Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hewlett-Packard Company, Palo Alto, CA, USA ("Complainant") represented by Jane A. O'Connell, Strasburger & Price. The Respondent is Marcel Wieland, Duebendorf, Zuerich, CH ("Respondent").

The domain names at issue are designjet.net, and designjet.org registered with Network Solutions.

On November 29, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 24, 2000; The Forum received a hard copy of the Complaint on October 24, 2000.

On 10/27/00, Network Solutions confirmed by e-mail to the Forum that the domain names designjet.net, and designjet.org are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2000 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@designjet.net, and postmaster@designjet.org 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.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 the Respondent.

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

A. Complainant

B. Respondent did not submit a response in this proceeding.

Complainant adopted and first began using the DESIGNJET mark in connection with its printers in 1991 and has continuously used the mark since that date. Complainant is the owner of three marks and one pending application incorporating the term DESIGNJET.

Respondent registered the domain name designjet.net on March 17, 2000 and the domain name designjet.org on March 18, 2000. Respondent has not yet developed a web site associated with either domain name.

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.

The domain names at issue are confusingly similar to a mark in which Complainant has rights. Complainant has established that it has rights in the DESIGNJET mark, evidenced by several U.S. trademark registrations and continual use of the mark in commerce since 1991.

Under the Policy, the domain names at issue, designjet.net and designjet.org are confusingly similar to Complainant’s DESIGNJET mark. See e.g. William Hill Organisation Limited v. Seven Oaks Motoring Centre, D2000-0824 (WIPO Sept, 4, 2000) (finding that the domain names, <williamhill.org>, <williamhill.net>, <williamhillscasino.com>, are identical and confusingly similar to the Complainant’s marks WILLIAM HILL, WILLIAM HILL LUCKY CHANCE, WILLIAM HILL LUCKY CHOICE, and WILLIAM HILL LUCKY BET).

This panel concludes that the domain names desigjet.net and designjet.org are confusingly similar to Complainant’s DESIGNJET mark.

Respondent, who must carry the burden of proof on this issue, has not asserted any rights or legitimate interest in the domain names at issue. See e.g. Woolworths plc. v. David Anderson, D2000-1113 (Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests) There is no evidence indicating that Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, or that Respondent is commonly known by the domain names at issue, or that Respondent is making a legitimate noncommercial or fair use of the domain names. See ICANN Policy 4(c). Therefore, this Panel must conclude that Respondent does not have any rights or legitimate interest in the domain names at issue.

Complainant asks this panel to find that Respondent has registered and is using the domain names in bad faith based on several facts. Complainant argues that because Hewlett-Packard already owns the DESIGNJET mark, Respondent’s registration of the domain names at issue was in bad faith. Similarly, Complainant argues that Respondent’s choice to register Complainant’s distinctive DESIGNJET mark as domain names evidences intent to use the domain names to confuse consumers as to sponsorship, affiliation or endorsement by Hewlett-Packard.

There is support for both arguments in other ICANN decisions. First, several panels have found that registration of a unique mark that is obviously connected with Complainant’s business indicates bad faith. See e.g. Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Second, even where the domain name has not been used to identify a web site, Panels have held that the ICANN Policy ‘use in bad faith’ requirement is met by registering a domain name that will ultimately result in consumer confusion. See e.g. CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

Having established all three elements required by the ICANN Policy, this Panel concludes that the requested relief be granted. Accordingly, the domain names designjet.net and designjet.org shall be transferred from Respondent to Complainant.