DECISION

 

Compaq Information Technologies Group, L.P. v. Thomas Nye

Claim Number: FA0202000104677

 

PARTIES

Complainant is Compaq Information Technologies Group, L.P., Houston, TX (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.  Respondent is Thomas Nye, Conroe, TX (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <comqaq.com>, registered with Go Daddy Software, 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 15, 2002; the Forum received a hard copy of the Complaint on February 15, 2002.

 

On February 15, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <comqaq.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 11, 2002 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@comqaq.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 March 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) 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

Respondent’s <comqaq.com> domain name is confusingly similar to Complainant’s COMPAQ mark.

 

Respondent does not have rights or legtimate interests in the disputed domain name.

 

Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

Complainant has continuously used COMPAQ as a trade name and service mark since 1982.  Complainant additionally owns registrations for the COMPAQ mark in 100 countries, including the United States Federal Reg. No. 1,467,066, registered on December 1, 1987).  Complainant also holds numerous federal registrations for similar marks incorporating the word COMPAQ.

 

Complainant is a global leader in the development and manufacturing of computer hardware, software, and the provision of computing and business solutions.  Complainant’s products are currently sold in over 200 countries.  Complainant shipped its one millionth personal computer in 1987 and became the largest global supplier of personal computers in 1994.  Complainant ranked 27^th on the Fortune 500 list for 2001 and recorded over $22 billion in sales in 2001.  Complainant’s COMPAQ mark is valued at $14.6 billion, and due to its global client base, advertising, and marketing, it is one of the most famous brand names in the world.

 

Complainant also owns the domain name <compaq.com>, which it registered on April 20, 1995, and has used as a website promoting its COMPAQ branded products and services.

 

Respondent registered the disputed domain name on August 23, 2001.  Respondent used the domain to advertise COMPAQ products as well as those of Complainant’s competitors-Sony and Palm.  It appeared from the website that Internet users could purchase the goods of Complainant and its competitor, but when users attempted to do so an error message appeared.  Respondent’s website also advertised its own web design services as well as prominently displaying an offer to sell the domain name, “This domain is for sale!”  Respondent subsequently changed its website to advertise search engine placement services. Respondent has also continuously used the trade name “Compaq Superstore” on its website, without license from Complainant.

 

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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 has legal rights to the COMPAQ mark due to its many federal registrations of the mark. 

 

Respondent’s <comqaq.com> domain name is confusingly similar to Complainant‘s COMPAQ mark because Respondent merely alter one letter of Complainant’s famous mark and adds the top-level domain name “.com.”  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that by misspelling words and adding letters to words a Respondent does not create a distinct mark but nevertheless renders confusingly similar to the Complainant’s mark).

 

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

 

Rights or Legitimate Interests

Respondent’s use of the disputed domain name to “sell” Complainant’s goods without its authority as well as the goods of Complainant’s competitors is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i).  See Nat’l Collegiate Athletic Ass’n. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not a bona fide use); see also Chip Merchant, 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, known as Thomas Nye, is not commonly known as COMPAQ or  <comqaq.com>, and therfore, does not have rights or legititimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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).  Moreover, because Complainant’s COMPAQ mark is so famous, Respondent is presumed not to be commonly known by the mark or a domain name confusingly similar to that mark.  See Victoria’s Secret  v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

 

Respondent’s misspelling of Complainant ‘s famous mark does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

 

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

 

Registration and Use in Bad Faith

Respondent had actual knowledge of the COMPAQ mark when it registered the disputed domain name because Respondent initially used it to advertise Complainant’s COMPAQ products. This activity indicates Respondent’s bad faith registration and use.  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).

 

Respondent’s general offer to sell the disputed domain name at its website is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale).

 

Respondent’s use of Complainant’s mark to attract Internet users to a website advertising its own web design services indicates bad faith use pursuant to Policy ¶ 4(b)(iv).  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent); 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 website for commercial gain).

 

Respondent’s use of the confusingly similar domain name to advertise the products of Complainant’s competitors is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competed with Complainant’s business).

 

           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 <comqaq.com> be transferred from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: March 22, 2002

 

 

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