Compaq Information Technologies Group,
L.P. v. Waterlooplein Ltd.
Claim Number: FA0204000109718
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 Waterlooplein Ltd., Warwickshi, UNITED KINGDOM (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <compaq-broker.com>,
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 16, 2002; the Forum received a hard copy of the
Complaint on April 17, 2002.
On
April 18, 2002, BulkRegister confirmed by e-mail to the Forum that the domain
name <compaq-broker.com> 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
April 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 8, 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@compaq-broker.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
May 21, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Judge Harold Kalina (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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Respondent’s
disputed domain name <compaq-broker.com>
is confusingly similar to COMPAQ, a registered mark in which Complainant holds
rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name
in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Since being founded in 1982, Complaint
has blossomed into a global leader in the development and manufacturing of
computer hardware and software.
Complainant sells computer-related products to customers in business,
government, education, and home market sectors. Complainant advanced itself as the world leader in personal
computer sales in 1994 by revolutionizing computer prices.
Complainant has applied the COMPAQ mark,
which is fanciful in nature, to a variety of computer-related goods and
services; thus, the COMPAQ mark has become well-known around the world. Complainant has continuously used COMPAQ as
a trade name, trademark, and service mark from 1982 to the present. On October 4, 1982, Complainant registered
the COMPAQ mark with the United States Patent and Trademark Office as Reg. No.
1,467,066. Complainant also owns
multiple trademark registrations in the United Kingdom, where Respondent is
located, for its computer-related products.
In addition, Complainant owns a family of
COMPAQ marks. The family of COMPAQ
marks includes registrations for:
COMPAQ CAPITAL, COMPAQ PC CARD SOLUTION and Design, COMPAQ CARE and
Design, COMPAQ AUTHORIZED DEALER and Design, and COMPAQ INSIGHT MANAGER and
Design. Complainant also has registered
the domain name <compaq.com> and operates a website at that address.
Respondent registered the disputed domain
name on August 23, 2001, and uses it to operate a website that advertises the
sale of Complainant’s goods at “brokerage rates.” Respondent, however, has never been authorized by Complainant to
resell its goods.
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 established its rights in
the COMPAQ mark through registration with the U.S. Patent and Trademark Office
and continuous subsequent use.
This disputed domain name is confusingly
similar to Complainant’s COMPAQ mark, as it incorporates the mark in its
entirety and merely adds the generic word “broker.” The addition of a generic word to a famous trademark in a domain
name does not defeat a confusing similarity claim. 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 the Complainant combined with a generic
word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Moreover, the term “broker” has a
connection to Complainant’s business.
Complainant is in the business of selling computers and computer products
worldwide. As a means of facilitating
distribution Complainant authorizes certain entities to sell its products. Respondent has not been authorized to sell
Complainant’s products. Respondent,
however, conducts business selling Complainant’s products using the term
“broker” in conjunction with Complainant’s COMPAQ mark. The use of a related business term connected
to Complainant’s mark creates confusing similarity pursuant to Policy ¶
4(a)(i). See Space
Imaging LLC v. Brownwell, 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 Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com>
is confusingly similar to Complainant’s MARRIOTT mark).
The Panel finds that Policy 4 ¶ (a)(i)
has been satisfied.
Rights or Legitimate Interests
Respondent’s
unauthorized use of the COMPAQ mark in connection with reselling Complainant’s
goods infringes on Complainant’s rights in the mark. By using the COMPAQ mark in an infringing manner, Respondent does
not use the mark in connection with a bona fide offering of goods or services
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 other goods is not bona fide use); 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).
There
is no evidence, pursuant to Policy ¶ 4(c)(ii), that Respondent is commonly
known by “Compaq-Broker,” “Compaq Broker,” or <compaq-broker.com>; Respondent is only known to this Panel
as Waterlooplein Ltd. Respondent,
therefore, does not have any rights in the disputed domain name. See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark). Although Respondent apparently uses “Compaq
Broker” as a trade name, such an unauthorized use does not establish legitimate
interests in the domain name. See Compaq
Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum
March 13, 2002)(“due to the distinct nature of Complainant’s COMPAQ mark it is
not possible for [the Respondent] to be commonly known as
<compaqspares.com>”); see also
Compaq Info. Techs. Group, L.P. v. Nye, FA 104677 (Nat. Arb. Forum March
22, 2002)(“because Complainant’s COMPAQ mark is so famous, [the Respondent] is
presumed not to be commonly known by the mark or a domain name confusingly
similar to that mark,”); see also Nokia Corp. v. Private, D2000-1271 (WIPO
Nov. 3, 2000) (finding that Respondent is not commonly known by the mark
contained in the domain name where Complainant has not permitted Respondent to
use the NOKIA mark and no other facts or elements can justify prior rights or a
legitimate connection to the names “Nokia” and/or “wwwNokia”).
Respondent’s
explicit use of the COMPAQ mark in the disputed domain name evidences intent to
misleadingly divert consumers for Respondent’s commercial gain and demonstrates
no rights pursuant to Policy 4(c)(iii).
This is due to the fact that Respondent’s use of the disputed domain
name suggests a connection with Complainant’s business. See Caterpillar Inc. v. Quin,
D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a
legitimate interest in using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR); see also 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).
The
Panel finds that Respondent has no rights or legitimate interest in respect of
the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
registration of the disputed domain name disrupts Complainant’s business
because it confuses consumers familiar with the COMPAQ mark who are looking to
purchase Complainant’s goods. This is a
bad faith registration pursuant to Policy ¶ 4(b)(iii). See
EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the Complainant's marks suggests that Respondent
registered the names primarily for the purpose of disrupting Complainant's
business); see also Volkswagen of Am., Inc. v. Site Design
Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM
from Respondent automobile dealership specializing in Volkswagens to
Complainant); see also Nokia Corp. v. Uday Lakhani, D2000-0833
(WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular
phone dealer to Complainant).
Furthermore, given the fame and notoriety
of the COMPAQ mark, Respondent’s very registration and use of the disputed
domain name constitute bad faith because they reflect an attempt to trade on
the goodwill of the COMPAQ mark for its own benefit without authorization from
Complainant. See Compaq Info. Techs.
Group, L.P. v. Shopcompaq.com, FA 99672 (Nat. Arb. Forum Oct. 17, 2001)
(“Given the uniqueness of Complainant’s mark COMPAQ, there is no plausible
explanation for Respondent’s registration of the domain name
<shopcompaq.com> other than to trade on the goodwill of the COMPAQ
name.”); see also Entrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
(finding that "[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse").
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
should be hereby granted.
Accordingly, it is Ordered that the <compaq-broker.com> domain name
be transferred from Respondent to
Complainant.
Judge Harold Kalina (Ret.), Panelist
May 29, 2002
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