Hewlett-Packard Company v. ABC Laserjet, Inc.
Claim Number: FA0303000150785
Complainant is
Hewlett-Packard Company,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <abclaserjet.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 19, 2003; the Forum received a hard copy of the Complaint on March 21, 2003.
On March 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <abclaserjet.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@abclaserjet.com 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 April 21, 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 <abclaserjet.com> domain name is confusingly similar to Complainant’s LASERJET mark.
2. Respondent does not have any rights or legitimate interests in the <abclaserjet.com> domain name.
3. Respondent registered and used the <abclaserjet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant manufactures and distributes computer hardware, printers, peripherals, software and other related goods and services. Since at least as early as 1984, Complainant has used the LASERJET mark in association with a line of printers and compatible toner cartridges. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LASERJET mark (Reg. No. 1,458,061 issued on September 22, 1987). Complainant has also registered or applied to register various other marks with the USPTO that incorporate the LASERJET mark in some fashion. In addition, Complainant has registered the DESKJET mark in over forty countries.
For nearly twenty years, Complainant has invested a substantial amount of resources in an effort to develop the goodwill associated with LASERJET related products. The LASERJET mark has grown to be a valuable source identifier, designating products that originate with Complainant.
Respondent registered the <abclaserjet.com> domain name with Network Solutions, Inc. on May 4, 2000. Respondent uses the domain name to resolve to a website that solicits the sale of cartridges for laser printers, including Complainant’s LASERJET printers. Respondent also sells toner cartridges for laser printers manufactured by Complainant’s competitors, such as Canon, Lexmark, Kyocera, Panafax and Xerox. Moreover, Respondent advertises remanufacturered cartridges for Complainant’s printers.
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 its rights in the LASERJET mark through proof of trademark registration with the USPTO, and use in commerce since 1984.
Respondent’s <abclaserjet.com> domain name incorporates Complainant’s entire LASERJET mark. The only difference between the second level domain, “abclaserjet,” and the LASERJET mark is the prefix “abc.” The “abc” prefix holds no descriptive value, and fails to detract from the dominating presence of Complainant’s LASERJET mark. Therefore, Respondent’s <abclaserjet.com> domain name is indistinguishable from Complainant’s mark, and the Panel finds the domain name to be confusingly similar to said mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Respondent did not submit a Response and thus has allowed Complainant’s allegations to go unchallenged, including the allegation that Respondent has no rights or legitimate interests in the <abclaserjet.com> domain name. The Panel infers, from the lack of response, that Respondent has no such rights or legitimate interests. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”).
Furthermore, in the absence of a response, the Panel will draw all reasonable inferences from the Complaint in Complainant’s favor. See 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 uses the <abclaserjet.com> domain name to divert Internet traffic to a website where it sells products in competition with Complainant. Respondent sells new and remanufactured toner cartridges for Complainant’s LASERJET printers. Hence, Respondent deliberately uses Complainant’s LASERJET mark to attract customers to a website that sells LASERJET related products. Moreover, Respondent solicits sales of printer cartridges for printers in competition with Complainant’s LASERJET line of printers. Respondent’s commercial use of the <abclaserjet.com> domain name for sales of goods in direct competition with LASERJET related products does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does Respondent’s use represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
Respondent’s WHOIS information lists ABC Laserjet, Inc. as the <abclaserjet.com> domain name Registrant. However, there is no affirmative offering of proof that Respondent is commonly known by that name or specifically the <abclaserjet.com> domain name. Complainant argues that Respondent’s apparent use of the “ABC Laserjet” trade name does not mean that Respondent is commonly known by this name, especially in light of the source identifying significance of the LASERJET mark. Without any attempt by Respondent to refute Complainant’s allegations, the Panel concludes that Policy ¶ 4(c)(ii) cannot be employed in Respondent’s favor. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <abclaserjet.com> domain name and thus Policy ¶ 4(a)(ii) is satisfied.
Respondent’s use of the <abclaserjet.com> domain name to compete with Complainant’s LASERJET related products constitutes bad faith registration and use. A consumer who ends up using the confusingly similar domain name would likely be confused as to Complainant’s affiliation with the resulting website that sells toner cartridges, especially since the LASERJET moniker is used and cartridges for Complainant’s LASERJET printers are sold. In sum, Respondent’s use of the <abclaserjet.com> domain name for commercial sales in competition with Complainant represents bad faith under Policy ¶ 4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods).
The Panel finds 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 <abclaserjet.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 24, 2003
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