Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. Robert Poole
Claim
Number: FA0506000491845
Complainant’s
are Hewlett Packard Company and Hewlett Packard Development Company, L.P. (collectively
“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, 8411 Preston Road, Suite 890,
Dallas, TX 75225. Respondent is Robert Poole (“Respondent”), 1541
Aircraft Ctr., Kingdom City, MO 65262.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hewlett-packard-ink-cartridges.com>,
registered with Tlds, Llc d/b/a Srsplus.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
6, 2005; the National Arbitration Forum received a hard copy of the Complaint on
June 8, 2005.
On
June 8, 2005, Tlds, Llc d/b/a Srsplus confirmed by e-mail to the National
Arbitration Forum that the domain name <hewlett-packard-ink-cartridges.com>
is registered with Tlds, Llc d/b/a Srsplus and that Respondent is the current
registrant of the name. Tlds, Llc d/b/a
Srsplus has verified that Respondent is bound by the Tlds, Llc d/b/a Srsplus 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
June 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 5, 2005 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@hewlett-packard-ink-cartridges.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <hewlett-packard-ink-cartridges.com>
domain name is confusingly similar to Complainant’s HEWLETT PACKARD mark.
2. Respondent does not have any rights or
legitimate interests in the <hewlett-packard-ink-cartridges.com>
domain name.
3. Respondent registered and used the <hewlett-packard-ink-cartridges.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Hewlett-Packard
Development Company is an affiliate of Hewlett-Packard Company. These two entities will be referred to
collectively as “Complainant.”
Complainant uses the HEWLETT PACKARD mark in connection with the sale of
computer hardware, printers, peripherals, software, and other related goods and
services. The HEWLETT PACKARD mark was
first used by Complainant in commerce as early as 1941 and has been
continuously used thereafter.
Complainant holds several trademark registrations with the United States
Patent and Trademark Office (“USPTO) for the HEWLETT PACKARD mark (i.e., Reg.
No. 2,404,025 issued November 14, 2000).
Respondent
registered the <hewlett-packard-ink-cartridges.com> domain name on
March 3, 2005. Respondent is using the
disputed domain name to redirect Internet users to a website that provides
links to websites that advertise ink jet printer cartridges of companies that
are in direct competition with Complainant’s business.
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. The Panel is entitled to accept all reasonable
allegations and inferences set forth in the Complaint as true unless the
evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent's failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); 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.").
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 HEWLETT PACKARD mark through several registrations of
the mark with the USPTO and through continuous use of the mark in
commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a presumption
of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <hewlett-packard-ink-cartridges.com>
domain name is confusingly similar to Complainant’s HEWLETT PACKARD mark
because the domain name features Complainant’s mark in its entirety, adds the
words “ink” and “cartridges,” hyphens between the words in the domain name, and
the generic top-level domain “.com.”
Furthermore, the words “ink” and “cartridges” describe Complainant’s
products. The Panel finds that these
minor alterations to Complainant’s registered mark are insufficient to negate
the confusingly similar aspects of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name is confusingly similar to the complainant’s HOYLE mark, and that the
addition of “casino,” a generic word describing the type of business in which
the complainant is engaged, does not take the disputed domain name out of the
realm of confusing similarity); see also Health Devices Corp. v. Aspen S T C,
FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks
such as hyphens is irrelevant in the determination of confusing similarity
pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and
top-level domains are irrelevant for purposes of the Policy); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <hewlett-packard-ink-cartridges.com>
domain name. Once Complainant makes a
prima facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where the complainant has asserted that respondent does not have
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 Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
does not have rights or legitimate interests is sufficient to shift the burden
of proof to the respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent is
using the <hewlett-packard-ink-cartridges.com> domain name to
redirect Internet users to a website that provides links to websites that
advertise ink jet printer cartridges of companies that are in direct
competition with Complainant’s business.
Respondent’s use of a domain name confusingly similar to Complainant’s
HEWLETT PACKARD mark to redirect Internet users interested in Complainant’s
products to a website that offers similar goods in direct competition with
Complainant’s business is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Or. State
Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <hewlett-packard-ink-cartridges.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <hewlett-packard-ink-cartridges.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <hewlett-packard-ink-cartridges.com> domain name, which
is confusingly similar to Complainant’s HEWLETT PACKARD mark, to redirect
Internet users to a website that provides links to websites that advertise ink
jet printer cartridges of companies that are in direct competition with Complainant’s
business. The Panel finds that such use
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since Respondent’s
domain name is confusingly similar to Complainant’s HEWLETT PACKARD mark,
Internet users accessing Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <hewlett-packard-ink-cartridges.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
Furthermore,
Respondent registered the <hewlett-packard-ink-cartridges.com> domain
name with actual or constructive knowledge of Complainant’s rights in the
HEWLETT PACKARD mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent registered the domain name with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content advertised
on Respondent’s website and Complainant’s business. Registration of a domain name that is confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when the respondent reasonably should have been aware of the complainant’s trademarks,
actually or constructively.”); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he
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.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about the complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <hewlett-packard-ink-cartridges.com> domain
name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 20, 2005
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