Hewlett Packard Company v Homepage Organisation

HEWLETT-PACKARD COMPANY,
Complainant,

vs.

HOMEPAGE ORGANISATION,
Respondent.

DECISION

Forum File No.: FA0004000094446

The above entitled matter came on for an administrative hearing on May 11, 2000 before the undersigned Arbitrator on the complaint of Hewlett-Packard Company ("Complainant") represented by Jane A. O’Connell of (Strasburger & Price, L.L.P., Attorneys, 600 Congress Avenue, Suite 2600, Austin, Texas 78701-3288 [e-mail: oconnelj@strasburger.com]) against Homepage Organisation (Respondent). Upon the written submitted record, including the Complaint and Exhibits, I hereby render the following decision:

PROCEDURAL FINDINGS

Domain Name: HP.Org

Domain Name Registrar: Network Solutions, Inc.

2403 Sidney St., Suite 510

Pittsburgh, PA 15203

Domain Name Registrant: Homepage Organisation (HP5-DOM)

c/o Sven Echternach

Theresienstr. 81c

80333 Muenchen, Germany

Date of Domain Name Registration: December 12, 1996

Date Complaint Filed: April 12, 2000

Date Answer Filed: No Answer Filed by Respondent

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (the "Forum") forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c) in compliance with Rule 4(d). The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS ("ICANN") and Respondent that the administrative proceeding had commenced. Respondent has not submitted a Response to the Forum within the twenty (20) days pursuant to Rule 5(a) which time has now expired. The Complaint and Exhibits were docketed and forwarded to the undersigned Arbitrator for decision.

On December 12, 1996, Respondent registered the domain name HP.ORG with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name. Network Solutions, Inc. verified that Respondent is the registrant for the domain name HP.ORG and that by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution policy. Neither the Complainant nor the Respondent has contested the jurisdiction of the Forum or the undersigned Arbitrator to resolve this controversy.

FINDINGS OF FACT

Complainant is the owner of numerous proprietary marks in connection with computer hardware, computer software, computer printers and cartridges, computer peripherals, electronics, medical equipment, business services, printed materials and other related goods. More specifically, Complainant is the owner of twenty three [23] registered trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for marks consisting of "HP" [the HP marks]. Additionally, Complainant is the owner of five registered trademarks for HP in Germany.
Complainant has the exclusive right to use and to license the HP marks. The mark HP, an abbreviation of the company name, was first used in commerce by Complainant in 1941. Over the last six decades, Complainant has invested a substantial effort including the expenditure of substantial dollars to develop good will in the HP marks and to cause consumers throughout the United States and the rest of the world to recognize the HP marks as distinctly designating products which originate with the Complainant. These promotional efforts over the last sixty years have resulted in the HP marks becoming famous and distinctive marks.
On December 12, 1996, Respondent registered with Network Solutions, Inc. for domain name HP.ORG, which is the subject of this complaint. The site represented by this domain name is currently not functional and was on "Hold" pursuant to Section 9 of Network Solutions, Inc.’s Domain Name Dispute Policy from August 28, 1998 until March 30, 2000.
Respondent’s domain name HP.ORG is confusingly similar to Claimant’s famous HP marks in which Claimant has exclusive rights. The Domain Name here involved is merely a combination of Complainant’s trademark HP and a common URL suffix, .ORG. Respondent’s use of Complainant’s trademark HP creates a likelihood of confusion and Complainant’s trademark users and consumers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant when, in fact, no such affiliation or association exists.
Respondent has no rights or legitimate interests in the domain name HP.ORG due to the domain name consisting primarily of Claimant’s world famous trademark in which Respondent also has no legitimate rights or interests. Moreover, consumers seeking information concerning Complainant may easily key on HP.ORG looking for Complainant and would be surprised not to find Complainant’s site. Complainant is the owner of HP.COM and HP.NET.
The domain name HP.COM should be considered has having been registered by Respondent in bad faith due to the fact that Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. The unauthorized and continued use by Respondent in interstate commerce of a domain name incorporating Complainant’s famous HP marks constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainant and Respondent and (b) the sponsorship or endorsement of Respondent’s website by Complainant. See Rule 4(b)(iii).
Respondent’s activities constitute an infringement of Complainant’s rights in its HP marks and have caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will. Complainant demands that Respondent transfer the domain name HP.ORG to Complainant.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial and neutral, the undersigned makes the following findings and conclusions:

1. The domain name HP.ORG registered by Respondent on December 12, 1996 is identical or confusingly similar to Complainant’s HP marks, registered trademarks and service marks registered on the principal register of the United States Patent and Trademark Office by Complainant, and the registered trademarks for HP in Germany, registered by Complainant. Complainant has all rights and interests in its HP marks.

2. Respondent does not have any substantial rights or legitimate interests in respect to the domain name HP.ORG.

3. Respondent has registered and used the domain name HP.ORG in bad faith.

DECISION

Based upon the above findings and conclusions and pursuant to Rule 4 (1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that:

1. The domain name HP.ORG registered by Respondent Homepage Organisation be transferred forthwith to Complainant Hewlett-Packard Company, and

2. Respondent Homepage Organisation shall cease and desist from any and all use of the domain name HP.ORG.

Herman D. Michels

Arbitrator

Dated: May 11, 2000