National Arbitration Forum

 

DECISION

 

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. HP Computer Services

Claim Number: FA0412000373890

 

PARTIES

Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “Complainants”), represented by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.  Respondent is HP Computer Services (“Respondent”), 15958 Woodward Ave., Highland Park, MI 48203.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpcomputerservices.com>, registered with 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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2004.

 

On December 3, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hpcomputerservices.com> is registered with Network Solutions, Inc. and that 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 December 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 27, 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@hpcomputerservices.com by e-mail.

 

A timely Response was received and determined to be complete on December 23, 2004.

 

On December 29, 2004, Complainant submitted an “Additional Submission” under Supplemental Rule 7.  While technically untimely in that it was filed beyond the applicable response period, the Panel determines, in view of the particular circumstances involved[1], that the arguments set forth in Complainant’s “Additional Submission” may be considered.

 

On January 6, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant Hewlett-Packard owns over 40 U.S. - registered trademarks and service marks for the HP mark and for marks containing the term “HP,” as used on or in connection with computer hardware, peripherals, software, and related goods and services. See Complaint, Exhibit B.  Complainants also own registrations in over 140 countries for HP-related marks (see Complaint, Exhibit D), as well as various domain name registrations that incorporate “HP”, such as <hp.com>, <hp.net>, <hp.org>, and <hpshopping.com>.  See Complaint, Exhibit F.   Complainant provides information about its products and services and offers them for sale at its web sites.

 

Complainants allege that the domain name in dispute, <hpcomputerservices.com> is confusingly similar to the HP mark, which has been used for 60 years and was registered throughout the world long before the registration of the disputed domain name.

 

Complainants further assert that Respondent has no rights or legitimate interests in the <hpcomputerservices.com> domain name.  Complainants note that such domain name is used in connection with a web site that advertises Respondent’s computer-related services for the Metro Detroit area.  See Complaint, Exhibit I.  These services include on-site support, consulting, data transfers, networks, web design, printer repair, notebook repair, and installations.  Respondent also appears to use the web site to advertise such items as notebook computers and PDAs for sale at Best Buy and provides links to the Best Buy web site.

 

Complainants point out that Respondent entered into a business development partner agreement with Complainants on April 5, 2004, pursuant to which Respondent agreed not to use the HP mark in a domain name. Upon learning of Respondent’s registration for the <hpcomputerservices.com> domain name, Complainants contacted Respondent regarding the violation of the agreement.  When Respondent failed to rectify the situation, Complainants terminated the agreement.

 

Finally, Complainants contend that Respondent registered and is using the disputed domain name in bad faith.  They argue that, given the fame of the HP mark, it is not reasonable to believe that Respondent, who is in the computer business, did not know of Complainants’ rights in the HP mark prior to registration of <hpcomputerservices.com>.  In addition, Complainants assert, Respondent, as a former business partner of Complainants, clearly had actual knowledge of Complainants’ rights in the HP mark.

 

According to Complainants, by using the <hpcomputerservices.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s web site by creating a likelihood of confusion with Complainants’ HP mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.

 

B. Respondent

Respondent contends that the domain name <hpcomputerservices.com> is not identical or confusingly similar to <hp.com>, <hp.net>, <hpinvent>, <hpcomputer.com>, or <hpcomputers.com>.  It contends that if a user types in “HP” as a search term, the search returns hundreds of hits in which the disputed domain name does not appear.  Moreover, Respondent argues, even if a Hewlett-Packard customer did stumble upon Respondent’s web site, it would soon be apparent to that person “that they would be on the wrong track.”  Respondent points out that it is clearly stated on its site that it specializes in computer services such as upgrades and repairs, network installation, and internet hosting, as opposed to the sale of new laptop/desktop computers.

 

With respect to the issues of “rights or legitimate interests” and “bad faith” registration and use, Respondent notes that it is located in Highland Park, Michigan and that the designation HP, as used by Respondent, stands for “Highland Park.”  Respondent further notes that since it has been in business, not one customer that was directed to it via the internet has mistaken the company for Complainant.

 

C. Additional Submission

In their “Additional Submission,” Complainants contend that the services offered at Respondent’s web site overlap with the services offered by Complainants under the HP mark.  Complainants also reiterate their earlier contention that Respondent was clearly aware of the HP mark prior to its registration of the disputed domain name and “find it very difficult to believe that Respondent did not intend to trade upon the HP mark when selecting the name HP Computer Services and the domain name <hpcomputerservices.com>.”  As for Respondent’s contention that its use of “hp” stands for Highland Park, the site of its store, Complainants indicate that Respondent “could have just as easily named his company Highland Park Computer Services.”

 

FINDINGS

Upon review of the entire record, the Panel concludes that: (1) the domain name in issue is confusingly similar to a mark in which Complainants have rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in “bad faith.”

 

DISCUSSION

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 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;

(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.

 

Identical and/or Confusingly Similar

 

There is no question that Complainants, through their long use and registrations of the HP mark, have rights in the mark.  The Panel further concludes that the domain name <hpcomputerservices.com> is confusingly similar to the HP mark. The mere addition of the descriptive terms “computer” and “services,” as well as of the top-level domain “.com,” does not eliminate the confusing similarity between the HP mark and the disputed domain name.” See Sony Kabushki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “neither 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…”).

 

Rights or Legitimate Interests

 

The Panel finds no evidence to support a determination that any of the circumstances set forth in paragraph 4(c) of the Policy is applicable.  Respondent’s contention that its use of “hp” merely refers to the location of its store in Highland Park, Michigan has some surface appeal.  The Panel concludes, however, that, given the nature of the services offered by Respondent, the longstanding use by Complainants of the HP mark, and the renown of such mark, Respondent’s adoption of the disputed domain name was motivated primarily as an effort to trade upon the goodwill built up by Complainants over the many years of use of the HP mark.

 

Registration and Use in Bad Faith

 

The Panel finds that the evidence supports a determination that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products and services offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy.  As found above, the HP mark and the disputed domain are confusingly similar.  Moreover, the goods and/or services offered by Respondent at its site are related, if not identical, to those offered by Complainants under the HP mark.  These findings support the existence of a likelihood of confusion.  The absence of any evidence of actual confusion does not compel a contrary determination. See E. & J. Gallo Winery v. Consorzio del Gallo Nero, 782 F. Supp. 457 (N.D. Cal. 1991) (“While evidence of actual consumer confusion provides strong support for a finding of a likelihood of confusion, `the failure to provide instances of actual confusion is not dispositive’ of an infringement claim.  Thus evidence of actual confusion `is merely one factor to be considered … and is not determinative’ if it is not shown.”).  Moreover, even if one accepts the contention that no one entering Respondent’s store has mistaken Respondent for Complainant, such fact would not preclude a finding of likelihood of confusion.  The concept of likelihood of confusion, as noted in the applicable policy, embraces concepts of sponsorship and affiliation, as well as source.

 

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 <hpcomputerservices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels, Panelist
Dated: January 20, 2005

 

 

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