Hewlett-Packard Company v. OfficeOnWeb
Ltd.
Claim
Number: FA0303000151537
Complainant is
Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented
by Molly Buck Richard, of Thompson & Knight LLP. Respondent
is OfficeOnWeb Ltd., Evergreen, CO (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <laserjet-cartridge.com>, registered with Tucows,
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 25, 2003; the Forum received a hard copy of the
Complaint on March 27, 2003.
On
March 25, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <laserjet-cartridge.com> is registered with Tucows, Inc. and
that Respondent is the current registrant of the name. Tucows, Inc. has
verified that Respondent is bound by the Tucows, 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 27, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 16, 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@laserjet-cartridge.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 24, 2003, 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 Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <laserjet-cartridge.com>
domain name is confusingly similar to Complainant’s LASERJET mark.
2. Respondent does not have any rights or
legitimate interests in the <laserjet-cartridge.com> domain name.
3. Respondent registered and used the <laserjet-cartridge.com>
domain name in bad faith.
B. Respondent
1. Respondent claims that Complainant’s
mark, LASERJET, is generic and,
therefore, the domain name at issue
does not infringe on a mark in which Complainant
has protectable rights.
2.
As a reseller of Complainant’s products, including laserjet cartridges, Respondent needs to use the domain name
at issue to direct web surfers to his
main website.
3.
Respondent claims that he did not register the domain name at issue in
bad faith but to assist in his sale of
Complainant’s products.
C. The parties have filed Additional
Submissions which have been deemed timely, and the additional arguments
and rebuttals therein have been taken into consideration
in rendering this decision.
Complainant,
Hewlett-Packard Co., is the owner of numerous marks regarding its 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 its line of printers and their related toner cartridges.
Complainant’s LASERJET mark was registered with the U.S. Patent and Trademark Office
(“USPTO”) on September 22, 1987 (Reg. No. 1,458,061), and denotes “non-impact
printer for office and data processing” and “printer product brochures, data
sheets and operator and technical reference manuals.” Complainant’s LASERJET
mark is registered in over 40 countries throughout the world.
Complainant has
invested substantial resources in developing and advertising the LASERJET mark.
Complainant’s advertising campaign is directed at the consuming public, which
recognizes the LASERJET mark as representing Complainant’s printing products
and related services. Over 18 years of promotional efforts have made
Complainant’s LASERJET mark famous and distinct.
Complainant also
holds numerous domain name registrations that incorporate its LASERJET mark. More
specifically, Complainant has registered the following domain names:
<laserjet.com>, <laserjet.net>, <laserjet.org>,
<laserjet.info> and <laserjet.us>.
Respondent,
OfficeOnWeb Ltd., registered the <laserjet-cartridge.com> domain
name on November 1, 2000. Respondent’s domain name resolves to a website
(<printpage.com>) that advertises inkjet cartridges and laser toner
cartridges manufactured by Complainant as well as Complainant’s competitors,
such as Apple, Canon, Epson, Lexmark, Panasonic, Sharp and Xerox.
Complainant
asserts that it never authorized Respondent to use its registered trademarks
separate and apart from its own manufactured goods for which Respondent is a
reseller.
In
correspondence dated February 2002, Respondent communicated to Complainant that
it would not transfer the domain name registration voluntarily, and suggested
that Complainant purchase the registration for “fair use value.” In its
Additional Submission, Respondent indicates that it seeks reprogramming costs,
lost revenue, expenses for time lost for participating in this proceeding and
other expenses which are “… more than just domain ownership.”
Respondent
argues that it is engaged in a legitimate business that offers laserjet,
laserjet compatible and laserjet remanufactured cartridges. See Grobet
File Co. of Am., Inc. v. Exch. Jewelry Supply, FA 94960 (Nat. Arb. Forum July 14, 2000) (holding that “[w]ithin its
rights as a distributor, therefore, Respondent registered the domain name and
sold Complainant's legitimate goods online.
In sum, Respondent has successfully shown that it was using the
<grobet.com> domain name and web site in connection with the bona fide
offering of goods and services, before any notice of the dispute”); see also
Hewlett Packard Co., v. Napier,
FA 94368 (Nat. Arb. Forum Apr. 28, 2000) (finding that Respondent’s sale and
service of Complainant’s software established its legitimate interest in the
domain name <openview.com>, which contained Complainant’s trademark
OPENVIEW); see also ABIT Computer
Corp. v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000)
(finding “that Respondent demonstrated bona fide use of the domain name in the
offering for sale by retail of Complainant's motherboards and that such use
commenced prior to notice of the dispute”).
