Hewlett-Packard Company v. Image Solutions
Claim Number: FA0109000100143
Complainant is Hewlett-Packard Company, Palo Alto, CA ("Complainant") represented by Molly Buck-Richard, of Strasburger & Price LLP. Respondent is Image Solutions, Tulsa, OK ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpprinters.com>, registered with Register.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 27, 2001; the Forum received a hard copy of the Complaint on September 28, 2001.
On October 2, 2001, Register.com confirmed by e-mail to the Forum that the domain name <hpprinters.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 October 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 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 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.
The domain name <hpprinters.com> is confusingly similar to the famous Hewlett-Packard marks in which Complainant has exclusive rights. Respondent’s domain name is merely a combination of the word "printers", Complainant’s famous HP trademark, and the common URL suffix ".com."
Respondent should be considered as having no rights or legitimate interests in the domain name, for no functioning website is connected to the domain name.
Although the domain name was registered on July 3, 1997, the only web page attached to <hpprinters.com> is an advertisement for "e-agency," as well as a notification that the site is under construction. Moreover, the Respondent is not using the domain name in connection with a bona fide offering of goods or services, is not commonly known by the domain name and is not making legitimate non-commercial or fair use of the name.
Respondent registered and uses the domain name in bad faith by intentionally attempting to attract, for commercial gain, consumers to its <hpprinters.com> site or other on-line location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
B. Respondent did not file a response in this proceeding.
Complainant is the owner of numerous proprietary marks in connection with computer hardware, computer printers, computer peripherals, computer software, and other related goods. Complainant is the owner of numerous trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office, for marks consisting of "HP" and the owner of numerous additional pending trademark applications for marks consisting of "HP."
Examples of Complainant’s registrations are:
Trademark Registration Number 614,803 issued on October 25, 1955, for "HP" in connection with various measuring and testing instruments.
Trademark Registration Number 1,842,724 issued on July 5, 1994, for "HP" in connection with a "house mark for computers and related goods; printers and parts therefore; electronic test and measurement systems and parts therefore" and other instruments and parts; and a house mark for medical equipment.
On July 3, 1997, Respondent registered the disputed domain name in issue with Register.com. When accessing the domain name <hpprinters.com>, the user is directed to Respondent’s site where it is stated that the website is "under construction." An advertisement for the "e-agency" predominates the Respondent’s site and provides contact information.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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;
(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.
Identical to and/or Confusingly Similar
Complainant has established rights in the "HP" mark for many years. The domain name <hpprinters.com> registered by Respondent contains in its entirety Complainant’s well-known and well-established mark along with the addition of the generic word "printers." Because this is a type of product manufactured by Complainant, the domain name is therefore confusingly similar to Complainant’s mark. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of "casino," a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant has established rights to and legitimate interests in the "HP" mark that is contained in its entirety in the disputed domain name that Respondent registered. Respondent is not a licensee of Complainant and is not in any way authorized to use Complainant’s HP mark. Respondent only offers services under the name "e-agency," therefore, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
Additionally, Respondent is intentionally attempting to divert Internet consumers to its own site, and such use is not a bona fide use under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant urges that Respondent registered and is holding the domain name in issue in bad faith. The evidence permits an inference that Respondent knew of Complainant’s interest in its famous mark prior to registering the domain name in issue. The record permits an inference of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has also intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website and services. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the website without permission from Complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted. Accordingly, it is Ordered that the domain name <hpprinters.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 8, 2001.
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