Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. Alon Shemesh
Claim Number: FA0503000434145
PARTIES
Complainant
is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented
by Heather C. Brunelli of Thompson and Knight LLP,
1700 Pacific Avenue, Suite 3300, Dallas, TX 75201. Respondent is Alon Shemesh
(“Respondent”), Hagalil 87, Ganey Tikva 55900, Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hp.ro>,
registered with Romanian National
Institute for R&D in Informatics.
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.
Hon.
Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 3, 2005.
On
March 4, 2005, Romanian National Institute for R&D in Informatics confirmed
by e-mail to the National Arbitration Forum that the domain name <hp.ro> is registered with Romanian
National Institute for R&D in Informatics and that Respondent is the
current registrant of the name. Romanian
National Institute for R&D in Informatics has verified that Respondent is
bound by the Romanian National Institute for R&D in Informatics
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 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 24,
2005 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@hp.ro by e-mail.
A
late Response was received and determined to be complete on March 26, 2005.
On March 31, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Hon. Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Hewlett-Packard
is the owner of numerous proprietary marks in connection with computer
hardware, printers, peripherals, software, and other related goods and
services. Hewlett-Packard is the owner
of over forty trademarks and service marks registered on the Principal Register
of the United States Patent and Trademark Office for the HP trademark and for
marks containing "HP.” In
addition, Complainants also use the HP mark worldwide, and have registrations
for trademarks and services marks containing HP in over 140 countries and
regions around the world.
The
HP mark was first used by Hewlett-Packard in commerce at least as early as
1941, was continuously used thereafter, and is still in use on or in connection
with Complainants’ goods, services, and advertising for its goods and services
throughout the world. The HP mark has
been registered in Israel since at least as early as 1967 and remains
registered and in use in Israel. The HP
mark has been registered in Romania since at least as early as 2000 and remains
registered and in use in Romania.
The
HP mark has been found by panelists of the National Arbitration Forum to be a
famous and distinctive mark. See Hewlett-Packard
Co. v. Homepage Organisation, FA 94446 (Nat. Arb. Forum May 11, 2000)
(“These promotional efforts over the past sixty years have resulted in the HP
marks becoming famous and distinctive”); see also 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”); see also Hewlett-Packard Co. v. HPB2B.com, FA
96203 (Nat. Arb. Forum Dec. 30, 2000) (finding that promotional efforts have
resulted in the HP marks becoming famous and distinctive marks); see also Hewlett-Packard Co. v. Compu-D International
Inc., FA 99660 (Nat. Arb. Forum Oct. 5, 2001) (“Over the last sixty years
HP has become a famous and distinctive mark due to Complainant’s promotional
efforts.”); see also Hewlett-Packard
Co. v. Russx Casting Co., FA 99709 (Nat. Arb. Forum Oct. 22, 2001) (“Over
the last six decades Complainant has invested a substantial amount of money to
develop goodwill in the mark and cause consumers throughout the United States
and the world to recognize the mark as distinctly designating products
originating from Complainant.”); see also Hewlett-Packard Co. v. Skip Zwahlen, FA 99755 (Nat. Arb. Forum Oct
24, 2001) (finding that HP is recognized in the United States and throughout
the world as distinctly designating products originating with Complainant).
The
domain name <hp.ro> is confusingly similar to Complainants’ HP
mark, which was registered as a trademark throughout the world long before
Respondent registered the domain name.
In fact, Complainants’ HP mark was registered in Respondent’s country of
residence (Israel) since 1967 and had become well known for computers,
printers, and related goods and services through extensive use and advertising
throughout the world prior to Respondent’s registration of the <hp.ro>
domain name.
Respondent’s
domain name <hp.ro> is identical to Complainants’ famous HP
trademark with the mere addition of the country code top level domain
“.ro.” The addition of a top level
domain name to a famous trademark does not distinguish the domain name. Since the only difference between
Complainants’ famous HP trademark and the Respondent’s domain name is the
addition of the top level domain name, the <hp.ro> domain name is
identical to Complainants’ mark.
Respondent
has no rights or legitimate interests in the <hp.ro> domain
name. Respondent is not commonly known
by the domain name nor is Respondent actively using the domain name. Respondent has not established any rights or
legitimate interests in the domain name.
Respondent
registered and is using the <hp.ro> domain name in bad faith. Respondent is passively holding the <hp.ro>
domain name which does not resolve to an active website. Respondent must have been aware of
Complainant’s rights to the HP mark when registering the domain name. This is all evidence of bad faith
registration and use.
B.
Respondent
(Response was received after deadline for
response, but will be fully
Considered
by Panel).
First
of all, I would like to indicate the fact that I'm a student (computer
science), and therefore do not have the financial possibility to hire a lawyer
who will help me to protect what I believe is mine by law. I do not have also the time nor the money to
type and to print thousands of pages to explain my position. As the honorable
prosecutor should know some of us do have to pay the outrageous price for each
tuner. I'm aware of the fact that my
lack of financial ability will harm my chances to win, and therefore I want to
declare here and now that if it will be decided to take the domain from my
property, I'm keeping for my self the future right to sue back what is mine.
