Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hewlett-Packard Company, Palo Alto, CA, USA ("Complainant") represented by Courtney L. Jones, of Strasburger & Price, LLP. The Respondent is Laserjets.com, Brandon, FL, USA ("Respondent").

The domain name at issue is "laserjets.com", registered with Network Solutions, Inc.

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

Judge Ralph Yachnin as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 11, 2001; the Forum received a hard copy of the Complaint on April 13, 2001.

On April 17, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "laserjets.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 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 April 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 7, 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@laserjets.com by e-mail.

A timely response was received and determined to be complete on April 17, 2001.

On April 20, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

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

A. Complainant

In 1984 Complainant commenced using LASERJET in commerce and is the owner of three trademarks and service marks issued by the U.S. Patent Office, in addition to one pending trade mark for the mark LASERJET, each in connection with a product it sells. In addition, Complainant has invested large sums to cause consumers to recognize LASERJET as one of its products. Thereafter, on September 24, 1999, the Respondent Laserjets.Com registered the domain name "laserjets.com" with Network Solutions.

No website currently represents the Respondent’s domain name. Instead it provides links to categories of products entitled Books, Music, and other products (including pornographic material) and is confusingly similar to Complainant’s mark LASERJET.

At the website domain jester.com the subject domain name "laserjets.com" is offered for sale for not less than $ 1,000.

B. Respondent

The representative of the Respondent states, in an unsigned response, that he did not know the domain name related to anyone else, that it was registered for a softball team, and he does not know what became of it thereafter. He has since submitted a delete form at Network Solutions to remove the name from ownership. It will expire on September 24, 2001 and there is no intention to renew.

The Complainant has several United States Registered Trade Marks for the LASERJETS, and has used that mark for some of its business products since 1984. In addition it has expended large sums to cause consumers to know that that name relates to its products.

In 1999 Respondent obtained the subject domain name for a softball team, and is being used as links to categories of different products. Further, it is being offered for sale for at least $1,000.

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.

Complainant asserts that it has rights in the LASERJET mark because of its numerous registered trademarks. Complainant contends that the domain name is confusingly similar to its registered marks because the domain name simply adds the letter "s" to the end of its LASERJET mark. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

Complainant contends that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c) Respondent uses the domain names to link to a website that offers a number of general web services, including pornographic information. See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names faoscwartz.com, foaschwartz.com, faoshwartz.com, and faoswartz.com where Respondent was using these domain names to link to an advertising website).

No active website has been connected to the domain name in question. Respondent is merely using the domain name in connection with a website contains links to varying categories of products. The top of the website states "This site is currently under development or a potentially available domain property."

Under certain circumstances, passive holding of a domain name is evidence of bad faith registration and use. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I] t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Further, the website connected to the domain name provides links to many products and services available on the Internet (including pornographic material). Using a domain name, to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website is evidence of bad faith registration and use. Policy ¶ 4(b)(iv). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a website that offers a number of web services); Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

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 name "laserjets.com" be transferred from the Respondent to the Complainant.