DECISION

 

Hewlett-Packard Company v. Russx Casting Company

Claim Number: FA0109000099709

 

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price LLP.  Respondent is Russx Casting Company, Obninsk, Kaluga, RUSSIA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpcu.org>, registered with Bulkregister.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 13, 2001; the Forum received a hard copy of the Complaint on September 17, 2001.

 

On September 18, 2001, Bulkregister confirmed by e-mail to the Forum that the domain name <hpcu.org> is registered with Bulkregister and that Respondent is the current registrant of the name.  Bulkregister has verified that Respondent is bound by the Bulkregister 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 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 2001 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@hpcu.org 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 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <hpcu.org> domain name is confusingly similar to the Complainant's mark.

 

Respondent has no rights or legitimate interests in the <hpcu.org> mark.

 

Respondent registered and used the <hpcu.org> domain name in bad faith.

 

B. Respondent

No response was received.

 

FINDINGS

Since 1941, Complainant has been using the HP mark in commerce on various products ranging from technical instruments and journals to computers.  Over the last six decades Complainant has invested  a substantial amount of money to develop goodwill in the mark and cause consumers throughout the United States and the world to recognize the mark as distinctly designating products originating from Complainant.

 

Complainant is the owner of 44 registered trademarks on the principle register of the United States Patent and Trademark Office, as well as 24 additional pending trademark applications all containing the HP mark.  Complainant is also the owner of the domain name <hpcu.com> which Complainant's employees use to access their credit union.

Respondent registered the <hpcu.org> domain name on April 26, 2001.  Respondent uses the domain to advertise several pornographic websites.  Respondent is not commonly known by HP, HPCU or <hpcu.org>. 

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

Complainant, through its extensive investments, continuous use and numerous trademark registrations has established that it has rights in the HP mark.  Furthermore, the <hpcu.org> domain name is confusingly similar to Complainant's mark because it contains Complainant's mark in its entirety combined with two additional letters "c" and "u".  It has been found that the addition of letters to a famous mark does not defeat a claim of confusing similarity.  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that “kelsonmd.com” is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also America 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) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interest in the <hpcu.org> 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).

 

Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

 

There is no evidence, and Respondent does not refute, that Respondent has rights or legitimate interests in respect to the disputed domain name.  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).

 

Furthermore, Respondent's use of the domain name for pornography does not establish rights or legitimate interests.  See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent's use of the <hpcu.org> domain name to display pornographic material is evidence of bad faith.  See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute a bad faith”).

 

Furthermore, the domain name <hpcu.org> is very similar to Complainant's domain <hpcu.com> which its employees use to access their credit union.  An Internet user searching for the Complainant's credit union website or another website of the Complainant is likely to be misled into believing that there is affiliation, connection, or association between Complainant and Respondent.  See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain name <hpcu.org> be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: October 22, 2001