Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hewlett-Packard Company, Palo Alto, CA ("Complainant") represented by Molly Buck Richard, of Strasburger & Price LLP. The Respondent is Movie Name Company, Encino, CA ("Respondent") represented by Mark A. Raimondo.

The domain names at issue are <hpjobs.com> and <hpjob.com>, registered with Dotster.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.

Estella S. Gold as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 17, 2001; the Forum received a hard copy of the Complaint on August 20, 2001.

On August 17, 2001, Dotster confirmed by e-mail to the Forum that the domain names <hpjobs.com> and <hpjob.com> are registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 August 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2001 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@hpjobs.com and postmaster@hpjob.com by e-mail.

A timely response was received and determined to be complete on September 10, 2001.

A timely Additional Submission, submitted by Complainant, was received and determined to be complete on September 11, 2001.

On October 1, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold as Panelist.

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

A. Complainant

Complainant alleges, and Respondent does not deny, that Complainant is the owner of the trademark registrations exhibited, and that Complainant’s use of the mark HP over the period of 60 years have resulted in the HP marks becoming famous and distinctive marks.

The domain names, <hpjobs.com> and <hpjob.com> are confusingly similar to Complainant’s HP trademark.

The domain names, <hpjobs.com> and <hpjob.com> are for sale, evidenced by Respondent’s contact information.

B. Respondent

Respondent asserts that Complainant has no monopoly on the letters "H" and "P" and that there can be no public confusion because they are not competitors in the same marketplace.

Respondent further contends that it has rights and legitimate interests in respect to the disputed domain names because it is known as "Help Place Jobs Company," and Respondent is using the disputed domain names in connection with its employment services business.

C. Additional Submission

At the time of the filing of the Complaint, <hpjobs.com> and <hpjob.com> were linked to a pornographic website, directing traffic to <fatpig.com>. Respondent is the owner of the website <fatpig.com>. By September 11, 2001, the websites located at <hpjobs.com> and <hpjob.com> direct the Internet user to "Help Place Jobs Company."

Complainant is a California corporation, and since 1941, has been using the acronym "HP" in commerce to identify the company name, Hewlett-Packard. Hewlett-Packard is the owner of 44 trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for marks consisting of "HP." These registered marks, spanning from 1955 to the present, are registered in various International Classifications, primarily in the data processing and scientific fields. The Complainant has invested substantial sums of money in developing and marketing its business under the HP mark, and has developed goodwill and customer loyalty as a result.

Respondent registered the <hpjob.com> domain name on March 3, 2001, and registered the <hpjobs.com> domain name on May 25, 2001. At the time the Complaint was filed, Respondent linked the disputed domain names to a website containing pornographic material. Respondent’s contact information for the disputed domain names lists the administrative contact as "Movie Name Company ( For Sale Domain )."

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

Paragraph 4(a) of the 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 acronym "HP" is a famous, registered trademark on the Principal Register of the United States Patent and Trademark Office, establishing the Complainant’s ownership and exclusive right to use that mark.

The domain names at issue are not identical to the mark as registered. However, there are only slight differences between the registered domain names and the registered mark. Where the addition of a generic word comprises the difference, especially as related to a famous trademark, that change or addition does nothing to abate the likely confusion or the effective dilution of the mark. Since "JOB" and "JOBS" are generic terms, the likelihood of public confusion is found, and the disputed domain names are confusingly similar to Complainant’s famous HP mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

The Panel is not persuaded by Respondent’s contention that it is known as "Help Place Jobs Company," and that it’s use of the disputed domain names reflects an abbreviation of Respondent’s commonly known name. Respondent has no rights or legitimate interests in respect to the disputed domain names because Respondent is not making a bona fide offering of goods or services at the disputed domain names, is not commonly known by the disputed domain names, nor is it making a non-commercial or legitimate fair use of the domain names. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding "that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark").

The Panel is not persuaded by Respondent’s contention that it was engaged in a fair use of the disputed domain names prior to the initiation of this action by Complainant. Furthermore, Respondent has no rights or legitimate interests in respect to the disputed domain names because Respondent is redirecting Internet users to a pornographic website, apparently owned by Respondent. See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied, and Respondent has no rights or legitimate interests in respect to the disputed domain names.

Complainant has sufficiently proven that Respondent, prior to filing its Complaint, lured Internet users to a pornographic website, assumedly for commercial gain, by creating a likelihood of confusion with Complainant’s famous HP mark in violation of Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the website without permission from Complainant); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

Furthermore, the mere act of using a domain name confusingly similar to Complainant’s mark to redirect Internet users to websites containing pornographic material is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Respondent’s contact information, listing the administrative contact as "Movie Name Company ( For Sale Domain )," suggests that Respondent registered the domain name with the intent of offering the domain names for sale. The registration of a domain name confusingly similar to a Complainant’s mark, with the intention of selling the domain name further supports a finding of bad faith pursuant to Policy ¶ 4(b)(i). See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, "If you want this domain name, please contact me"); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding "the fact that the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name").

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 the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain names <hpjob.com> and <hpjobs.com> be transferred from Respondent to Complainant.