Hewlett-Packard Company v. Domain ForSale
Claim Number: FA0112000103182
Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price, LLP. Respondent is Domain ForSale, Yerevan, Armenia (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hpcovision.com>, registered with NameScout Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 19, 2001; the Forum received a hard copy of the Complaint on December 20, 2001.
On December 19, 2001, NameScout Corp. confirmed by e-mail to the Forum that the domain name <hpcovision.com> is registered with NameScout Corp. and that Respondent is the current registrant of the name. NameScout Corp. has verified that Respondent is bound by the NameScout Corp. 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 December 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2002 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 February 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 the Respondent to the Complainant.
The disputed domain name <hpcovision.com> is confusingly similar to Complainant’s registered HP mark and identical to its HP COVISION mark, in which it holds rights at common law.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant holds numerous trademarks and service marks in HP, registered on the Principal Register of the United States Patent and Trademark Office as early as 1955. Complainant has continuously used the marks in commerce since at least 1941 in association with testing and measuring devices and computer-related products and services.
Complainant previously held registration of the disputed domain name and used it to promote its HP Covision Reseller Program. Although Complainant recently discontinued the HP COVISION program, it remains well known among Complainant’s employees, who still occasionally attempt to refer to the company’s now-defunct website. Complainant asserts that it has acquired common law trademark rights in HP COVISION.
Respondent registered the disputed domain name on December 10, 2001, and has used it to redirect users to a commercial pornographic website.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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 and/or Confusingly Similar
Complainant asserts that it holds common law trademark rights in HP COVISION. Absent a contrary claim by Respondent, the Panel may accept Complainant’s assertion as true. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
The ICANN Policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000); accord, see Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Complainant thus established that it had rights under ICANN Policy ¶ 4(a)(i)).
The disputed domain name is identical to Complainant’s HP COVISION mark. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE trademark and service mark).
Additionally, the disputed domain name is confusingly similar to Complainant’s registered HP mark. See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org> and <sunkistgrowers.net> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark). The addition of the word “covision” to the mark does not defeat a claim of confusing similarity, but rather, works to increase confusion as the word describes a program Complainant created and operated. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that had an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant was engaged, did not take the disputed domain name out of the realm of confusing similarity).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights to and interests in its marks. Because Respondent has not provided any evidence to suggest it has any rights or interests in the disputed domain name, the Panel may presume that no such rights or interests exist. 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).
Respondent’s use of the infringing domain name <hpcovision.com> to direct users to a pornographic website cannot be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under ¶ 4(c)(iii). See Nat’l Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
Additionally, there is no evidence that Respondent is commonly known as “hpcovision” or “hpcovision.com” pursuant to Policy ¶ 4(c)(ii). Respondent is only known to this Panel as Domains ForSale. See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
The contact name with which Respondent chose to register the disputed domain name and identify itself, Domains ForSale, suggests it registered the domain name solely for the purpose of selling it for profit, in bad faith under Policy ¶ 4(b)(i). See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the contact name provided by the Respondent at the time of registration (Domain For Sale) to be evidence of a bad faith attempt to sell the domain name); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding bad faith because “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Respondent’s use of the infringing domain name to direct users to a pornographic website further supports a finding of bad faith under the Policy. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Finally, the fact that Complainant once held registration for the disputed domain name and that Respondent sought to capitalize on Complainant’s decision to let the registration lapse evidences bad faith registration and use under the Policy. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).
Accordingly, 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 should be hereby granted.
Accordingly, it is Ordered that the <hpcovision.com> domain name be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 7, 2002
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