Compaq Trademark B.V. v.
Anti-Globalization Domains
Claim
Number: FA0310000206310
Complainant is Compaq Trademark B.V. (“Complainant”), represented
by Molly Buck Richard and Heather
C. Brunelli of Thompson & Knight LLP, 1700 Pacific Avenue, Suite 3300,
Dallas, TX 75201. Respondent is Anti-Globalization Domains (“Respondent”), 5444 Arlington Ave. #g14,
Bronx, NY 10471.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwcompaq.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.Com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically October 27, 2003; the Forum received a hard copy of the
Complaint October 29, 2003.
On
October 29, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <wwwcompaq.com> is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that
Respondent is the current registrant of the name. Intercosmos Media Group, Inc.
d/b/a Directnic.Com verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.Com 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
October 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 19, 2003, 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@wwwcompaq.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
November 24, 2003, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<wwwcompaq.com>, is confusingly similar to Complainant’s COMPAQ
marks.
2. Respondent has no rights to or legitimate
interests in the <wwwcompaq.com> domain name.
3. Respondent registered and used the <wwwcompaq.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
the holder of numerous marks registered on the Principal Register of the United
States Patent and Trademark Office (“USPTO”) for the COMPAQ mark. Specifically, Complainant holds USPTO
Registration Numbers 1,467,066 (registered December 1, 1987), 2,127,189
(registered January 1, 1998) and 2,183,368 (registered August 25, 1998) for the
COMPAQ mark.
Complainant has
continuously used its COMPAQ mark in commerce since at least as early as
1982. Complainant uses its COMPAQ mark
in connection with computer hardware, computer software, computing and business
solutions services and other related goods and services. In 1994, Compaq was
the largest global supplier of personal computers. In 2000, Complainant’s COMPAQ-branded businesses represented over
$40 billion in sales.
Complainant
operates a website at the <compaq.com> domain name. Complainant’s website contains information
about its products and services.
Complainant generates significant revenue from sales at the
<compaq.com> website.
Respondent
registered the <wwwcompaq.com> domain name August 2, 2003. Respondent is using the domain name to
redirect Internet users to the politically-charged website located at the
<abortionismurder.org> domain name.
The website connected with the <abortionismurder.org> domain name
features graphic images of aborted fetuses and gives voice to anti-abortion
propaganda. When an Internet user tries
to exit the <abortionismurder> website, another pop-up window opens with
additional graphic images. Complainant
has not authorized Respondent to use its COMPAQ mark in this or any other
manner.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) 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; and
(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.
The Panel finds
that Complainant established by extrinsic proof in this proceeding that it has
rights to and interests in the COMPAQ mark through registration of the mark
with the USPTO. 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).
The domain name registered by Respondent, <wwwcompaq.com>, contains
Complainant’s entire COMPAQ mark with the addition of the “www” prefix, minus
the period. In the past, Panels have
found that the “www” prefix is not sufficient to distinguish a domain name from
another’s mark when the domain name wholly incorporates another’s mark with the
addition of the “www” prefix. Likewise,
Respondent’s elimination of the period between the “www” prefix and
Complainant’s mark does not distinguish the domain name from Complainant’s mark
because Respondent is taking advantage of a common typographical error. Therefore, the Panel finds that Respondent’s
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Bank of Am. Corp. v.
InterMos, FA 95092 (Nat.
Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Marie Claire Album
v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has rights to and legitimate interests in the mark
contained within the disputed domain name.
Respondent failed to submit a Response in this proceeding and failed to
rebut Complainant’s allegations that Respondent lacks rights and legitimate
interests in the <wwwcompaq.com> domain name. Since there is no
evidence before the Panel asserting otherwise, the Panel concludes that
Respondent does not have rights or legitimate interests in the domain name
under Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of Complainant to be deemed true); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding that Respondent has no rights or legitimate interests in the domain
name because Respondent never submitted a Response or provided the Panel with
evidence to suggest otherwise).
Respondent has
not been authorized by Complainant to use its COMPAQ mark. In addition, Respondent has not produced any
evidence for the Panel showing that it is commonly known by the <wwwcompaq.com> domain name. Consequently, the Panel finds that
Respondent is not commonly known by the domain name pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail"); see also Am. Airlines, Inc. v. Zuccarini, FA
95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interests
in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).
Respondent is taking advantage of Complainant’s customers and potential
customers who inadvertently forget to type the period between “www” and
Complainant’s COMPAQ mark when trying to reach Complainant’s website. When Internet users forget to type the period
in Complainant’s domain name, Respondent redirects Internet users to the
politically-charged <abortionismurder.org> website. Thus, the Panel finds that Respondent’s
diversionary use of the <wwwcompaq.com> domain name
is not in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate or noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See
Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting as a means of redirecting consumers against their will to
another site, does not qualify as a bona fide offering of goods or services,
whatever may be the goods or services offered at that site.”); see also
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis Complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and using a domain
name containing Complainant’s protected mark.
Respondent is using the <wwwcompaq.com> domain name to divert Internet traffic to a
graphic and highly inflammatory website, which is dedicated to voicing
anti-abortion views that are not necessarily endorsed by Complainant. In the past, Panels have found that such
unauthorized use of another’s mark to divert Internet users to a website
featuring politically-charged content is evidence that the domain name was
registered and used in bad faith. Thus,
the Panel finds that Respondent registered and used the domain name in bad
faith. See McClatchy Mgmt. Servs.,
Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28,
2003) (“By intentionally taking advantage of the goodwill surrounding
Complainant’s mark to further its own political agenda, Respondent registered
the disputed domain names in bad faith”); see also Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA
105211 (Nat. Arb. Forum Apr. 8, 2002) (“when a party registers and uses a
domain name that incorporates a well-known mark and connects the domain name
with a website that depicts offensive images,” the party has registered and
used the disputed domain name in bad faith).
Respondent is
using the <wwwcompaq.com>
domain name, which incorporates Complainant’s entire mark, to expose
Internet users who forget to type a period after the “www” portion of
Complainant’s web-address to the provocative content at the
<abortionismurder.org> website.
When Respondent uses such common typographical errors to ensnare
Internet users, it is engaged in typosquatting, which is a prima facie
case of bad faith under the Policy.
Thus, the Panel concludes that Respondent registered and used the <wwwcompaq.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is inherently
parasitic and of itself evidence of bad faith”); see also Canadian Tire
Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net, D2003-0232 (WIPO
May 22, 2003) (the missing period between the “www” and “canadiantire.com” in
the <wwwcanadiantire.com> domain name is evidence of bad faith
registration and use of the domain name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwcompaq.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 8, 2003
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