national arbitration forum

 

DECISION

 

Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company v. Rob Mikulec

Claim Number: FA1106001392730

 

PARTIES

Complainant is Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Rob Mikulec (“Respondent”), represented by Michael J. Berchou of Phillips, Lytle LLP, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hppre.com>, registered with GoDaddy.com.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 9, 2011.

 

On June 10, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <hppre.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hppre.com.  Also on June 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on July 6, 2011.

 

Complainants filed a timely Additional Submission on July 8, 2011.  Respondent filed a timely Additional Submission on July 13, 2011.

 

On July 13, 2011, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainants

Complainant Hewlett-Packard Development Company, L.P. is a wholly-owned subsidiary of Complainant Hewlett-Packard Company (hereinafter HP).[1]  Founded in 1939, HP is the world’s largest information technology (IT) company, with revenue totaling $126 billion for fiscal year 2010.  HP began using the HP trademark at least as early as 1941 and has registered such mark in the U.S. and internationally.  See Complaint, Exhibit F. 

 

On April 28, 2010, HP announced a definitive agreement to acquire Palm, Inc. See Complaint, Exhibit D.  Palm’s product line at the time of acquisition included the Palm Pre, which was launched in June 2009.  The disputed domain name, hppre.com, was registered on April 29, 2010. HP’s newest flagship smart phone, the HP Pre 3, was officially announced in February 2011, and is expected to launch this summer.

 

HP owns the domain name hp.com and uses this domain name to offer and promote IT products, including the HP Pre and other smart phones.

Complainants assert that the disputed domain name is confusingly similar to Complainant’s HP and PRE marks. The contend that the domain name combines HP’s registered HP mark in its entirety, adding only the common law trademark PRE and the generic top-level domain “.com.”  According to the complaint, “[c]ombining a product name with a house mark to form a domain name does not negate confusing similarity – it makes confusion even more likely.”

 

The complaint further alleges that Respondent has no rights or legitimate interests in the disputed domain name.  It contends that Respondent is not commonly known by the HP or PRE marks, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.  Moreover, the complaint indicates that Respondent Rob Mikulec is not affiliated with Complainants or licensed by them to use the HP or PRE marks.

 

The complaint maintains that the disputed domain name resolves to an ad-driven web site whose source is identified using only the HP and PRE marks and that given the hppre.com domain and the site title, which is also HP PRE, consumers viewing Respondent’s landing page are likely to conclude that this site is affiliated with Complainants.  The complaint indicates that Respondent presumably receives compensation for directing consumers to third-party sites via its ads, which among things promote the products and platforms of Complainants’ competitors.  See Complaint, Exhibit H.

 

The complaint argues that the disputed domain name was registered in bad faith. “At the time Respondent registered the disputed domain name, Complainant’s HP trademark was already famous and strongly associated with smart phones.  Respondent registered the disputed domain name, which combines HP and Palm’s PRE mark, the day after HP’s acquisition of Palm was first announced.  It is clear from the disputed domain name itself, as well as the timing of this registration and the content of Respondent’s site, that Respondent was not only familiar with Complainant’s trademark at the time of registration, but intentionally adopted a name combining the famous HP mark with the mark PRE to create an association with Complainant.”   According to the complaint, “Respondent’s registration of the domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).”

 

The complaint alleges that Respondent’s actions violate paragraph 4(b)(iv) of the Policy.  “Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s famous, registered HP trademark, and HP’s common law PRE trademark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s and third-party products and services.”  Complainants reiterate that the disputed domain name was registered one day after the announcement of HP’s acquisition of Palm and of Palm’s PRE product line and trademark, and contend that such action “reflects opportunistic bad faith.”

 

B. Respondent

Respondent contends that Complainants have not made out a prima facie case of their common law rights in the “Pre” mark and have not demonstrated use of “HP Pre” in commerce prior to the date the disputed domain name was registered and used by Respondent.   While the complaint indicates that “[t]hrough its senior and substantially exclusive use of the PRE trademark for smart phones, HP acquired common law rights for this mark as used on smart phones and related goods,” Respondent notes that HP did not even announce its “Pre3” smart phone until February 9, 2011, which was ten months after Respondent registered the disputed domain name, and, upon information and belief, asserts that the HP Pre3 smart phone is not yet available for purchase.  Respondent further points out that Complainants failed to submit any evidence of secondary meaning to suggest that consumers associate the Pre mark with HP.

 

Respondent asserts that he is making a fair use of the hppre.com domain name to provide a discussion forum and a source of information on HP products, including the PRE3, and did so before this proceeding was filed and before receiving notice of the dispute.  He contends that he has a legitimate interest in using the marks in dispute as a website for news, comment and criticism if the use is fair and noncommercial, “and it is.”   Respondent points out that the web site at hppre.com includes generally favorable reviews of HP products and news about forthcoming product releases.  See Response, Exhibits 1 and 2.  Respondent maintains that he does not use HP or Pre as trademarks, nor is his use of the hppre.com domain name likely to confuse internet visitors.

