P. O. Box 50191
Minneapolis, Minnesota 55405 USA

 

Hewlett-Packard Company

Palo Alto, CA 94304

COMPLAINANT

vs.

Jeff Burgar d/b/a/ Hewlett Club

Las Vegas, NV 89119,

RESPONDENT

 

FORUM FILE: FA 0002000093564

This is a domain name dispute between the parties and will be decided on the record provided by counsel for the parties. A three arbitrator panel was appointed, namely Judge Daniel B. Banks, Jr., as the Chair, along with Michael Froomkin and Judge Harold Kalina as panelists.

The undersigned certify that they have acted independently and have no known conflict of interests to serve as the arbitrators in this proceeding. Having been duly selected, and being impartial, the undersigned make the following findings and conclusions.

DOMAIN NAME AT ISSUE

The Domain Name at issue is HEWLETTPACKARD.COM, which is registered with Network Solutions, Inc. (NSI)

SUMMARY OF EVIDENCE, ISSUES AND FINDINGS

Hewlett-Packard is a company that owns seventeen U.S. registrations for HEWLETT PACKARD. It uses the mark HEWLETT PACKARD in connection with computer software, computer hardware, computer printers and cartridges, printed materials, Internet services, business services, computer peripherals, and various other computer related services. Hewlett-Packard has used the mark HEWLETT PACKARD since January 1, 1946.

The respondent Jeff Burgar d/b/a Hewlett Club registered the domain name "hewlettpackard.com" on October 17, 1996. Respondent is not a licensed Hewlett-Packard re-seller. He claims to be affiliated with the Pegasus Bookstore located in High Prarie, Alberta, Canada that is a licensed re-seller of Complainant’s products.

Respondent raises several issues in his response. The first issue concerns jurisdiction to arbitrate. Respondent claims that in order for arbitral jurisdiction to attach, there must be an explicit agreement to arbitrate.

With regard to this issue, the arbitration panel found that the respondent renewed the domain name registration on October 16, 1999. At that time, "Version 4.0" of the NSI Registration Agreement contained the following language:

DISPUTE POLICY

C)Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the registrant shall be bound by NSI current Dispute Policy.

NSI’s policy for resolution of all Domain Disputes must proceed by arbitration pursuant to The Internet Corporation for Assigned Names and Numbers Rules for Uniformed Domain Name Dispute Resolution Policy. (ICANN UDRP) Approved on October 24, 1999. Respondent has never requested NSI to delete him as Registrant of the Domain Name in dispute.

Based on the foregoing, the panel finds that jurisdiction to arbitrate does exist.

The next issue to be decided by the panel concerns the elements of a Domain Name Transfer Claim. Specifically, in order to prevail, a Complainant must prove the following:

 

1.that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2.that the respondent has no rights or legitimate interests in respect of the domain name; and,

3.That the domain name has been registered and is being used in bad faith.

With regard to the first element, the panel finds that the domain name at issue is identical to the trademark of the Complainant.

With regard to the second element, the panel finds that the respondent has no rights or legitimate interests in respect of the domain name. He is not a licensed dealer of Hewlett-Packard products and has not demonstrated any right except to declare that he is affiliated with the Pegasus Bookstore.

With regard to the third element, the panel finds that the respondent has registered and is using the domain name in bad faith. Evidence of bad faith exists from a finding that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name and that the respondent has engaged in a pattern of such conduct. Specifically, the respondent has stated that he would transfer the name if he were paid his costs associated with registration and received a public apology from the complainant. This demonstrates to the panel that he has no legitimate right or interest in the domain name. Also, the panel finds that the respondent has engaged in a pattern of such conduct. That pattern of conduct is shown by the fact that the respondent has registered more than 1,300 domain names that correspond to well-known and famous names without any purported right or interest in those names. Some of those domain names include TEXASINSTRUMENTS.COM; TOMCRUISE3-DOM; MARIAHCAREY4-DOM; GUNSNROSES4-DOM; DENZELWASHINGTON2-DOM; ASHLEYJUDD2-DOM; CARMENELECTRA-DOM; JOHN TRAVOLA3-DOM; MELANIEGRIFFITH2-DOM; ELLAMACPHERSON2-DOM; and many more. In addition, the Respondent has registered domain names corresponding with the names of Major League Baseball Properties, National Football League, National Basketball Association and National Hockey League. Many of these entities have filed suit against the respondent for the purported illegal registration and use of said domain names.

DECISION

Having found jurisdiction to arbitrate and having found the elements necessary to grant the relief requested, the panel, by a majority vote, directs that the domain name "HEWLETTPACKARD.COM" be transferred to the Complainant Hewlett-Packard Company.

 

Entered this 10^th day of April 2000.

 

 

________________________________

Daniel B. Banks, Jr., Chairperson

 

 

_________________________________

Judge Harold Kalina, (Ret)

 

 

DISSENTING OPINION

 

The complainant is a US corporation with a world-wide presence, and the respondent is a Canadian national. Complainant has used the trademark Hewlett Packard in the US since 1946, and has 18 registrations dating between 1957 and 1997. The complainant established its internet presence under the hp.com domain, registered March 3, 1986.

Respondent, a Canadian, registered the domain name hewlettpackard.com under the name Hewlett Club of Las Vegas, Nevada on Oct. 17, 1996. The respondent has registered some 1300 domains, many of which are names identifying sports teams or other business with which the respondent has no contractual relationships. There is no evidence that these domains have been offered for sale, and respondent alleges that he uses at least some of them to provide free "vanity" web-based e-mail services to thousands of subscribers.

