Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. LaPorte Holdings, Inc.
Claim
Number: FA0501000409995
Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented
by Heather C. Brunelli, of Thompson & Knight, LLP,
1700 Pacific Ave., Suite 3300, Dallas, TX 75201. Respondent is LaPorte Holdings, Inc. (“Respondent”),
Attn: www3hp.com, c/o Nameking, Inc., 2202 S. Figueroa St., Suite 721, Los
Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <www3hp.com>, registered with Nameking.com,
Inc.
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.
Judge
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 28, 2005.
On
January 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <www3hp.com> is registered
with Nameking.com, Inc. and that Respondent is the current registrant of the
name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.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
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 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@www3hp.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Ralph
Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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. Respondent’s <www3hp.com>
domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or
legitimate interests in the <www3hp.com> domain name.
3. Respondent registered and used the <www3hp.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant
Hewlett-Packard Development Company, L.P., is an affiliate of Complainant
Hewlett-Packard Company (collectively known as “Complainant”). Complainant, a
provider of computer hardware, printers, peripherals, software, and other
related goods and services, has used the HP mark in connection with its goods
and services continuously since at least 1941. Complainant has extensively
promoted its HP mark since that time in advertisements for its goods and
services throughout the world. Complainant’s promotional efforts over the past
sixty years have resulted in the HP mark becoming famous and distinctive.
Complainant holds over 40 registered trademarks on the Principal Register of
the United States Patent and Trademark Office that incorporate the HP mark,
including Reg. No. 1,116,835 (issued April 24, 1979). Complainant uses the
“www3” third-level domain to operate a website for HP service partners at its
<hp.com> domain name.
Respondent
registered the <www3hp.com> domain name on September 28, 2004. The
domain name resolves to a page with sponsored links that directs Internet users
to various commercial websites, including websites that provide goods and
services that compete with Complainant.
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
draw such inferences it 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.
Complainant has
established that it has rights in the HP mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark in commerce. 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 <www3hp.com> domain name is
confusingly similar to Complainant’s HP mark because the disputed domain name
merely adds the “.com” generic top-level domain and prepends “www3,” a
third-level domain used by Complainant, to the mark. The addition of a generic
top-level domain and “www3” do not distinguish the domain name from
Complainant’s mark. Moreover, the disputed domain ensnares Internet users who
fail to insert a period between the third- and second-level domains of
Complainant’s service partner website. Domain names that reflect common typing
errors made by Internet users who are searching under a complainant’s mark are
confusingly similar to the mark. See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Bank
of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that the domain name <wwwbankofamerica.com> was confusingly similar to
the complainant’s BANK OF AMERICA mark 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 Dana Corp. v. $$$
This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding that the respondent’s <wwwdana.com> domain name was confusingly
similar to the complainant’s registered DANA mark because the complainant’s
mark remained the dominant feature); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum
Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was
confusingly similar to Complainant’s AOL mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <www3hp.com>
domain name. Complainant’s submission has gone unopposed and its arguments
unrefuted. Because Respondent has failed to submit a response, Respondent has
failed to propose any set of circumstances that could substantiate its rights
or legitimate interests in the disputed domain name. See Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of a complainant to
be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). Respondent’s domain name redirects unsuspecting Internet users to a
portal website that provides links to other commercial websites, including
websites that offer goods and services that are in competition with
Complainant’s goods and services. The Panel infers that Respondent receives
pay-per-click fees when Internet users follow the links on its website.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the HP moniker. Thus, Respondent fails
to establish rights or legitimate interests in the domain name. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where the respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
complainant’s site to a competing website); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of [a] web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”); see also Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name).
No
evidence before the Panel suggests Respondent is commonly known by the domain
name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the
registrant of the disputed domain name is known as “Forum LLC” and is not known
by the confusingly similar second-level domain that infringes on Complainant’s
HP mark. Moreover, Respondent is not authorized or licensed to use
Complainant’s mark for any purpose. See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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
MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name GIRLS GON WILD
or <girlsgonwild.com>).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of a confusingly similar variation of Complainant’s well-known HP
mark to ensnare unsuspecting Internet users. Respondent then redirects the
users to a website that provides links to various commercial websites. The Panel
infers that Respondent receives pay-per-click fees when Internet users follow
the links on its website. Respondent is profiting from the unauthorized use of
Complainant’s registered mark in its domain name. Such infringement is what the
Policy was intended to remedy and is bad faith registration and use under
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer goods
and services that compete with Complainant’s goods and services. Respondent’s
use of the <www3hp.com>
domain name establishes that Respondent registered and used the domain
name for the purpose of disrupting the business of a competitor pursuant to
Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent acted in bad faith by attracting Internet users to
a website that competed with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from the complainant’s marks suggested that the
respondent, a competitor of the complainant, registered the domain names
primarily for the purpose of disrupting the complainant’s business); see
also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s well-known registered mark, suggests that Respondent
knew of Complainant’s rights in the HP mark. Additionally, Complainant’s
trademark registration on file at the United States Patent and Trademark Office
gave Respondent constructive notice of Complainant’s mark. Moreover, the fact
that Respondent’s website provides links to Complainant’s competitors evidences
Respondent’s knowledge of Complainant’s rights in the mark. Thus, the Panel
finds that Respondent chose the <www3hp.com> domain name based on
the distinctive and well-known qualities of Complainant’s mark, which evidences
bad faith registration and use under Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Reuters
Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that
the respondent demonstrated bad faith where it was aware of the complainant’s
famous mark when registering the domain name and was aware of the deception and
confusion that would inevitably follow if it used the domain names); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <www3hp.com> domain name be TRANSFERRED
from Respondent to Complainant.
Judge Ralph Yachnin, Panelist
Justice, Supreme Court, NU (Ret.)
Dated:
March 15, 2005
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