 

Respondent notes that following receipt of the complaint, he added a disclaimer to his site.  The disclaimer states, in part, that “This website is not affiliated with, sponsored by nor approved by Hewlett-Packard.  This website is owned and operated by an unaffiliated third-party as a source for information and a discussion forum relating to Pre, WebOs, Pixi, and other products.”  Also following receipt of the complaint, Respondent changed the title of the home page from:

HP PRE

Your source for info on HP Pre, Veer and WebOs

to

HPPRE.COM

Your source for info and discussion on HP Pre, Veer and WebOs.

 

While Respondent does not dispute that his web site at hppre.com displays Google AdSense ad banners, he indicates that, to date, he has earned only $1.14 from Google AdSense.  See Response, Exhibit 4. In addition, after receiving the complaint, Respondent blocked all AdSense categories relating to Computers & Consumer Electronics, Internet and Telephony.  See Response, Exhibit 5. Further, according to Respondent, “[t]o the extent any prior ad banners promoted the products and services of Complainants’ competitors, Respondent did not direct that those ad banners be displayed.” 

 

With respect to the issue of bad faith registration and use, Respondent indicates that he “registered the domain name in good faith to establish a site for news, comment and criticism.”  In support thereof, the response includes as exhibit 6 a declaration of Respondent Rob Mikulec, in which he states under penalty of perjury, in relevant part, that “I believe I have made a legitimate fair use of the hppre.com domain name.  I registered the domain name in good faith to establish a forum for news, commentary and discussion relative to HP products, and I have always believed that my registration and use of the hppre.com domain name was a fair use.”

 

Respondent further contends that his site is not merely a landing page but that, in any event, the use of a domain name as a landing page with links to random third-party sites in not sufficient to demonstrate bad faith.  Moreover, Respondent adds, the disputed domain name was registered substantially before Complainants used the mark in issue and such fact precludes a finding a bad faith.

 

C. Additional Submissions

In their Additional Submission, Complainants contend that the evidence presented establishes trademark rights in PRE and an association between the PRE mark and Complainants.  They point to the complaint’s explicit allegation regarding common law rights in the PRE mark and the fact that Respondent does not contest the fact that Palm and HP used PRE prior to registration of the disputed domain name.  While the HP PRE3 is yet to launch, Complainants contend  that common law rights and secondary meaning can accrue even prior to launch.  Further, Complainants maintain that they need not establish trademark rights in PRE in order to show that HP PRE is confusingly similar to the HP mark, noting that prior ICANN panel decisions, cited in the complaint, have found confusion arising from the combination of a famous house mark and a product name.

 

Complainants further argue that their rights in HP and sales of PRE plainly predate registration of the disputed domain name, “and this is more that sufficient to establish Respondent’s knowledge and bad faith at the time it registered the disputed domain.”  Complainants contend that “[i]t is wholly inconsistent to argue simultaneously that Respondent registered this domain for a commentary site about the HP PRE, but couldn’t have contemplated HP’s rights in the domain hppre.com at the time of registration.”

 

Focusing on Respondent’s contention that he is making a fair use of the  disputed domain name, Complainants note that, despite the passage of more than a year since registration, there is no original news, comment, criticism, or other content posted at Respondent’s site.  Complainants point out that all but one of the posts at Respondent’s site are copied verbatim, or virtually verbatim, from a leading technology blog called Engadget.  Complainants allege that the disputed site “is a shell designed to generate advertising revenue by combining HP trademarks and Engadget editorial content in a manner that attracts search engine hits.” Such activity, according to Complainants, does not constitute protected speech because Respondent is not engaging in any speech at all.  Moreover, Complainants declare, for speech to be protected it must concern lawful activity and not be misleading, and Respondent’s registration and use of the domain name misleads and diverts consumers to the sites of Complainants’ competitors.

 

Complainants also assert that the fact that Respondent’s site has not been successful in attracting traffic “does not transform bad faith arising from misusing Complainants trademarks into good faith.”  Complainants accuse Respondent of deliberately choosing to monetize his site.  Moreover, Complainants add, even if the ads on Respondent’s site are chosen and served by a third party, Respondent is still legally responsible for the material attached to the domain name.

 

The addition of a disclaimer to Respondent’s site and other token changes do not reduce the likelihood of confusion, Complainants assert.  They note that the disclaimer appears at the end of 22 pages worth of posts.

 

Finally, Complainants argue that Respondent’s self-serving declaration of good faith intent is entitled to little or no weight since, among other things, Respondent cannot be cross-examined in this proceeding.

 

In his Additional Submission, Respondent indicates, in relevant part, as follows:

 

            “There is a good reason that Respondent has not posted his own original reviews at hppre.com: the HP Pre smart phone is not yet available for purchase. As a      result, Respondent does not own an HP Pre and cannot review it (Respondent             Ex. 7 ¶ 6). Until the product becomes available, Respondent has posted on his             website news and information from others who do have access to an HP Pre or             access to information about its forthcoming release (see, e.g. Respondent Exs. 1

            and 2: “HP Pre first hands-on!” and “HP Pre 3 listed for pre-order on Amazon.de:    €449 for the best of webOS,” both attributed to engadget). Contrary to      Complainants’ contention, the hppre.com website aggregates useful news and          commentary from at least five different sites/sources: engadget.com,             gizmodo.com, phonedog.com, slashgear.com and b1gd1go (see, Complainants’    Additional Submission Ex. C; Respondent Ex. 7 ¶ 5).

