notes reference on the website to ‘HP's award-winning service and support are here for you even after your products' coverage expires. Get support you can count on: ‘, which only reinforces the impression of association or of the website being the official HP site. There is nothing, or nothing obvious on the website pages annexed to the Complaint, to correct this impression. In the Panel’s view, such use of the Domain Name cannot constitute bona fide use for the purposes of the Policy.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of HP, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that HP has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. One such example of bad faith registration and use is where the Respondent has, by using the domain name, ‘… intentionally attempted to attract, for commercial gain, Internet users to your [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.’
It would appear that the Respondent has indeed intentionally attempted to attract, for commercial gain, Internet users to the website to which the Domain Name resolves by creating a likelihood of confusion with HP’s trademark. Even if, which is in fact not the case here, the Internet user, once arriving at the website realizes, (because of disclaimers or otherwise), that it is unconnected with the complainant, a respondent will typically still be treated as having acted in bad faith if its intention was to attract users based on the initial confusion, for commercial gain. This is because the Internet user will have been confused, albeit initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. But on the facts of this case, it may well be that an Internet user continues to be confused as to the relationship between HP and the Respondent, even after arriving at the website. Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hpservicecenterinchennai.com> be transferred to the Complainant.
Dated: February 7, 2013