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Hewlett Packard Company v. High Performance Networks [2000] GENDND 800 (31 July 2000)

National Arbitration Forum

DECISION

Hewlett-Packard Company v. High Performance Networks, Inc.

Claim Number: FA0006000095083

PARTIES

The Complainant is Hewlett Packard Company, Palo Alto, CA, USA ("Complainant"). The Respondent is High Performance Networks, Inc., Long Island City, NY, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain names at issue are "SURESTORE.COM" and "SURESTORE.NET", registered with Network Solutions Inc ("NSI").

PANELIST

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on June 29, 2000; The Forum received a hard copy of the Complaint on June 29, 2000.

On July 5, 2000, NSI confirmed by e-mail to The Forum that the domain names "SURESTORE.COM" and "SURESTORE.NET" are 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.

On July 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 25, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On July 25, 2000, 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 July 28, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records in the case file, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

The Complainant contends that the unauthorized and continued use by Respondent of the domain names incorporating the Complainant’s mark constitutes use of a false description or representation that is likely to cause confusion, mistake, or deception as to the affiliation, connection or association between the Complainant and the Respondent.

The Complainant asserts that the Respondent’s activities impermissibly interfere with the Complainant’s rights to hold and control the domain names in question and that the Respondent’s actions have caused substantial and irreparable harm to the Complainant’s business, reputation, and good-will.

1. Respondent

The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.

FINDINGS

The Complainant owns the U.S. trademark registration for the mark, SURESTORE (registered: November 7, 1995; No. 1,934,114) for use in connection with electronic data storage and mass memory systems and mechanisms for computers.

The Respondent registered the domain names in question on April 24, 1998.

The Complainant contacted the Respondent on June 24, 1998 informing the Respondent of its registered mark, SURESTORE. The Complainant explained that the use of the domain names constituted trademark infringement and requested that the domain names be transferred to the Complainant.

The Respondent responded both in writing and in telephone conversations that it had "no intentions in using the domain names…for purposes of trading goods or services" and that it was its right under the "first come first serve" policy to purchase these names and hold, sell or renew them as it wishes.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim 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 Complainant has rights in the registered mark, SURESTORE. The domain names in question are identical to the Complainant’s mark. See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the Complainant’s mark).

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

The domain name in question is not a mark by which the Respondent is commonly known. Policy ¶ 4(c)(ii). Rather, the Respondent is known by the name, High Performance Networks.

The Respondent has made no claim that it is using the domain name in connection with a bona fide offering of goods and services or is making a legitimate noncommercial or fair use of the site. Policy ¶ 4(c)(i), (iii). Instead, the Respondent acknowledged to the Complainant that the Respondent had "no intentions in using the domain names…for purposes of trading goods or services" and that it was its right under the "first come first serve" policy to purchase these names and hold, sell or renew them as its wishes.

For these reasons, the panel concludes that the Respondent has no rights or legitimate interest in the domain name in question.

The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied that assertion.

The Respondent knew or should have known of the Complainant’s competing business and corresponding marks. See America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding that Respondent "clearly had knowledge or reasonably should have had knowledge" of Complainant’s well-known mark).

The Respondent registered the domain names primarily for the purpose of disrupting the business of the Complainant, the Respondent’s competitor. Policy ¶ 4(b)(iii). See 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 suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business).

The Respondent admits having no intent to use the domain names for the purpose of trading goods or services. Passive holding of a domain name, without any attempts to develop the website raises the inference of use in bad faith. See Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

The panel concludes that the Respondent registered and used the domain names in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "SURESTORE.COM" and "SURESTORE.NET", be transferred from the Respondent to the Complainant.

James A. Carmody, Judge (Ret.), Arbitrator
Dated: July 31, 2000

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