Hewlett-Packard
Company v. Jinsu Kim
Claim Number: FA0107000098012
PARTIES
Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Strasburger & Price, L.L.P. Respondent is Jinsu Kim, Jongro-Gu, South Korea (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <hpnow.com>, registered with Netpia.com Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 10, 2001; the Forum received a hard copy of the Complaint on July 18, 2001.
On July 10, 2001, Netpia.com Inc. confirmed by e-mail to the Forum that the domain name <hpnow.com> is registered with Netpia.com Inc. and that Respondent is the current registrant of the name. Netpia.com Inc. has verified that Respondent is bound by the Netpia.com 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 July 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2001 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@hpnow.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant urges that:
· Complainant first used the mark, HP, an abbreviation of the company name, in commerce in 1941. Over the last six decades, Complainant invested a substantial effort, including the expenditure of significant financial resources, to develop goodwill 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 that originate with Complainant. These promotional efforts over the last sixty years have resulted in the HP marks becoming famous and distinctive marks.
· Complainant contends that the domain name <hpnow.com> is confusingly similar to the famous HP marks and that Respondent has no rights to or legitimate interests relative to a domain name that contains in its entirety Complainant’s world famous HP trademark. In addition Complainant alleges that Respondent has made no legitimate use of the domain name since the domain name currently is being used in connection with a pornographic website.
· Complainant maintains that Respondent registered and is using the domain name in bad faith. Respondent is using the domain name, <hpnow.com>, to redirect users to a pornographic website, which has nothing to do with Complainant and has no legitimate relationship to Complainant’s famous “HP” marks.
B. Respondent did not file a response in this proceeding.
FINDINGS
Complainant is the internationally known owner of numerous proprietary marks in connection with computer hardware, computer printers, computer peripherals, computer software, and other related goods. Hewlett-Packard owns some 44 trademarks and service marks, registered on the Principal Register of the United States Patent and Trademark Office for marks consisting of "HP," and owns 24 additional pending trademark applications for marks consisting of "HP."
Complainant’s earliest federal registration for the HP mark was issued on October 25, 1955, Trademark Registration Number 614,803.
On May 17, 2001, Respondent registered the domain name <hpnow.com>.
DISCUSSION
Paragraph
15(a) of 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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Complainant has established rights in the HP mark through its federal registrations as well as its extensive global advertising and use of the marks. Furthermore, Complainant has established that the <hpnow.com> domain name is confusingly similar to Complainant’s HP mark, inasmuch as it contains Complainant’s famous registered mark in its entirety combined with a generic word: “now.” The addition of a generic word to Complainant’s mark makes the disputed domain confusingly similar. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark).
The Panel therefore finds that Complainant made the necessary showing to prevail in this dispute under Policy ¶ 4(a)(i).
Complainant established its long-standing rights to the mark in issue. Respondent has not. It is not a bona fide offering of goods or services for Respondent to link the <hpnow.com> domain name to a website that offers pornographic material. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
Complainant has alleged that Respondent has no rights or legitimate interests in the domain name. Respondent has not come forward to establish that it is commonly known by the <hpnow.com> 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 Respondent does not have rights in domain name when Respondent is not known by the mark).
Furthermore, Respondent’s use of linking a pornographic website to the <hpnow.com> domain name is not a legitimate noncommercial, or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
The Panel therefore finds that Complainant made the necessary showing under Policy ¶ 4(a)(ii) to prevail in this dispute.
The Panel may find that Respondent’s use of the <hpnow.com> domain name to redirect Internet users to a website containing pornographic material is evidence of bad faith. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Furthermore, the Panel may also find that bad faith is evidenced by the fact that Respondent is attracting Internet users, assumedly for commercial gain, to Respondent’s website by creating a likelihood of confusion with Complainant’s HP mark, pursuant to Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).
The Panel therefore finds that Complainant has made the necessary showing to prevail in this dispute under Policy ¶ 4(a)(iii).
DECISION
Having established that Complainant has made the necessary showing under all three required elements under the ICANN Policy, the Panel concludes that the requested relief should be and it is hereby granted.
Accordingly, it is Ordered that the <hpnow.com> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 5, 2001.
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