WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hewlett-Packard Development Company, L.P. v. Fredric Fransson

Case No. DNU2013-0005

1. The Parties

The Complainant is Hewlett-Packard Development Company, L.P. of Houston, Texas, United States of America, represented by Richard Law Group, United States of America.

The Respondent is Fredric Fransson of Bollnäs, Sweden.

2. The Domain Name and Registrar

The disputed domain name <hp.nu> is registered with Loopia AB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2013. On October 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint, and indicating that the language of the Registration Agreement is Swedish. The Center sent an email communication to the parties, on October 23, 2013, in both Swedish and English, regarding the language of the proceedings. On the same day, the Center also sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint, on October 23, 2013, confirming also its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.

On October 30, 2013, the Respondent sent an email communication to the Center enclosing its Response. The Center confirmed receipt of the Respondent’s communication, on October 31, 2013.

The Center verified that the Complaint, together with the amended 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 November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013.

The Center sent an email communication to the Respondent, on November 7, 2013, acknowledging receipt of the Response as filed with the Center on October 30, 2013. On the same day, the Complainant submitted a Supplemental Filing.

The Center appointed Luca Barbero as the sole panelist in this matter on December 9, 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 one of the largest Information Technology companies in the world. The Complainant’s trademark HP was ranked at the 10th position in the United States Fortune 500 chart in 2012 and the 31st position in the 2012 Global 500.

The Complainant has provided evidence of ownership of the United States trademark Nos. 1116835, registered on April 24, 1979, in International classes 9, 10, 14, 16, 37 and 41; and 1840215, registered on June 21, 1994.

The Complainant provides products, services and information through the web site published at “www.hp.com”, registered on March 3, 1986.

The disputed domain name <hp.nu> was registered on June 3, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has invested tremendous resources in promoting the trademark HP over the last 70 years and that the trademark HP is consistently recognized as being among the world’s most recognized and valuable brands. The Complainant highlights that the trademark HP has been found by previous UDRP Panelists to be famous and distinctive.

The Complainant informs the Panel that, with approximately 330,000 employees, the Complainant serves more than a billion customers in 170 countries on six continents. The Complainant ships more than 1 million printers per week and 48 million PC units annually. One out of every three servers shipped worldwide is from HP.

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark HP, as it incorporates the trademark in its entirety, adding only the ccTLD .nu, which is not sufficient to distinguish Respondent’s disputed domain name.

With reference to rights or legitimate interest in the disputed domain name, the Complainant states that the Respondent is not affiliated with the Complainant in any way, that the Respondent has not been licensed by the Complainant to use the trademark HP and that the Respondent is not an authorized vendor, supplier, or distributor of the Complainant’s goods or services. The Complainant also points out that the Respondent is not commonly known by the Complainant’s trademark and that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use, as it has pointed the disputed domain name to a landing page with pay-per-click links relating to the Complainant’s business (such as “HP Notebooks,” “HP Desktops” and “HP Printers”) redirecting users to websites of Complainant’s competitors like Canon, Dell and Sony.

In view of the above and of the fact that the landing page published at the disputed domain name bears the notation “This domain is for sale. Click here for more information”, the Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

As to the bad faith requirement, the Complainants states that, at the time the Respondent registered the disputed domain name, the Complainant’s trademark HP was already globally famous. It also indicates that, in view of the fact that the links published on the Respondent’s web site include categories such as “HP Notebooks,” “HP Desktops” and “HP Printers,” all famously associated with Complainant, and even references to other brands of the Complainant, such as Snapfish and Voodoo, the Respondent was not only familiar with the Complainant’s trademark HP at the time of registration of the domain name, but intentionally adopted the disputed domain name in order to create an association with Complainant. The Complainant concludes that the Respondent’s registration of the disputed domain name with knowledge of the Complainant’s rights is evidence of bad faith registration and use according to the Policy.

The Complainant also highlights that circumstances indicating that a respondent has registered or acquired a domain name primarily for the purpose of selling the name to the corresponding trademark holder support a finding of bad faith, and that even general offers for sale indicate bad faith.

The Complainant further states that, by using the Complainant’s famous trademark to publish sponsored links to the Complainant’s competitors, the Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark, and this conduct of diversion shows bad faith registration and use. The Complainant additionally contends that promoting the Complainant’s competitors diverts and disrupts the Complainant’s business.

B. Respondent

The Respondent states that the purpose of its business is to develop web sites on premium domain names to reach a large audience in Sweden and worldwide.

The Respondent rebuts the Complainant’s assertions as to its lack of legitimate interest in the disputed domain name and its bad faith. It also indicates that, at the time of the registration of the disputed domain name, it had absolutely no idea of the possible association of it with the Complainant, as it wanted to create a guide for university students to help them find more information on how to success in a university entrance exam named “HögskoleProvet” in Swedish. The Respondent contends that it has developed web sites for college and university students and has thousands of Swedish visitors each month on the web sites published at <studier.nu>, <friskolan.se>, <studentguiden.se>, <studentlägenheter.se>, <klassrum.se> and <elevrad.se>. The Respondent also asserts that there is already an affiliate program at double.net at <hpguiden.se>.

