Hewlett-Packard
Company v. Raveclub Berlin a/k/a Raveclub
Claim
Number: FA0302000146572
Complainant is
Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented
by Molly Buck Richard, of Thompson & Knight LLP. Respondent
is Raveclub Berlin a/k/a Raveclub, Cherry Hill, NJ
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain names at issue are <officejetsuport.com>,
<oficejetsupport.com> and <hewletpackardprinters.com>
registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 21, 2003; the Forum received a hard copy of the
Complaint on February 24, 2003.
On
February 24, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed
by e-mail to the Forum that the domain names <officejetsuport.com>,
<oficejetsupport.com> and <hewletpackardprinters.com>
are registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that
Respondent is the current registrant of the names. Computer Services Langenbach
Gmbh d/b/a Joker.Com has verified that Respondent is bound by the Computer
Services Langenbach Gmbh d/b/a Joker.Com 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 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2003 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@officejetsuport.com,
postmaster@oficejetsupport.com and postmaster@hewletpackardprinters.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 24, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <officejetsuport.com>
and <oficejetsupport.com> domain names are confusingly similar to
Complainant’s OFFICEJET mark. Respondent’s <hewletpackardprinters.com>
domain name is confusingly similar to Complainant’s HEWLETT PACKARD mark.
2. Respondent does not have any rights or
legitimate interests in the <officejetsuport.com>,
<oficejetsupport.com> and <hewletpackardprinters.com>
domain names.
3. Respondent registered and used the <officejetsuport.com>,
<oficejetsupport.com> and <hewletpackardprinters.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the HEWLETT PACKARD mark, including Reg. No. 1,861,560
(registered on November 8, 1994) related to computers and computer accessories
such as printers and printer accessories. Complainant maintains its main
website at the <hewlettpackard.com> domain name, which Complainant
registered on October 17, 1996.
Complainant
holds a trademark registration with the USPTO for the OFFICEJET mark (Reg. No.
1,968,861 registered on April 16, 1996) in relation to peripheral devices for
use with computers and data processing equipment, namely printers; facsimile
machines; copy machines; and multiple-function machines for the purpose of
printing, copying, sending and receiving facsimile messages; parts therefor;
and user manuals supplied therewith. Complainant registered the domain name
<officejetsupport.com> on January 19, 1999, which resolves to the support
section of Complainant’s website.
Respondent
registered the <officejetsuport.com>, <oficejetsupport.com>
and <hewletpackardprinters.com> domain names on September 8,
2001. Respondent is using the disputed domain names to redirect Internet
traffic to pornographic websites.
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 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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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.
Complainant has
established that it has rights in both the HEWLETT PACKARD and OFFICEJET marks
through registration with the USPTO.
Respondent’s
domain names are confusingly similar to Complainant’s registered trademarks
because the disputed domain names incorporate Complainant’s marks and simply
include common misspellings and generic terms added to Complainant’s marks.
Neither common misspellings nor the addition of generic terms sufficiently
differentiate Respondent’s domain names from Complainant’s marks for Respondent
to survive a confusing similarity challenge pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to the Complainant’s STATE FARM
mark); 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).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not favored this Panel with a Response in this proceeding. Therefore, the Panel
accepts all reasonable inferences and allegations in the Complaint as true. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Moreover,
because of Respondent’s failure to respond to the Complaint, the Panel presumes
that Respondent lacks any rights or legitimate interests with respect to the
disputed domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Respondent is
using the disputed domain names to redirect Internet traffic to a portal to
pornographic websites. The use of a domain name confusingly similar to a
registered trademark to redirect Internet users to a pornographic website is
not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the
Respondent had 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); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Furthermore,
Respondent has provided this Panel with no circumstances and there is no
evidence in the record to establish that Respondent is commonly known by
OFFICEJET SUPORT, <officejetsuport.com>, OFICEJET SUPPORT, <oficejetsupport.com>,
HEWLET PACKARD PRINTERS or <hewletpackardprinters.com>. Thus,
Respondent has failed to establish its rights or legitimate interests pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that Respondent has no rights or legitimate interests in domain
names because it is not commonly known by Complainant’s marks and Respondent
has not used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent is using
the disputed domain names to redirect Internet traffic to a portal to
pornographic websites. Panels have consistently held that the use of a domain
name confusingly similar to a registered trademark to redirect Internet users
to a pornographic website is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that
“this association with a pornographic web site can itself constitute bad
faith”); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of
another's well-known mark to provide a link to a pornographic site is evidence
of bad faith registration and use).
Moreover,
Respondent’s registration of the disputed domain names establishes a pattern of
“typosquatting,” which is also evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001)
(finding that Respondent acted in bad faith by establishing a pattern of
registering misspellings of famous trademarks and names); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it
would be difficult for Respondent to prove to the Panel that it did not have
actual knowledge of Complainant’s distinctive MEDLINE mark when it registered
the infringing <wwwmedline.com> domain name”).
Respondent has a long history of registering domain names confusingly similar
to others’ registered trademarks, including a history with this particular
Complainant. Respondent’s registration of
the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com>
domain names establishes a pattern of preventing Complainant from reflecting
its mark in a corresponding domain name, which is evidence of bad faith
pursuant to Policy 4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17,
2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering
multiple domain names that infringe upon others’ famous and registered
trademarks); see also Australian
Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶
4(b)(ii) where Respondent registered multiple infringing domain names containing
the trademarks or service marks of other widely known Australian businesses).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <officejetsuport.com>,
<oficejetsupport.com> and <hewletpackardprinters.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 27, 2003
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