DECISION

 

Hewlett-Packard Company v. Inversiones HP Milenium C.A.

Claim Number: FA0203000105775

 

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Eliane Setton, of Gray, Cary, Ware & Freidenrich LLP.  Respondent is Inversiones HP Milenium C.A., Caracas, VENEZUELA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpmilenium.com>, registered with Verisign - Network Solutions, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 8, 2002; the Forum received a hard copy of the Complaint on March 11, 2002.

 

On March 13, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <hpmilenium.com> is registered with Verisign - Network Solutions, Inc. and that Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, 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 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 2, 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@hpmilenium.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 April 5, 2002, 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 Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The  <hpmilenium.com> domain name is confusingly similar to Complainant's HP mark.

 

Respondent has no rights or legitimate interests in the disputed domain name.

 

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

 

B. Respondent

Respondent failed to submit a Response.

 

FINDINGS

Complainant has used its HP mark since 1946.  Among other uses, Complainant uses the mark in relation to desktops and workstations such as business and home personal computers, business and personal computer accessories, monitors, notebook personal computers, printing and digital imaging products such as printers, fax and copiers.  Complainant owns numerous trademark registrations for the mark including United States Patent and Trademark Office Reg. Nos. 2,015,875 and 2,017,918.

 

Respondent registered the disputed domain name on December 11, 1999.  Respondent used the disputed name in order to sell what appeared to be Complainant’s products.  Complainant’s investigation revealed that the products sold on Respondent’s website were counterfeit HP products.  Complainant reported the activity to the Venezuelan government and proceeded to dismantle an international network manufacturing counterfeit HP products.  Respondent and its principal officers have fled to the United States to avoid prosecution from the Venezuelan authorities. 

 

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, through registration and continuous use, has established that it has rights in its HP mark.  Furthermore, Respondent’s <hpmilenium.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entirety of Complainant’s mark and merely appended the generic and misspelled term “milenium” (millennium) in the domain name.  The addition of a generic word to a well-known mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with Complainant; Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website). 

 

Furthermore the addition of a generic top-level domain name to another’s mark does not create a distinct domain name capable of overcoming a claim of confusing similarity, because the top-level domain name is irrelevant.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com’”).

 

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

 

Rights or Legitimate Interests

Respondent’s use of a confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).

 

Furthermore, based on the fame of Complainant's HP mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name.  Any use by Respondent of the <hpmilenium.com> domain name, confusingly similar to Complainant's famous mark, was an opportunistic attempt to attract customers via Complainant's famous mark.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

 

Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii).  See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

 

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

 

Registration and Use in Bad Faith

Respondent registered the disputed domain name in order to sell counterfeit versions of Complainant’s products.  Therefore, Respondent registered <hpmilenium.com> in order create a likelihood of confusion as to the source, sponsorship, and affiliation of its domain name and products.  This type of behavior is in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website located at <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

 

Based on the fame of Complainant’s HP mark, and the fact that Respondent was using the domain name to sell counterfeit versions of Complainant’s products, it can be inferred that Respondent had actual notice of Complainant’s mark when it registered the disputed domain name.  The registration of an infringing domain name despite actual notice is evidence of bad faith.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

 

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

 

John J. Upchurch, Panelist

Dated: April 12, 2002