Hewlett-Packard Company v. Mike Rayne
Claim Number: FA0110000101465
Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Eliane Setton, of Gray, Cary, Ware & Freidenrich LLP. Respondent is Mike Rayne, Hubbardston, MA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hewlettpackardfax.com> and <hpcopier.com>, registered with Network Solutions, Inc.
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 October 25, 2001; the Forum received a hard copy of the Complaint on October 29, 2001.
On October 29, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <hewlettpackardfax.com> and <hpcopier.com> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 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 email@example.com and 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 December 3, 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 names be transferred from Respondent to Complainant.
A. Complainant urges the following:
The disputed domain names are confusingly similar to marks in which Complainant has full rights. Respondent has no rights or legitimate interests in the disputed domain names. Respondent has registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant, a company, was founded in 1939, and has continuously used the Hewlett Packard or Hewlett-Packard marks for more than 60 years. Complainant holds several trademark and service mark registrations in the United States incorporating the Hewlett Packard name and HP logo. Since 1941, Complainant has also used the acronym “HP” in commerce to identify itself.
Complainant’s reputation is known worldwide, with offices and distributorships in more than 120 countries. Complainant’s marks are generally used in connection with computer-related products such as desktop and notebook computers, monitors, printers, scanners, and e-services as well as with fax machines, DVD products, and various business services.
Respondent registered the disputed domain names on January 30, 2000 and January 31, 2000. On July 26, 2001, Respondent offered to sell the disputed domain names to Complainant for $296. each. Respondent also owns the following domain names: <cannoncopiers.com>, <copystarcopier.com>, <fujistufax.com>, <hitachifax.com>, <panasonicfax.com>, and <xeroxfax.com> among many other similar domain names.
Viewers of the <hewlettpackardfax.com> site are told that the site is “under construction.” The <hpcopier.com> site displays a message, which reads: “coming soon a consumer chat site . . . technical talk/consumer chat.”
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 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.
“Hewlett Packard” and the acronym “HP” are famous trademarks, registered on the Principal Register of the Unites States Patent and Trademark Office. This establishes the Complainant’s ownership and exclusive right to use those marks.
The disputed domain names incorporate Complainant’s marks and are, therefore, confusingly similar to those marks. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark). The addition of the generic terms “fax” and “copier” do not defeat the confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Hewlett-Packard Co. v. Movie Name Co., FA 99087 (Nat. Arb. Forum Oct. 12, 2001) (finding that <hpjob.com> and <hpjobs.com> are confusingly similar to Hewlett Packard’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant has established that it has rights to and legitimate interests in its marks. Because the Respondent has failed to submit a Response to this proceeding, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant).
Although Respondent has not made any claim of right or legitimate interest in the disputed domain names, the Panel has considered Respondent’s posted admonitions that the sites were either under construction or “soon-to-be” consumer chat websites. The Panel, however, finds these claims to be insufficient to support a claim of right or legitimate interest under Policy ¶ 4(c)(iii). See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).
Ten months after registering the domain names, Respondent had not posted any consumer chat site as announced. When Respondent was sued in U.S. District Court by Savin Corp., a manufacturer of copy and fax machines, for similar registrations of domain names that included Savin’s mark and the generic words “copier” and “fax,” the judge also found Respondent’s defense that he intended to create a consumer chat site unconvincing. Savin Corp. v. Rayne, No. 00-CV-11728-PBS (D.Mass. Mar. 26, 2001). Specifically, the judge noted a complete lack of evidence in the record that would “demonstrate substantial steps to provide a consumer sounding board.” Id. at 14. Cf. Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).
Since there is no evidence that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii); the “under construction” message also does nothing to establish or protect Respondent’s rights or legitimate interests in the disputed domain name. See Media West-GSI, Inc. v. Macafee, D2000-1032 (WIPO Oct. 6, 2000) (finding no rights and legitimate interests where Respondent was not commonly known by the BASEBALL WEEKLY mark and made no use of the domain name other than to state that the “web site for domain name BASEBALLWEEKLY.COM is under construction”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).
Because Respondent failed to submit any evidence to support a claim that the domain name was to be used for a bona fide offering of goods and services under Policy ¶ 4(c)(i); that the Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii); or that the Respondent is making a legitimate or fair use of the domain name for no commercial gain under Policy ¶ 4(c)(iii), the Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant also argues that Respondent acted in bad faith in registering the domain names in issue. The wide notoriety of the Complainant’s marks, permits the inference that Respondent knew of Complainant’s ownership of the mark and that Respondent acted in bad faith by registering domain names that included marks he knew or should have known were the proprietary property of another. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).
Respondent’s passive holding of the disputed domain name for ten months, without significant use, permits a further inference of bad faith. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent, who made no use of the domain name for four and one half months had passively held the domain name; such passive holding permitted an inference of registration and use in bad faith).
Finally, Respondent’s pattern of registering infringing domain names additionally supports a finding of bad faith registration and use. See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain names <hewlettpackardfax.com> and <hpcopier.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 17, 2001.
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