National Arbitration Forum

 

DECISION

 

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Mazhar Ali

Claim Number: FA0410000353151

 

PARTIES

Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201, USA.  Respondent is Mazhar Ali (“Respondent”), represented by Ashish Christopher Sen, of Grand Computer LLC, Ground Floor, Al Sharafi Building, Ramada Signal, Bur Dubai, Dubai, UAE.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpdubai.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2004.

 

On October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hpdubai.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the 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 October 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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@hpdubai.com by e-mail.

 

A timely Response was received and determined to be complete on November 15, 2004.

 

A timely Additional Submission was received from Complainant on November 16, 2004.

 

An untimely Additional Submission from Respondent was received on November 29, 2004.  Although untimely, the Panelist will consider the Additional Submission, as it is his practice to consider all matters on the merits.

 

On November 29, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

1.            Complainant is the owner of over 40 trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for HP marks.  Complainant also uses the HP marks worldwide, and has registrations for trademarks and service marks containing HP in over 140 countries and regions around the world.  Complainant has held six registrations for the HP marks in the United Arab Emirates, the country where Respondent has been located since 1994.  The HP mark was first used by Complainant in commerce at least as early as 1941, was continuously used thereafter, and is still in use on or in connection with Complainant’s goods, services, and advertising for its goods and services throughout the world.

 

2.            The HP marks have been found by panelists of the National Arbitration Forum to be famous and distinctive marks.  See Hewlett-Packard Co. v. Kim Yong Hwan, FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (“Complainant’s mark ‘HP’ is famous and distinctive, and, thus, is entitled to the higher protection afforded it by law”).

 

3.            Complainant owns domain name registrations for names incorporating the HP marks, such as <hp.com>, <hp.net>, <hp.org>, and <hpshopping.com>.

 

4.            The disputed domain name <hpdubai.com> is confusingly similar to Complainant’s famous HP marks, which were registered as a trademark throughout the world long before Respondent registered the domain name on September 27, 1999.

 

5.            The <hpdubai.com> domain name contains Complainant’s famous HP marks along with the geographically descriptive term “dubai” and the generic top-level domain “.com.”  The mere addition of a geographically descriptive term and a generic top-level domain to a mark does nothing to avoid confusing similarity to that mark.

 

6.            Respondent has no rights or legitimate interest in the disputed domain name because Respondent is not commonly known by Complainant’s mark, nor has Respondent used the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Respondent is exploiting the fact that Hewlett-Packard’s customers and potential customers may assume that a website located at a domain name incorporating the HP marks is affiliated with or sponsored by Complainant.

 

7.            The disputed domain name is being used in connection with a website that advertises computers, computer peripherals, parts, accessories and other electronics.  Respondent was never given permission or authorization by Complainant to use the HP marks in his domain name.  Respondent has not used the domain name in connection with a bona fide offering of goods or services.  The site advertises the products of Complainant as well as the products of Complainant’s major competitors such as Epson, Dell, Sony, and Fujitsu.

 

8.            Respondent registered and is using the disputed domain name in bad faith. By using the <hpdubai.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HP marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

9.            Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s HP marks and is using the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv.).

 

10.            Respondent registered the disputed domain name with actual knowledge of Complainant’s rights, which is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).

 

 

B. Respondent

 

            1.            The <hpdubai.com> domain name has been used by Respondent’s website since registration in October 1999.

 

            2.            The “HP” in the disputed domain name is an abbreviation for “Hot Products & Hot Prices.”

 

            3.            Respondent has never claimed, nor given the impression, that Respondent is in anyway affiliated with the Hewlett-Packard Company.

 

            4.            Respondent owns a computer company and hence Respondent’s website will carry computer and computer-related products from many manufacturers.

 

            5.            Respondent has been advertising its website in the region’s leading newspaper Gulf News for the last four years.  Respondent has placed several full-page and smaller advertisements in the newspaper Gulf News, and large sums of money have been spent on the marketing of this site.

 

            6.            Respondent has promoted his website located at the <hpdubai.com> domain name for the last four years at GITEX, the region’s largest computer exhibition.