 

            The fact that third parties have not posted on the hppre.com website is a function    of the fact that the HP Pre is not yet available to the public, and because third       parties may not have knowledge of the hppre.com website. Respondent has no control over the level of third-party interest in the HP Pre, or third-party interest in          posting on his site. Moreover, there is no requirement that a website have     “original” content or that it attract a significant number of visitors, and       Complainants do not site any panel decisions or other authority suggesting so. It             is not disputed that the content at hppre.com consists of news, commentary and       reviews, and that the website offers a discussion forum and a source of             information on HP® products. Respondent has made a good faith, fair use of the    domain name (and did so before receiving the Complaint).

 

            Moreover, it is clear to any visitor to hppre.com that it is not an HP website.   Respondent has taken significant steps to ensure that visitors to its discussion forum at hppre.com are not confused as to any affiliation between the parties.                     Not only does the website include a disclaimer on every page, but the title of the             home page makes clear that the website is a “source for info and discussion on       HP Pre, Veer and WebOs” and the postings at the website are attributed to         Engadget, SlashGear, PhoneDog and b1gd1go (see, Complainants’ Additional          Submission Ex. C). Respondent does not use HP® or Pre as trademarks, and         there is absolutely no suggestion that hppre.com is owned by, affiliated with or         sponsored by Complainants.

 

            Respondent created the site in an attempt to increase awareness about the             webOS system and HP’s webOS product offerings, and to establish a forum for          discussion about these products (Respondent Ex. 7 ¶ 5). In the past,          Respondent set up other blogs as a hobby, for products he and his families were       interested in (Respondent Ex. 7 ¶ 3). He has never sold or offered to sell a   domain name (Id. ¶ 4). Simply put, there is no evidence of bad faith.”

 

FINDINGS

The Panel finds that Respondent has rights or legitimate interests in the disputed domain name and did not register and is not using the domain name in bad faith.  In view of these findings, the Panel has no need to address the remaining element of the Policy and does not do so.

 

DISCUSSION

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."

 

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; and

(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 and/or Confusingly Similar

As noted above, in view of the Panel’s determinations on the issues of “rights or legitimate interests” and “bad faith” registration and use, there is no need to address this issue.

 

Rights or Legitimate Interests

 

The Panel finds that the evidence supports a determination that Respondent 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, within the meaning of paragraph 4 (c)(iii) of the Policy. The evidence supports Respondent’s contention that the disputed domain name resolves to a web site that includes news and commentary on HP products, including the PRE3.  Complainants do not appear to contest this point but note that the commentary is not original to Respondent and that Respondent uses the disputed domain name in connection with an ad-driven web site that promotes the products of Complainants’ competitors.  However, the Panel agrees with Respondent’s contention that a website need not have content original to the respondent in order to fall within paragraph 4 (c)(iii) of the Policy.  News and commentary is news and commentary no matter the source. Moreover, the fact that Respondent’s site contained ads for Competitors’ products and that Respondent derived some revenue from such ads does not necessarily take this case outside the purview of paragraph 4 (c)(iii) of the Policy. Based on the evidence presented, the Panel finds that Respondent’s use of the disputed domain name was not motivated substantially out of economic interest but, rather, out of an interest in providing a repository for comments regarding IT products, including the PRE3. See Bolger v. Youngs Drug Products Corp., 463 U.S. 60 (1983).  

 

Registration and Use in Bad Faith

 

The Panel concludes that the evidence does not support a determination that the disputed domain name was registered and is being used in bad faith.  Complainant relies on paragraph 4(b)(iv) of the Policy in support of its bad faith claim.  To fall within that paragraph, the evidence must demonstrate that the named respondent intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with the complainant’s mark as to the source of the site and/or of the products or services found therein.  The Panel finds that Complainant has failed to meet its burden of proof on this issue; in particular, that Respondent acted with the requisite intent.

 

The Panel notes that, following receipt of the complaint, Respondent added a disclaimer to his site and blocked all AdSense categories relating to consumer electronic and related products. While Complainant’s point regarding the ineffectiveness of the disclaimer in dispelling a likelihood of confusion is well-taken, the addition of the disclaimer is some evidence that Respondent lacked the requisite intent.   So is Respondent’s declaration under penalty of perjury in which he stated that he registered the disputed domain name in good faith.

 

The Panel notes, as emphasized by Complainant, that the disputed domain name was registered only one day after HP announced its agreement to purchase Palm and Palm’s product line, including the Palm Pre. While such activity is usually suspicious and supportive of a finding of the requisite bad faith, where, as here, the evidence indicates that the domain name is used primarily as a commentary site, such suspicions do not appear warranted.

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <hppre.com> domain name REMAIN WITH Respondent.

 

 

Jeffrey M. Samuels, Panelist

Dated:  July 27, 2011