The respondent alleges that he registered hewlettpackard.com for his daughter, who owns the Pegasus bookstore in High Prairie, Alberta, Canada, and which offers certain licensed Hewlett Packard products for sale. He alleges that he knew that Hewlett Packard was using hp.com, and concluded that his daughter could expand into online distribution of the products she sold in her store. Thus, by his own admission, the domain was registered for a business purpose.

At complainant’s request, NSI placed the domain on "hold" on Dec 4, 1996, and the domain has remained frozen and unusable ever since.

Respondent’s first contention is that when faced with a claim that it is without jurisdiction the panel should refuse to decide the matter until the question of arbitrability has been decided by a competent court. I agree with the majority that this panel, whether viewed as engaged in an international arbitration or an administrative procedure, has both the power and the duty to determine whether it has jurisdiction. Respondent’s contentions to the contrary fly in the face of the long-held principle that arbitrators must decide jurisdictional issues as an initial matter, and are without merit.

The claim that there is no jurisdiction because the respondent has never agreed to the UDRP is more substantial, but on the facts of this case it fails. When respondent originally registered the domain the NSI dispute policy provided that NSI would place domains on "hold" when requested to do so by any trademark holder with a valid registration in a name identical to the domain. When the respondent most recently renewed his registration, Network Solutions’s standard form contract was as quoted by the majority. NSI changed the contract a few days later to require that registrants agree to the UDRP, a new third-party beneficiary arbitration clause. (The record is silent as to what actual notice the respondent may have had. It seems fair to assume, however, that anyone with 1300 domain name registrations, not to mention at least one on hold, kept abreast of the vagaries of the dispute process.) Given that this term implies agreement by acquiescence, and that the only remedy provided by NSI to one unhappy with the new terms is to forfeit one’s registration without a refund, one might reasonably ask if some more overt agreement was required to make the new term effective, or if the term is unconscionable, or if it violates some public policy. However, respondent has failed to identify or argue any relevant public policies, much less what law applies. Furthermore, it is at least arguable that, for the special class of those with domains on hold, the UDRP is actually an improvement over the previous policy since it holds out the prospect of having a matter resolved in their favor as opposed to a seemingly permanent freeze. Finally, in this case it is clear that there are no consumer law issues since the respondent specified he acquired the domain for his daughter’s business.

At this point, I must part company with the majority. The UDRP states plainly that a complainant has the burden of demonstrating that the respondent’s domain "has been registered and is being used in bad faith". Sec. 4(a)(iii). The issue of registration in bad faith is in part a question of credibility of the respondent’s assertion that he obtained the domain name in good faith for his daughter’s bookstore. There is no evidence before us contradicting this assertion other than the somewhat suspicious choice of the name "Hewlett Club" as the registrant; the claim of good faith–or, at least, of the absence of any intent to block Hewlett Packard from using its name as it saw fit–receives at least some support from the fact that Hewlett Packard Corp. had chosen to register and use hp.com many years earlier. The majority nevertheless decides that respondent’s sworn affidavit is not credible on the apparent grounds that this testimony regarding his daughter from someone with 1300 domains, many of which appear to overlap trademarks, is inherently incredible. Although this reasoning has the attraction of rough justice, it comes dangerously close to making cybersquatting a status offense rather than one that the UDRP instructs us must be based on conduct.

Be that as it may, one thing is clear: the domain name hewlettpackard.com has never been used. The domain has been on hold since shortly after its registration. No email, no ftp, no web access has been possible since that time. Nor has the domain been "used" by being offered for sale "for valuable consideration in excess of documented out-of-pocket costs" unless one would intend the absurdity that the request of an apology in addition to reimbursement for cost is to be evidence of bad faith. This simple fact should suffice to find that the complainant has failed to state a claim under the UDRP.

The majority opinion could be read to suggest that the sec 4(b)(ii) of the UDRP supplies the necessary bad faith use. Section 4(b)(ii) says that evidence of bad faith can be found if respondent has "registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a patter of such conduct". This seems best understood as a gloss on what constitutes bad faith registration, and extending registration to constitute bad faith use strains the English language. It turns the "and" in sec. 4(a)(iii) into an "or" since multiple registrations become a form of use. This reading does not seem correct, but rather a case of letting the result determine the reasoning. Even if one were to agree that the record in this case supports a finding that the respondent has engaged in a pattern and practice of registering domain names in order to prevent the owner of the correlative trademarks from registering the names (something respondent strenuously denies, and which is currently being litigated in various courts), it does not follow that any domain name registered by the respondent is therefore being used in bad faith if it is on hold, has never been used in any fashion, and has not been offered for sale above cost.

The lack of "use" compels a verdict for the respondent.

Two other elements of the majority decision deserve mention. First, any suggestion that asking for an apology as well as actual costs suffices to make someone a cybersquatter seems well calculated to destroy settlement talks and is a very bad signal to send the bar. Second, although it is certainly the case that the respondent has registered a large number of domain names that resemble other people’s trademarks, the examples cited by the majority are mostly "handles" (internal NSI nicknames) rather than domain names, or are personal names which are neither trademarks nor servicemarks and are not covered by the UDRP.

 

A. Michael Froomkin

Professor of Law