Hewlett-Packard Company v. Fred M. a/k/a
Fred Mudalier
Claim Number: FA0301000140654
PARTIES
Complainant is Hewlett-Packard Company, Palo Alto, CA, USA (“Complainant”) represented by Molly Buck-Richard, of Thompson & Knight LLP. Respondent is Fred M. a/k/a Fred Mudalier, Edmonton, AB, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hp-invent.info>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 10, 2003; the Forum received a hard copy of the Complaint on January 13, 2003.
On January 23, 2003, Enom confirmed by e-mail to the Forum that the domain name <hp-invent.info> is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 January 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2003 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 postmaster@hp-invent.info 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 20, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
A. Complainant makes the following assertions:
1. Respondent’s <hp-invent.info> domain name is confusingly similar to Complainant’s HP INVENT mark.
2. Respondent does not have any rights or legitimate interests in the <hp-invent.info> domain name.
3. Respondent registered and used the <hp-invent.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hewlett-Packard
Company, holds U.S. Reg. No. 850,251 for its HP mark (registered on the
Principal Register of the United States Patent and Trademark Office (“USPTO”)
on June 4, 1968), U.S. Reg. No. 2,474,422 for its HP INVENT mark (registered on
the Principal Register of the USPTO on July 31, 2001), and numerous other
trademark registrations for variations of these marks.
Complainant has operated under its
HP family of marks since 1941 in connection with its sale and manufacture of
computer hardware, printers, computer peripherals, software, and other related
goods. Since 1999, Complainant has extensively used the HP INVENT mark in
conjunction with these same goods, obtaining several federal trademark
registrations and applying for several more. Complainant expends considerable
amounts of money developing both consumer recognition of its HP family of marks
and consumer goodwill in these marks.
Respondent, Fred M. a/k/a Fred Mudalier, registered the <hp-invent.info> domain name December 30, 2002, and is not licensed or authorized to use Complainant’s HP INVENT mark for any purpose. Respondent posts no original content at the website other than to note that a functional website is “Coming Soon.”
On January 3, 2003, Respondent wrote an e-mail to Complainant, notifying it that Respondent was the current owner of the domain name registration for the <hp-invent.info> domain name, and that it intended to use it to direct Internet traffic to its business. Respondent also stated that it would sell the domain name “for a good price.” Complainant requested that Respondent voluntarily transfer the domain name registration, a request that was eventually countered with a sale price of the domain of $2,500,000. During this exchange, Respondent made clear to Complainant that it was aware of Complainant’s numerous other registrations of domain names incorporating the HP INVENT mark, and that Respondent’s asking price was a “mere fraction” of what Complainant was capable of paying.
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 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 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.
Complainant has established rights
in the HP INVENT mark through registration on the Principal Register of the
USPTO, as well as through application for additional trademark registrations of
the mark and widespread use of its mark in commerce. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist. Rights
in the mark can be established by pending trademark applications).
Respondent’s <hp-invent.info>
domain name is confusingly similar
to Complainant’s HP INVENT mark. The domain name entirely incorporates
Complainant’s mark, with the cosmetic addition of a hyphen between the words HP
and INVENT. This is an insufficient alteration for purposes of Policy ¶
4(a)(i). See InfoSpace.com v.
Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain
name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”); see also Pep Boys Manny, Moe,
and Jack v. E-Commerce
Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that a hyphen between words of the
Complainant’s registered mark is confusingly similar).
Accordingly, the Panel finds that the <hp-invent.info> domain name is confusingly similar to Complainant’s HP INVENT mark under Policy ¶ 4(a)(i).
Respondent failed to submit a response to the Complaint. As such, the
Panel not only views Complainant’s submission in a light most favorable to
Complainant, but chooses to view Respondent’s lack of response as evidence that
it lacks rights or legitimate interests in the disputed domain name. 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 Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Respondent registered the <hp-invent.info> domain name on December 30, 2002.
Four days later, Respondent contacted Complainant with an offer to sell its
domain name registration “for a good price.” Further correspondence between the
parties revealed that Respondent was not only aware of Complainant’s rights in
the HP INVENT mark prior to its registration of the infringing domain name, but
that its asking price was based on Complainant’s ability to pay, bearing no
relation to Respondent’s costs in registering and maintaining the domain name.
Respondent’s registration of an infringing domain name with the principal
intent of selling its registration to Complainant for substantial profit is prima facie evidence that Respondent has no rights or legitimate interests in the
domain name. See Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name with the intention of selling its rights); see also Kinko’s
Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name where it
appeared that the domain name was registered for ultimate use by Complainant); see
also Nike, Inc. v. B. B. de Boer,
D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where
one “would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <hp-invent.info> domain name under Policy ¶ 4(a)(ii).
As stated above, the Panel infers that Respondent registered the <hp-invent.info>
domain name because
it knew of its value to Complainant and hoped to earn a profit through sale of
its registration to Complainant. Respondent’s asking price of $2,500,000 does
not reflect its out-of-pocket costs associated with the registration of the
domain name. Furthermore, the four-day lapse between Respondent’s registration
of the infringing domain name and its sale offer to Complainant indicates that
sale of the registration was its primary motivation for registering the domain
name. For these reasons, the Panel finds that Respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ (4)(b)(i). See Deutsche Bank AG v. Diego-Arturo
Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was
registered in bad faith because of the short time frame between Respondent’s
registration and the unsolicited offer of sale to Complainant); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding bad faith where the Respondent offered the domain
name for sale for $150,000 the day after registration of the domain name).
The Panel thus finds that Respondent registered and used the <hp-invent.info> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hp-invent.info> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 25, 2003
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