Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. International Aggregate and
Darrell Small
Claim
Number: FA0309000196139
Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company L.P., Palo Alto, CA
(collectively “Complainant”) represented by Molly Buck Richard and Heather C. Brunelli of Thompson & Knight LLP, 1700
Pacific Avenue, Suite 3300, Dallas, TX
75201. Respondent is Darrell Small and International Aggregate,
PO Box # 8471 Scottsdale, AZ 85252
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <hppartsdirect.com> and <shoppinghp.com>,
registered with Register.Com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically September 17, 2003; the Forum received a hard copy of the
Complaint September 17, 2003.
On
September 19, 2003, Register.Com confirmed by e-mail to the Forum that the
domain names <hppartsdirect.com> and <shoppinghp.com>
are registered with Register.Com and that Respondent is the current registrant
of the names. Register.Com verified that Respondent is bound by the Register.Com
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
September 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 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@hppartsdirect.com
and postmaster@shoppinghp.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
October 21, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
The
Panel notes that Respondent attempted to correspond with the Forum and the
Panel by e-mail dated October 22, 2003, after expiration of the deadline for
filing a Response, and that Respondent purported to date the attachment to this
email as October 10, 2003. In that
attachment, Respondent attempted to raise the defense that its use of “hp” in the domain names in dispute was not
intended to confuse those seeking Complainant’s “hp” goods or services.
Further, Respondent attempted to raise the defense that its use of “hp” in the
sites attached to the domain names in issue had been going on from perhaps as
early as 1991, and that Respondent had registered a d/b/a under the “HP Parts
Direct” name. Further, Respondent attempted to raise the issue that its domain
name sites include a disclaimer.
The
Panel is not aware that Respondent complied with the rules for filing a
Response or Additional Response in this matter and the Panel has determined
that it should not consider the late communication and will decide the case as
a default case. However, the Panel
notes that even if it were to consider Respondent’s information, Respondent
brought no evidence to the Panel that Respondent had any permission or license
to use Complainant’s HP mark in any fashion at any time.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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 names be transferred from Respondent to Hewlett
Packard Company.
A. Complainant makes the following assertions:
1. The domain names registered by
Respondent, <hppartsdirect.com> and <shoppinghp.com>,
are confusingly similar to Complainant’s HP marks.
2. Respondent has no rights to or legitimate
interests in the <hppartsdirect.com> and <shoppinghp.com>
domain names.
3. Respondent registered and used the <hppartsdirect.com>
and <shoppinghp.com> domain names in bad faith.
B.
Respondent failed to submit a Response in this proceeding that was timely or in
compliance with the Rules.
Complainant is
the holder of 50 trademarks and service marks registered on the Principal
Register of the United States Patent and Trademark Office (“USPTO”) for the HP
mark and for marks containing “HP” (collectively, the “HP marks”). Some of Complainant’s marks registered on
the Principal Register include USPTO Registration No. 2,404,023 for the HP mark
(registered on August 22, 2000), Registration No. 2,414,234 for the HP
VISUALIZE mark (registered on December 19, 2000) and Registration No. 2,261,482
for the HP STAR (registered on July 13, 1999).
Complainant also uses its HP marks worldwide, and has registrations for
its HP marks in some 140 countries around the world (for example, Registration
No. 52,499 for the HP mark in the European Community).
Complainant uses
its marks in connection with computers, hardware, printers, peripherals,
software and other related goods and services.
Since at least as early as 1941, Complainant has used its HP marks in
association with its goods, services and advertising for its goods and services
throughout the world.
Complainant also
holds various domain name registrations for domain names incorporating its HP
marks. For example, Complainant
operates websites at the <hp.com>, <hp.net> and <hp.org>
domain names, which display information about its products and services as well
as information about the company.
Complainant also operates a commercial website at the
<hpshopping.com> domain name where it offers consumers services related
to its products. In addition,
Complainant calls its own parts ordering business “HP Parts Direct,” which is
located at the <partsdirect.hp.com> domain name.
Respondent
registered the domain name <hppartsdirect.com> July 14, 2002, and
registered the name <shoppinghp.com> August 23, 2003. The website located at the <hppartsdirect.com>
domain name represents that it resells parts for Complainant’s products
directly from the manufacturer. At the <hppartsdirect.com>
domain name, Respondent advertises that it is the “absolute best source”
for HP parts. In addition, although the
website at the <shoppinghp.com> domain name appears now to be
inactive, Respondent initially used the website to market parts under
Complainant’s mark. Unlike the <shoppinghp.com>
domain name, the <hppartsdirect.com> domain name continues to
advertise parts and accessories to be used with Complainant’s HP products.
Complainant has
not authorized Respondent to use its HP marks for any purpose and Respondent is
not and has never been a licensee of Complainant’s HP marks.
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 timely Response in compliance with the Rules,
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 will draw such inferences as the Panel considers
appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
presented evidence in this proceeding to establish that it has legal rights in
its HP marks through registration of the marks with the USPTO and throughout
the world. Accordingly, the Panel
concludes that Complainant has rights in its HP marks pursuant to Policy ¶
4(a)(i). See Men’s Wearhouse, Inc.
v. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The domain names
registered by Respondent, <hppartsdirect.com> and <shoppinghp.com>,
contain Complainant’s HP marks along with the descriptive words “parts direct”
and “shopping,” respectively. Both
domain names also include the generic top-level domain “.com”. The mere addition of descriptive words and
generic top-level domain names to a famous mark does not eliminate the similarity
between the domain names and the mark.