Respondent
argues that it is an online store, and that although it sells products produced
by other companies, its situation is no different “than the local store,” which
sells numerous goods that compete in different areas of office products.
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.
Complainant has
established rights in the LASERJET mark by registration and continuous use of
the mark in commerce since at least 1984. Although Complainant’s LASERJET mark
may appear to be descriptive, Complainant’s promotional efforts and extensive
advertising campaign have aided the LASERJET mark in acquiring significant
secondary meaning among the consuming public. Additionally, Complainant’s
LASERJET mark is registered on the Principal Register of the USPTO, a position
that indicates Complainant’s mark is distinct. See The Men’s Wearhouse, Inc.
v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”); see also 15 U.S.C. §
1052(e)-(f); Lanham Act § 2(f) (A term is generally not viable for registration
if it is “merely descriptive” when applied to the goods of the applicant.
However, an exception is made for terms which, although merely descriptive,
have become “distinctive of the applicant’s goods in commerce.” If such
“secondary meaning” is shown, the mark may be registered).
Respondent’s <laserjet-cartridge.com> domain
name is confusingly similar to Complainant’s LASERJET mark. Respondent’s domain
name incorporates Complainant’s mark in its entirety, and merely adds
“cartridge,” a generic word that partially describes Complainant’s LASERJET
product. The addition of industry-related words to famous marks fails to create
a distinguishable domain name for the purposes of Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does
not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying PG&E mark held by
Complainant”).
Respondent has
offered no evidence that Complainant’s LASERJET mark has become generic.
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent is not licensed to use its LASERJET mark separate and
apart from Complainant’s manufactured goods. Once Complainant asserts that
Respondent is lacking rights and legitimate interests in the disputed domain
name, the burden shifts to Respondent to provide credible evidence that
supports its claim to the domain name. Respondent does not deny conclusions
which Complainant asserts can be drawn from the facts); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain name, the burden shifts to Respondent to provide
credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
As stated, the
subject domain name resolves to a commercial website where Respondent
advertises ink cartridges and laser toner cartridges for sale. Unrefuted
evidence reveals that Respondent’s website uses Complainant’s LASERJET mark to
create Internet interest in products that are not only affiliated with
Complainant, but also Complainant’s competitors. Using a domain name that is
confusingly similar to Complainant’s LASERJET mark to sell similar products,
products that Complainant’s mark specifically denotes, does not constitute a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does
it equate to a noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to profit using Complainant’s
mark by redirecting Internet traffic to its own website); 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 is
not authorized or licensed by Complainant to make use of the LASERJET mark in
the domain name. Although Respondent may offer Complainant’s LASERJET products
via its Internet “OfficeOnWeb” entity, merely selling another’s goods does not
entitle one to market oneself under the mark absent permission from the primary
user. Therefore, Respondent fails to establish rights in the domain name under
Policy ¶ 4(c)(ii). See 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 and never applied for a license or permission from Complainant to use the
trademarked name); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the subject domain name in bad faith as described under
Policy ¶¶ 4(b)(i) and (iv).
Complainant
never authorized Respondent to use the LASERJET mark for any purpose. Upon
learning that Respondent had registered the <laserjet-cartridge.com> domain
name, Complainant’s counsel sent a letter to Respondent seeking voluntary
transfer of the domain name registration. Respondent replied and refused to
transfer its rights in the domain name voluntarily, instead stating that
Complainant “MUST purchase the domain from us for fair use value. The offer
should recognize our existing expense and the value of the site for the next five
years.” Respondent’s statements suggest it is holding the domain name hostage,
seeking to solicit purchase bids beyond out-of-pocket expenditures.
Respondent’s exploitation of Complainant’s rights and goodwill in the LASERJET
mark evidence bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Serv., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the
domain name, even if no certain price is demanded, are evidence of bad faith”);
see also Dynojet
Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding
that Respondent demonstrated bad faith when he requested monetary compensation
beyond out-of-pocket costs in exchange for the registered domain name).
Furthermore, by
using the <laserjet-cartridge.com> domain name, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s LASERJET mark.
The infringing domain name is used in connection with a commercial website that
advertises the products of Complainant’s competitors. Such use constitutes bad
faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because Respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <laserjet-cartridge.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
May 21, 2003
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