Hewlett-Packard Company, Hewlett-Packard
Development Company, L.P. and Compaq Trademark B.V. v. MITG and Michael Lauber
Claim Number: FA0402000241982
PARTIES
Complainants
are Hewlett-Packard Company,
Hewlett-Packard Development Company, L.P. and Compaq Trademark B.V. (“Complainant”),
represented by Heather C. Brunelli, of Thompson & Knight LLP,
1700 Pacific Avenue, Suite 3300, Dallas, TX 75201. Respondent is MITG and Michael Lauber (“Respondent”), represented by James A. Hansen, of Schmiedeskamp, Robertson, Neu &
Mitchell, 525 Jersey, P.O.
Box 1069, Quincy, IL 62306.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <hpdirectonlineparts.com>, <hpdirectonline.com>, <hponlineparts.com>, <compaqdirectonline.com> and <compaqonlineparts.com> registered with Alldomains.com, Inc.
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 25, 2004; the Forum received a hard copy of the
Complaint on February 26, 2004.
On
March 2, 2004, Alldomains.Com Inc. confirmed by e-mail to the Forum that the
domain names <hpdirectonlineparts.com>, <hpdirectonline.com>, <hponlineparts.com>, <compaqdirectonline.com> and <compaqonlineparts.com> are registered with Alldomains.Com
Inc. and that the Respondent is the current registrant of the names. Alldomains.Com Inc. has verified that
Respondent is bound by the Alldomains.Com 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 2, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 22,
2004 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@hpdirectonlineparts.com, postmaster@hpdirectonline.com,
postmaster@hponlineparts.com, postmaster@compaqdirectonline.com and postmaster@compaqonlineparts.com
by e-mail.
A
timely Response was received and determined to be complete on March 19, 2004.
A
timely Additional Submission was received from Complainant and determined to be
complete on March 23, 2004.
On March 26, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant, Hewlett-Packard Company.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
is the owner of numerous longstanding trademarks that comprise or include “HP”
or “Compaq” in the United States and elsewhere. Respondent registered the disputed “Compaq” domain names in
November 2001 and the disputed “HP” domain names in January 2002, in both
instances without Complainant’s knowledge or consent.
In
February 2002, Respondent entered into an agreement with Compaq Direct, Inc., a
predecessor in interest of Complainant.
The agreement provided that Respondent would perform customer support
services for Compaq. The parties
acknowledged and agreed not to use each other’s intellectual property rights
(including trademarks and domain names) without permission and then only as
necessary to perform obligations under the agreement. Complainant states that it was not aware of Respondent’s domain
names when it entered into that agreement.
Complainant
states that during the course of the parties’ contractual relationship,
Respondent made use of the disputed domain names in facilitate its performance
under the agreement. Complainant
acknowledges that it impliedly consented to this use of the domain names:
During
the course of the contractual relationship between Compaq and MITG and then
Hewlett-Packard and MITG, MITG made use of the <compaqonlineparts.com>,
<compaqdirectonline.com> <hponlineparts.com>, <hpdirectonline.com>
and <hpdirectonlineparts.com> domain names as points of contact
for consumers to order Compaq and then Hewlett-Packard replacement parts. Compaq and Hewlett-Packard impliedly
consented to this use of the domain names by MITG to facilitate MITG’s
performance under the Agreement.
(Complaint
at 4.)
In October
2003, Complainant notified Respondent that it did not intend to renew the
agreement, and the agreement terminated in February 2004. Upon termination of the agreement,
Complainant requested Respondent to assign the disputed domain names to it;
Respondent refused to do so.
Complainant states that Respondent is currently using the domain names
to resolve to a website notifying visitors that HP Direct Online is no longer
offered through Respondent, with a link to Respondent’s main website, which
promotes competitors of Complainant.
Comlainant
alleges that the disputed domain names are confusingly similar to its HP and
COMPAQ marks; that Respondent has no rights or legitimate interests in the
disputed domain names, and that Respondent registered and has used the disputed
domain names in bad faith.
In
support of the bad faith claim, Complainant contends that Respondent’s only
right to use Complainant’s marks in domain names arose from Complainant’s
implied consent under the February 2002 agreement between the parties. Complainant asserts that Respondent has
retained the domain names following the termination of that agreement in order
to prevent their use by Complainant and to disrupt Complainant’s business. Complainant further alleges that
Respondent’s use of the domain names to promote competing products is a bad
faith use. Complainant notes that all
of the disputed domain names were registered prior to February 2002, and
alleges that the three “HP” domain names were registered in the personal name
of Respondent Michael Lauber in order to prevent Complainant from discovering
their registration.
B. Respondent
Respondent
contends that it was already providing services to Complainant when it
registered the disputed “Compaq” domain names in November 2001, and asserts
that it registered these domain names with Complainant’s implied consent. In February 2002, pursuant to the parties’
agreement, Respondent became the exclusive supplier of parts and services to
Complainant’s customers.
Respondent
acknowledges that this agreement was terminated effective in February
2004. However, Respondent contends that
a second agreement between the parties, also entered into in February 2002, has
not been terminated and remains in effect until at least February 2005. Respondent asserts that the second agreement
entitles it to continue using the disputed domain names that it previously used
under the first agreement with Complainant’s express or implied consent.
Respondent
concedes that the disputed domain names contain Complainant’s marks, but claims
that it has legitimate interests in the domain names based upon its use of the
names in connection with a bona fide offering of goods and services under the
second agreement. Respondent also
disputes Complainant’s allegations of bad faith, arguing that it registered and
is using the domain names for legitimate purposes and that Complainant
impliedly consented to and benefited from such use.
Respondent
accuses Complainant of acting in bad faith, alleging that Complainant unsuccessfully
sought to hijack the domain names by attempting to change the domain
registration information through the domain registrar without Respondent’s
consent.
C. Additional Submission
Complainant
tendered an Additional Submission responding to various points made by
Respondent, and confirming that subsequent to the filing of the Complaint,
Complainant filed a complaint in U.S. District Court challenging Respondent’s
use of its trademarks. The Panel has
considered the Additional Submission to the extent that it contains material
that could not reasonably have been included in the Complaint.
FINDINGS
Complainant has failed to prove that the
disputed domain names were registered in bad faith. In light of the facts that litigation is pending between the parties
and the aforementioned finding is sufficient to dispose of the matter before
the Panel, the Panel declines to enter findings on the remaining issues.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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.
The Panel declines to enter a finding on
this issue.
The Panel declines to enter a finding on
this issue.
The disputed domain names were registered
by or on behalf of a company that was an authorized supplier of parts and
services for Complainant. Furthermore,
Complainant itself has conceded that it subsequently gave implicit consent to
Respondent’s use of the domain names.
Under those circumstances, Complainant cannot reasonably contend that
the domain names were registered in bad faith.
See Jaccard Corp. v. GDC, No.
FA152463 (Nat. Arb. Forum June 19, 2003) (Sorkin, dissenting); MatchMaker International Development Corp.
v. Kaiser Development Corp., No. FA146933 (Nat. Arb. Forum May 9, 2003)
(Sorkin, dissenting).
Since the Policy requires a complainant
to prove both registration and use in
bad faith, Paragraph 4(a)(iii), the failure to prove bad faith registration is
dispositive of the matter before the Panel, and the Panel need not consider
whether Respondent’s subsequent conduct constitutes bad faith use.
DECISION
Having
determined that Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: April 8, 2004
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