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Hewlett-Packard Company v. Posch Software [2000] GENDND 1069 (12 September 2000)


National Arbitration Forum

DECISION

Hewlett-Packard Company v. Posch Software

File Number: FA0008000095322

PARTIES

The Complainant is Hewlett-Packard Company, Palo Alto, California, USA ("Complainant"). The Respondent is Posch Software, Kroisbach 56, St. Margarethan/Raab, AT ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "HP-SOFTWARE.COM", registered with Network Solutions Inc ("NSI")

ARBITRATOR

The Arbitrator certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the arbitrator in this proceeding.

The Arbitrator is John J. Upchurch, Daytona Beach, FL., USA..

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") via express mail on 07/26/2000; The Forum received a hard copy of the Complaint on 07/27/2000.

On 08/02/2000, NSI confirmed by e-mail to The Forum that the domain name "HP-SOFTWARE.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

A Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), was transmitted to Respondent by The Forum and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

On 08/22/2000, Respondent submitted its response, which was received within the deadline set by The Forum by which Respondent could file a response to the Complaint, which was forwarded by The Forum to Complainant on 08/23/2000. On 08/31/2000, pursuant to Complainant’s request to have the dispute decided by a single panelist, The Forum appointed John J. Upchurch to serve as the arbitrator for the domain name dispute complaint.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

    1. Complainant
      1. On February 18, 1998, Respondent registered with NSI for the domain name HP-SOFTWARE.COM.
      2. The site represented by the subject domain name is a single page site titled "Welcome to the website of Hansjoerg Posch."

3. The subject domain name is currently for sale at the domain name reseller GreatDomains.com with an asking price of $50,000 with a statement that HP-SOFTWARE.COM gets "many requests for HP products."

4. The domain name HP-SOFTWARE.COM is confusingly similar to the famous HP Marks in which the Complainant has exclusive rights.
    1. The Respondent should be considered as having no rights or legitimate interests in the subject domain name; Respondent’s use of the name creates a likelihood of confusion.

6. The domain name should be considered as having been registered in bad faith.

B. Respondent
    1. The Respondent’s name is Hansjoerg Posch and therefore the initials HP are a derivation of his name.
    2. There is no vicious intention against Hewlett-Packard.

FINDINGS

    1. Hewlett-Packard is the owner of twenty-three (23) 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").
    2. Hewlett-Packard has the exclusive right to use and to license the HP Marks.
    3. On February 18, 1998, Posch Software registered with NSI for the domain name HP-SOFTWARE.COM.
    4. The site represented by the domain name is a single page site with no discernable purpose or function other than to establish a technical presence.
    5. The subject domain name is currently for sale at the domain Great Domains.com with an asking price of $50,000.
    6. The domain name HP-SOFTWARE.COM is confusingly similar to the famous HP Marks in which the complainant has exclusive rights.
    7. Respondent’s use of complainant’s trademark HP creates a likelihood of confusion.
    8. The domain name is found to have been registered in bad faith due to the fact that the Respondent is now offering the domain name for resale coupled with the absence of any purpose or function.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
    2. the 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.

Identical and/or Confusingly Similar

The domain name HP-SOFTWARE.COM is identical to and/or confusingly similar to Complainant’s service marks registered on the principal register of the United States Patent and Trademark Office. The Complainant owns the mark "HP" and twenty-three marks containing "HP." The fact that Respondent’s domain name contains the added word, "Software" does not eliminate the confusion with the HP mark. See Quixtar Investments, Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in and to the "HP-SOFTWARE.COM" domain name, which is merely a combination of the Complainant’s HP trademark, one of Hewlett’s well known products, to-wit: software, and the common URL suffix .com. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has not demonstrated any rights or legitimate interests in the domain name in question).

Registration and Use in Bad Faith

It appears that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. The Respondent was attempting to sell the name for $50,000, which is well above Respondent’s out-of-pocket costs. See Randstad General Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).

DECISION

I find for the Complainant and against the Respondent, and it is hereby determined that the domain name HP-SOFTWARE.COM shall be transferred from Respondent to the Complainant.

DONE AND ORDERED this 12th day of September, 2000.

Honorble John J. Upchurch

Retired Judge

Arbitrator

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