The Respondent also adds that it owns a large domain portfolio under “.nu” ccTLD, including the following domain names: <premium.nu>, <forum.nu>, <synonym.nu>, <iqtest.nu>, <visor.nu>, <tidning.nu>, <polen.nu>, <barnvagn.nu>, <lekar.nu>, <bidrag.nu>, <boende.nu>, <bowling.nu>, <drinkar.nu>, <egypten.nu>, <kanada.nu>, <skottland.nu>, <ae.nu>, <ag.nu>, <ak.nu>, <by.nu>, <cw.nu>, <en.nu>, <df.nu>, <kr.nu>, <pg.nu>, <rf.nu>.

The Respondent notes that a two character domain name can be associated with tens of thousands of businesses worldwide and asserts that there are more than a hundred companies in Sweden that can be related to “hp”. The Respondent argues that the disputed domain name would be the “obvious choice” for he newspaper HallandsPosten to use and that “hp” could stand also for högskoleprovet, hp sauce, Hamsterpaj, Harry Potter, horsepower HP and Hitspoint.

The Respondent alleges that Nunames announced a promotion to former clients, in June 2013, to register

up to 30 optional domain names for a free of charge. On that occasion, the Respondent registered fifteen two-character domains that it found a possible advantage for the development of its domain portfolio. It registered also the following domains: <ae.nu>, <ag.nu>, <ak.nu>, <cw.nu>,<by.nu>,<en.nu>, <df.nu>, <kr.nu>, <pg.nu> and <rf.nu>.

As to the use of the disputed domain name, the Respondent contends that the sponsored listings displayed on the correspondent web site are served automatically by a third party, Rookmedia, and that neither the service provider nor the domain owner maintain any relationship with the advertisers since the advertisements are displayed according to the information gathered through cookies and/or web beacons.

The Respondent informs the Panel that it received an email inquiry for the disputed domain name, in August 2013, and that, since it did not want to “sell undeveloped websites”, it decided only to sell the disputed domain name if it received an offer it was very satisfied with.

The Respondent also alleges that, should the Complainant have contacted the Respondent in an earlier stage with a concrete offer for the disputed domain name, it would have been offered a fair amount for the disputed domain name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Preliminary issue: language of the proceedings

Pursuant to Paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the language of WIPO domain name dispute proceedings is typically the language of the relevant domain registration agreement, but the Panel has the authority to conduct proceedings in a language other than that of the registration agreement when fairness requires.

In the case at hand, the language of the Registration Agreement is Swedish. However, since the Respondent has not opposed to the Complainant’s request for English to be the language of the proceedings and has submitted its Response in English language and given the circumstances of this case, notably that the content of the website at the disputed domain name is in English and the Parties both appear to be conversant in English, the Panel determines that the present proceedings be conducted in English.

B. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of two trademark registrations for HP in the United States. In addition, the Panel notes that the trademark HP is well-known worldwide in connection with the technology products and services provided by the Complainant.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy, since the addition of the Top Level Domain .nu may be excluded from consideration as being merely a functional component of a domain name.

C. Rights or Legitimate Interests

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the case at hand, the Panel finds that the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name, and the Respondent has not provided in the Response any convincing evidence to the contrary.

The Respondent asserted that it selected the disputed domain name as an abbreviation for “högskoleprovet”, a Swedish university entrance exam, but has not provided any document to support its claims.

The Complainant has submitted screenshots showing that the disputed domain name was pointed, prior to the filing of the Complaint, to a pay-per-click landing page where it was indicated that the disputed domain name was offered for sale and several sponsored links related to the trademark HP and advertising products and services of Complainant’s competitors were displayed.

As recognized by prior UDRP Panels and summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), while the use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, it does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of a domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.

In the case at hand, the Respondent has not denied the previous pointing of the disputed domain name to a pay-per-click site referencing the Complainant and promoting Complainant’s competitors, but attempted to cast responsibility for this content on a third party.

The Panel finds that, as stated in prior UDRP cases, a domain name registrant may be deemed responsible for the content appearing on a web site at its domain name, even if the registrant may not be exercising direct control over such content, like in the case of advertising links appearing on an “automatically” generated basis.

Based on the evidence on record and in absence of any demonstrated efforts of the Respondent, prior to the filing of the Complaint, to attempt preventing the inclusion of advertising or links which profit from trading on the Complainant’s trademark, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel observes that, in light of the amount of advertising and sales of the Complainant’s products worldwide, of the well-known character of the Complainant’s trademark and of the fact that the Respondent appears to be familiar with the Information Technology sector, the Respondent was or ought to be aware of the Complainant’s trademark at the time of the registration of the disputed domain name.

The Panel notes that, at the time of the drafting of the decision, the disputed domain name is pointed to a web page providing links to third party sites hosting contents dedicated to higher education in Sweden. However, it appears that this change has been made by the Respondent only after the filing of the Complaint.

Indeed, as mentioned above, the evidence on records shows that the disputed domain name was pointed, prior to the filing of the Complaint, to a pay-per-click page which referred to the Complainant and its competitors and published a statement indicating that the disputed domain name was on sale.

In this Panel’s view, in light of the contents of the web page linked to the disputed domain name, Internet users may have been misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Moreover, in all likelihood, the Respondent has profited by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

Therefore, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site and/or of the products and services advertised thereon, according to paragraph 4(b)(iv) of the Policy.

In view of the above, the Panel finds that the disputed domain name was registered and has been used in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hp.nu> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: December 23, 2013