Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

HEWLETT-PACKARD COMPANY

Complainant,

Vs.

FULL SYSTEM S.a.S.,

Respondent.

Decision: NAF FA94637

This is a DOMAIN NAME dispute between the parties and will be decided on the record provided by the Complainant. The Complainant is represented by counsel. The Respondent did not answer the Complaint.

PROCEDURAL FINDINGS

Domain Name: OPENMAIL.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Full System S.a.S.

Date of Domain Name Registration: March 17, 1997.

Date Complaint Filed: April 17, 2000.

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)[1] and Rule 4(c): April 17, 2000.

Due Date for a Response: May 8, 2000.

Respondent did not file a response as required by Rule 5(a).

After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on April 17, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent did not file a response as required by Rule 5(a).

On March 17, 1997, Respondent registered the domain name OPENMAIL.COM with Domain Name Registrar Network Solutions, Inc., the entity that is the Registrar of the domain name. On April 18, 2000, the Domain Name Registrar, NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name OPENMAIL.COM and that by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

The undisputed evidence establishes that:

1. Hewlett-Packard is a California corporation and is the owner of trademark registrations in numerous countries for the mark OPENMAIL.
2. This mark is used in connection with computer software used in distributing electronic mail over public and private networks.
3. The United States, France, Benelux, Great Britain, Northern Ireland, Germany and Korea are among the countries in which Hewlett-Packard owns trademark registrations for OPENMAIL.
4. Hewlett-Packard's worldwide use of the mark OPENMAIL began in 1989 and includes sales of products under the OPENMAIL mark in Italy, where the Respondent resides.
5. Hewlett-Packard has the exclusive right to use and to license the OPENMAIL marks and has marketed computer software for use in distributing electronic mail under the OPENMAIL mark throughout the world.
6. Hewlett-Packard has invested substantial effort and money to develop goodwill in the OPENMAIL mark.
7. These efforts have caused consumers throughout the United States and the rest of the world to recognize OPENMAIL marks as computer software products, which originate with Hewlett-Packard.
8. On March 17, 1998, the Respondent Full System registered the domain name "openmail.com" with Network Solutions.
9. Although the site is not functional due to a "Hold" pursuant to Section 9 of Network Solutions' Domain Name Dispute Policy, Full Systems offered personal e-mail accounts over the Internet under the "openmail.com" domain name.
10. The use of the domain name "openmail.com" by the Respondent is identical and confusingly similar and specifically uses the registered trademark of the Complainant.
11. The domain name holder has not identified any right or legitimate interest in the name "openmail.com".
12. Respondent's failure to offer any evidence permits the inference that the use of Complaint's mark OPENMAIL in connection with Respondent's web site is misleading and that Respondent is intentionally diverting business from Complainant for the sale of goods or services.
13. Respondent's failure to offer any evidence also permits the inference that the use of Complaint's mark OPENMAIL in connection with its web site creates a likelihood of confusion with the Complaint's marks as to the source, sponsorship, affiliation or endorsement of its web site.

Based on the foregoing, and considering the Respondents failure to dispute the allegations of the Complaint, it is found that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant or by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement or location of a product or service.

Complainant's prayer for relief requests that the domain name OPENMAIL.COM be transferred from Respondent to Complainant, pursuant to Paragraph of 4(I) of ICANN's Uniform Domain Dispute Resolution Policy.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no know conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following conclusions.

1. The domain name "openmail.com" is identical and confusingly similar to the mark of the Complainant in which the Respondent has no right or legitimate interests.
2. Respondent registered and used the domain name in bad faith in that by using the domain name, Respondent attempted to attract, for commercial gain, Internet users to its Web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship affiliation, or endorsement or location of a product or service.

DECISION

Based on the foregoing, and pursuant to Rule 4(I), it is decided the undersigned directs that the DOMAIN NAME "openmail.com" be transferred to Complainant Hewlett-Packard.

Dated: May 22, 2000, by Judge Daniel B. Banks, Jr. (Ret.), Arbitrator.

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