 

            7.            Complainant has taken no action against Respondent’s use of the disputed domain name for over four years.  Complainant is unjustly trying to claim the disputed domain name only after Respondent has made it popular in this region.

 

            8.            Respondent will place a disclaimer on its website, and, if requested, will remove all of Complainant’s products from the website.

 

C. Complainant’s Additional Submission

 

            1.            In his Response, Respondent contends that the “HP” in the  <hpdubai.com> domain name stands for ‘Hot Products & Hot Prices.”  This contention is without merit.  Respondent clearly registered and uses the <hpdubai.com> domain name with full knowledge of Complainant’s HP marks and with the intent to attract Internet users seeking Complainant to Respondent’s own website.

 

            2.            Respondent did not use the terms “Hot Products” or “Hot Prices” on Respondent’s website prior to the filing of this Complaint.

 

            3.            The Internet Archive at <web.archive.org> demonstrates that Respondent has hosted a website at the <hpdubai.com> domain name since February 29, 2000.  The archived web page from February 29, 2000, illustrates that the “HP” in the <hpdubai.com> domain name was clearly meant to refer to Hewlett-Packard, as the title to the page reads, “Welcome to Hewlett Packard Dubai” and the products advertised on the page appear to be Complainant’s HP branded products.

 

            4.            Even if Respondent used “Hot Products Hot Prices” on previous versions of his website, this does not change the fact that Respondent used HP in his domain name with full knowledge that the HP portion of the domain name was the registered trademark of another party and with the intent of attracting customers to his website based upon the fame of the HP mark.

 

            5.            Respondent asserts that Complainant waited for four years before bringing this proceeding and filed a Complaint only after Respondent popularized the disputed domain name in Respondent’s region.  Complainant did not delay in filing this Complaint.  Complainant first discovered Respondent’s registration and use of the disputed domain name when associates of Complainant in Dubai saw an advertisement and brought it to Complainant’s attention on or about October 16, 2004.  This Complaint was brought on October 27, 2004.  This is a “delay” of less than two weeks.  Complainant did not sit on its rights and wait for Respondent to build up goodwill in the domain name.

 

D.  Respondent’s Additional Submission

 

            1.            Respondent is one of the oldest computer companies in the UAE.

 

            2.            About four years ago, Respondent decided to market its products online.  Respondent wanted to sell the different brands that it carries under different domain names so as to be very specific and clear to customers.

 

            3.            Accordingly, Respondent registered <microsoftdubai.com>, <compaqdubai.com> and <hpdubai.com>.  Respondent then proceeded to upload each manufacturer’s products on the respective domain name. 

 

            4.            Sometime later it was brought to Respondent’s notice that it was not allowed to do that so Respondent relinquished rights in the <microsoftdubai.com> and <compaqdubai.com>.

 

            5.            Respondent, however, retained <hpdubai.com> and put up its byline on the website.  Respondent’s logo on the site has no resemblance to the Hewlett-Packard logo.  Even the color schemes are different.  Respondent’s contact information clearly states one of Respondent’s companies’ names as well as location.

 

            6.            It was in October 2004 that Respondent decided to market Hewlett-Packard products on the site.

 

            7.            Respondent has no intention of misleading anyone and is willing to drop all Hewlett-Packard products from the site if directed.

 

FINDINGS AND DETERMINATIONS

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.

 

Identical and/or Confusingly Similar

 

It is found and determined that the <hpdubai.com> domain name is confusingly similar to Complainant’s marks.

 

Complainant is the owner of over 40 trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for the HP marks.  Complainant also uses the HP marks worldwide, and has registrations for trademarks and service marks containing HP in over 140 countries around the world.  Complainant has held six registrations for the HP marks in the United Arab Emirates, the country where Respondent has been located since 1994.

 

Complainant also owns domain name registrations for domain names incorporating the HP marks, such as <hp.com>, <hp.org>, and <hpshopping.com>.