I
purchased the domain <hp.ro> in the year 1998. This domain was purchased with the intention
to offer a worldwide service that will give homepage with short address (sub
domain) to sites with long URL (e.g.
sites hosted in geocities). In case you
didn’t get it HP = Home Page. At the
time I didn't have the technical knowledge needed to build a site of this kind,
but I wanted to own a suitable domain for prospective use. I checked some different extensions, and
eventually chose ro, mainly due to the fact that it was a one life time payment
of $60, with no yearly fee. Up to date,
I'm offering a similar service in Israel, with the domain <pri.co.il>,
that offers a short address to Israeli sites. The service is free, and contrary
to competitive sites it has no popup
windows. As soon as I have the time to
translate the system to English, I'm going to offer a parallel worldwide
service with the domain <hp.ro>. The service is going to be money
free, ads free and open to all.
Hewlett-Packard
is trying to demand ownership of the two letters hp, and I cannot help but
wonder why. The prosecutor registered
under the name: Hewlett-Packard Development Company, L.P. The two letters hp are nothing more than the
acronyms of the first two words in the company's name. As you know, there are only 26 letters in
English. The number of potential combinations of two letters is 676. If we assume, for the sake of simplicity,
that the distribution is equal we will come to the conclusion that:
There
are 10,000,000 people that hp is the acronyms of their name. Are we going to
forbid them to sign with acronyms from now on? If we assume again for the simplicity of the calculation that
there are 70,000,000 companies/businesses with two words name, we will find
that for each combination of two letters there will be more than 100,000
commercial competitors.
Accepting
Hewlett-Packard's sue will create an absurd situation. Every private man with
two letters domain will be exposed to sues from 100,000 different firms.
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.
FINDINGS
Complainant asserts that it has established rights
in the HP mark through registration of the mark in countries around the world
including, the United States Patent and Trademark Office (Reg. No. 614,803 issued October 25,
1955. Moreover, Complainant states that
it has used the mark in commerce since at least 1941 in the United States, 1967
in Israel, and 2000 in Romania for a wide variety of products and
services. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.).
Complainant
avers that the <hp.ro> domain name registered by Respondent is
identical to Complainant’s HP mark because the domain name incorporates
Complainant’s mark in its entirety, deviating only with the addition of the
country code top-level domain “.ro.”
The Panel finds that the addition of a country code top-level domain is
irrelevant, because top-level domains are required and do not negate the
identical nature of the domain name. See Tropar
Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding
that since the addition of the country-code “.us” fails to add any
distinguishing characteristic to the domain name, the <tropar.us> domain
name is identical to Complainant’s TROPAR mark); see also 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).
Complainant
argues that Respondent is wholly appropriating Complainant’s mark and is not
using the <hp.ro> domain name in connection with an active
website. The Panel finds that the
passive holding of a domain name that is identical to Complainant’s mark is not
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the Complaint and had made no use of the domain name in
question); see also Melbourne IT
Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or
legitimate interests in the domain name where there is no proof that the
respondent made preparations to use the domain name or one like it in
connection with a bona fide offering of goods and services before notice of the
domain name dispute, the domain name did not resolve to a website, and the
respondent is not commonly known by the domain name); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the <solgarvitamins.com> domain name where the respondent merely
passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to establish
rights or legitimate interests for purposes of paragraph 4(a)(ii) of the
Policy”).
In
addition, Complainant contends that Respondent offered no evidence and nothing
in the record suggests that Respondent is commonly known by the <hp.ro>
domain name. Furthermore, Complainant
has not licensed Respondent to use the HP mark. Thus, Complainant states that Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name).
Finally,
Complainant argues that Respondent has offered the domain name for sale to
Complainant. The Panel concludes that since Respondent was willing to
sell the domain name for an amount in excess of out-of-pocket expenses to
Complainant, Respondent lacks rights or legitimate interests in the domain
name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA
95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests
do not exist when one has made no use of the websites that are located at the
domain names at issue, other than to sell the domain names for profit); see
also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA
95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate
interests where Respondent registered the domain name with the intention of
selling its rights).
The
Panel finds that the time frame within which Complainant initiated the present
proceedings is of no consequential value.
See E.W. Scripps Co. v. Sinologic Ind., D2003-0447 (WIPO July 1,
2003) (“[T]he Policy does not provide any defense of laches. This long accords with the basic objective
of the Policy of providing an expeditious and relatively inexpensive procedure
for the determination of disputes relating to egregious misuse of domain
names.); see also Square Peg Interactive Inc. v. Naim Interactive Inc.,
FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“. . . laches by itself is not a defense
to a Complaint brought under the Policy.
. . .”)
Complainant
alleges that Respondent registered and used the domain name in bad faith. The Panel determines that Respondent’s offer
to sell the <hp.ro> domain name registration to Complainant, the
owner of the HP mark, for an amount in excess of Respondent’s out-of-pocket
expenses is evidence of Respondent’s bad faith use and registration pursuant to
Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho,
FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent
demonstrated bad faith by registering the domain name with the intent to
transfer it to the complainant for $3,000, an amount in excess of its out of
pocket costs); see also Universal
City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000)
(finding bad faith where the respondent made no use of the domain names except
to offer them for sale to the complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to the complainant amounts to a use of the domain name in bad faith).
Although
Respondent registered the <hp.ro> domain name, Complainant argues
Respondent has not used the disputed domain name in connection with the
offering of any services or in conjunction with an active website. The Panel concludes that Respondent has
passively held the domain name, which evidences bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith”); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith).
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 <hp.ro>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Honorable Richard B. Wickersham, Judge
(Ret.), Panelist
Dated: April 20, 2005