Thus, the Panel finds that Respondent’s domain names are confusingly
similar to Complainant’s marks under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that "the addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use of a gTLD is required
of domain name registrants"); see also Am. Online, Inc. v. Anytime
Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding
that Respondent’s domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see
also Westfield Corp., Inc. v.
Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint in this proceeding except as set out
above. After Complainant alleged that
Respondent has no rights or legitimate interests in the domain names,
Respondent had the burden of providing evidence showing that it had such rights
and legitimate interest in the domain names at issue. However, in this case, Respondent failed to provide any
circumstances proving that it has rights and legitimate interests in the <hppartsdirect.com>
and <shoppinghp.com> domain names. Thus, the Panel finds that Respondent has no rights or legitimate
interests in the domain names under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant asserts
that Respondent has no rights or legitimate interests with respect to the
domain name, it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the Respondent”); see also 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”); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a Response or
provided the Panel with evidence to suggest otherwise).
Respondent is
not authorized to incorporate Complainant’s HP marks in its business and domain
names in any manner. In addition, no
evidence before the Panel suggests that Respondent is known by the <hppartsdirect.com>
and <shoppinghp.com> domain names and Respondent was not known
by these names at any time prior to registration of the domain names. Consequently, the Panel finds that
Respondent is not commonly known by the domain names pursuant to Policy ¶ 4(c)(ii). See 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"); 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).
Respondent is
using the <hppartsdirect.com> domain name in connection with a
website that advertises computer equipment for use with Complainant’s HP
products. In fact, Respondent is
advertising replacement parts for Complainant’s products in direct competition
with Complainant’s own “HP Parts Direct” parts ordering business, which is
located at the <partsdirect.hp.com> domain name. Respondent’s use of domain names that
incorporate Complainant’s HP marks to sell similar goods specifically denoted
by Complainant does not evidence use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Accordingly, the Panel concludes that
Respondent does not have rights or legitimate interests in the <hppartsdirect.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services); see also Fanuc Ltd v. Mach. Control Serv., FA
93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy
¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com>
because customers visiting the site were confused as to the relationship
between Respondent and Complainant).
In addition, the
fact that the <shoppinghp.com> domain name is now inactive does
not change the fact that Respondent has no rights or legitimate interests in
the domain name. Respondent used the <shoppinghp.com>
domain name in the same illegitimate manner that it currently uses the <hppartsdirect.com>
domain name. When Respondent’s
website at the <shoppinghp.com> domain name was active, Respondent
was advertising replacement parts for Complainant’s products in direct
competition with Complainant.
Furthermore, Respondent could resume an infringing use of the domain
name at any time. Moreover, inactive
websites do not evidence rights and legitimate interests in a domain name.
Thus, the Panel
finds that Respondent has no rights and legitimate interests in the <shoppinghp.com>
domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Clear Channel Communications, Inc. v. Beaty Enters.,
FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a
competitor of Complainant, had no rights or legitimate interests in a domain
name that utilized Complainant’s mark for its competing website); see also
Fed. Nat’l Mortgage Ass’n v. Domain Stuff.com, FA114620 (Nat. Arb. Forum
July, 29, 2002). (finding that Respondent had no rights or legitimate interests
in a domain name where the domain name was inactive at the time of the domain
name dispute but had previously been used to redirect Internet users to
commercial websites that displayed pornographic content).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
knowingly registered and used the <hppartsdirect.com> and <shoppinghp.com>
domain names to intentionally attract, for commercial gain, Internet users to
Respondent’s websites by creating a likelihood of confusion with Complainant’s
HP marks as to the source, sponsorship, affiliation, or endorsement of
Respondent’s website. Given the fact
that both domain names incorporate Complainant’s entire HP mark, consumers
visiting Respondent’s websites are likely to believe that the websites
registered by Respondent that contain Complainant’s mark and sell Complainant’s
products are sponsored by Complainant.
In addition, it is likely that Internet users would be surprised to
learn that Complainant is not the source of Respondent’s websites since
Respondent advertises its websites as the “absolute best source” for HP parts
and that the parts purportedly are provided directly from the
manufacturer. Furthermore, the fact
that Complainant sells its own parts through its “HP Parts Direct” business and
operates a website at the <hpshopping.com> domain name only furthers the
likelihood of consumer confusion. Thus,
the Panel appropriately concludes that Respondent is using the domain names in
bad faith pursuant to Policy ¶ 4(b)(iv).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com>
domain name to offer goods competing with Complainant’s illustrates
Respondent’s bad faith registration and use of the domain name, evidence of bad
faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a direct
competitor of Complainant).
Furthermore, the
wide notoriety of Complainant’s HP marks, Complainant’s registration of its HP
marks on the USPTO’s Principal Register, and the fact that Respondent is
knowingly selling Complainant’s products all permit the inference that
Respondent knew of Complainant’s rights in its HP marks prior to registering
the <hppartsdirect.com> and <shoppinghp.com> domain
names. Registering another’s mark with
knowledge of another’s rights in its mark is evidence of bad faith use and
registration. Thus, the Panel finds
that Respondent registered the domain names in bad faith pursuant to Policy ¶
4(a)(iii). See Samsonite
Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
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 relief shall be GRANTED.
Accordingly, it
is Ordered that the <hppartsdirect.com> and <
shoppinghp.com> domain names be TRANSFERRED from Respondent to
Complainant, Hewlett-Packard Company.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 3, 2003.
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