 

Complainant’s HP marks have become famous and distinctive.  See Hewlett-Packard Co. v. Yong , FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (“Complainant’s mark ‘HP’ is famous and distinctive, and, thus, is entitled to the higher protection afforded it by law”).

 

It is evident that the <hpdubai.com> domain name is confusingly similar to Complainant’s HP marks because the only difference is the addition of the geographic term “dubai,” which does not significantly distinguish the domain name from the mark.  See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisginindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

 

The award in Hewlett-Packard Company v. Collazo, FA 114628 (Nat. Arb. Forum Mar. 5, 2003) involving the <hpcanada.com> domain name is directly on point.  The Panel held:

 

“The domain name <hpcanada.com> registered by Collazo is confusingly similar to Complainant’s famous HP mark, which was registered as a trademark throughout the world long before Collazo registered the domain name on November 3, 2002.  The Respondent’s domain name contains Complainant’s exact mark, ‘HP,’ with a non-distinctive geographically descriptive term, ‘Canada,’ and the most common URL suffix ‘.com.’  The mere addition of descriptive or generic words to a famous mark, however, does not eliminate the similarity between the domain name and the trademark.  Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001).”

 

Complainant has established the required first prong of the Policy.

 

Rights or Legitimate Interests

 

It is found and determined that Respondent has no rights or a legal interest in the disputed domain name.

 

It is apparent that Respondent has utilized the disputed domain name and the marks on which it is predicated to sell Complainant’s goods and the goods of Complainant’s competitors.  Complainant has not licensed Respondent to sell its products.  Accordingly, it is found that Respondent’s appropriation of Complainant’s marks to sell Complainant’s and Complainant’s competitors’ goods is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Computerized Sec. Sys., Inc. v.Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services).

 

Further, it is found that Respondent is not commonly known by the <hpdubai.com> domain name, even though Respondent identifies itself as “hpdubai.com” on its website.  See Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).

 

Complainant has established the second prong of the Policy.

 

Registration and Use in Bad Faith

 

It is found and determined that Respondent registered and used the disputed domain name in bad faith. Although the issue was not raised by the parties, the Panelist is concerned because of the use of archival printouts by Complainant to prove bad faith registration and use by Respondent.

 

The Panelist has concluded that such archival materials are admissible.  This is because of the broad discretion given to Panelists in Policy ¶ 10(d) which states that the Panel “shall determine the admissibility, relevance, materiality and weight of the evidence.”[1]

 

The website archival information establishes that Respondent had actual notice of Complainant’s rights in the HP mark.  Thus, the evidence establishes bad faith registration and use of the <hpdubai.com> domain name by Respondent pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (:Where an alleged infringer chooses a mark he knows to be similar to another, one can infer intent to confuse.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002 (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

 

Respondent’s contention in its defense that the disputed domain name now stands for “Hot Products” or “Hot Prices” on the website does not help Respondent.  This is because Respondent used HP in the disputed domain name with full knowledge that the HP portion of the domain name was the registered trademark of another party and with the intent of attracting customers to Respondent’s website based upon the fame of the HP mark.

 

Moreover, Respondent did so to benefit from the goodwill associated with Complainant’s HP marks and using the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of the domain name at issue to resolve a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Computerized Sec. Sys., Inc. v. Hu,. FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

 

Furthermore, it is found and determined that Complainant did not delay in filing a dispute resolution claim because Complainant’s obligations began at the time that it becomes aware of the existence of a confusingly similar domain name.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“Complainant did not delay unreasonably after first becoming aware. . . of Respondent’s registration of the disputed domain name.”).

 

Finally, it is found that Respondent’s offer of a disclaimer and Respondent’s offer not to sell Complainant’s products will not provide relief to Respondent because of the initial attraction of the user.  See Nestle Waters North America Inc. v. JAT a/k/a Jer Ter, (Nat. Arb. Forum Jan. 28, 2004) (finding that Respondent’s use of a disclaimer does not absolve Respondent’s bad faith registration and use of the disputed domain name because of the initial interest attraction of the consumer).

 

Complainant has established the required third prong of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hpdubai.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  December 13, 2004