Generic Top Level Domain Name (gTLD) Decisions

DECISION

Compaq Information Technologies Group, L.P. v. Express Technology, Inc.

Claim Number: FA0201000104186

PARTIES

The Complainant is Compaq Information Technologies Group, L.P., Houston, TX (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.  The Respondent is Express Technology, Inc., Tempe, AZ (“Respondent”) Stephen R. Winkelman, of Fennemore Craig.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <compaqspares.com>, registered with Network Solutions, Inc.

PANEL

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

Judge Richard B. Wickersham, (Ret.), Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 30, 2002; the Forum received a hard copy of the Complaint on January 31, 2002.

On February 5, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <compaqspares.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. 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 February 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 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@compaqspares.com by e-mail.

A timely Response was received and determined to be complete on February 25, 2002.

On March 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

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

PARTIES CONTENTIONS

A.   Complainant

Complainant is a publicly traded company on the New York Stock Exchange.  Compaq is a global leader in the development and manufacturing of computer hardware and software and the providing of computing and business solutions services, sold in over 200 countries.   Since being founded in 1982, Compaq has consistently pioneered the personal computer industry, both in innovation and record sales.  Compaq spends millions of dollars each year to advertise and promote Compaq.  Compaq showcases its award-winning products and services at its <compaq.com> website.  The COMPAQ trademark is one of the most famous trademarks in the world.  Compaq owns the domain name <compaq.com> which it registered on April 20, 1995.

B.   Respondent

Express Technology, Inc. has been in the business of selling spare parts for Compaq and other computers for 6-1/2 years, including Dell, IBM and others.  Express Technology usually purchases computers or spare parts for computers on the open market or at liquidation sales, but at times has purchased them directly from Compaq.   On February 27, 2001, Express Technology, Inc. registered the domain name <compaqspares.com>.  Express Technology chose this domain name because it accurately described Express Technology’s primary product, i.e., spare parts for Compaq computers.   Express Technology’s website demonstrates that Express Technology has used its domain name to fairly describe the products it sells: Compaq spares.  Express Technology’s use of the phrase “Compaq spares”as its domain name is a legitimate, good faith fair use.  Express Technology’s domain name accurately describes the primary product sold by Express Technology.  The Express Technology website makes it clear that it is not affiliated or sponsored or endorsed by Compaq.  Express Technology believes that it has acted in good faith and has a legitimate interest in its domain name, and that confusion is not likely.

C.   Additional Submissions

Compaq filed a timely Reply to Express Technology, Inc.’s Response.  Compaq asserts that Express Technology, Inc. is not an authorized reseller of Compaq or any of its operating companies.  Compaq has no business relationship with Respondent, and has never authorized Respondent to use the COMPAQ mark.  Compaq contends that Respondent’s use of the Domain Name is not Bona Fide.  Compaq asserts that Respondent’s use of the Domain Name is not Fair Use of Compaq’s Mark.  Compaq alleges that Respondent registered and uses the Domain Name in Bad Faith.

Respondent, Express Technology, filed a timely Response to Compaq’s Reply.

Respondent alleges that Compaq has the burden to prove (1) that Express Technology has no legitimate interest in a domain name <compaqspares.com> that describes 90% of what Express Technology sells and (2) that Express Technology has acted in bad faith in both registering and using the domain name.  But, alleges Respondent, neither Compaq’s Complaint nor its Reply satisfies this burden.

Express Technology notes that since 1995 it has been in the business of selling spare parts for computers.  Express Technology selected and uses a domain name, <compaqspares.com>, which accurately describes the primary products sold by Express Technology, and in 2001 Express Technology sold over $50,000 in Compaq spare parts through its website.   Indeed, almost all of Express Technology’s business (90%) is Compaq spares.   Express Technology asserts that Compaq has the burden of proving both that Express Technology’s domain name was registered and used in bad faith and that Express Technology has no rights or legitimate interest in respect of the domain name.

FINDINGS

I find that the domain name registered by the Respondent is identical or confusing similar to a trademark or service mark in which the Complainant, Compaq, has rights; further, that the Respondent has no rights or legitimate interests in respect of the domain name; and, the domain name has been registered and is being used in bad faith.  Further, I find that the request of the Complainant that the domain name be transferred from the Respondent to the Complainant be GRANTED.

DISCUSSION

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.

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts that it has rights in the COMPAQ mark because it has used the mark since 1982 in commerce.  Complainant also asserts that it owns six trademark registrations for COMPAQ with the United States Patent and Trademark Office, as well as an entire family of marks that incorporate the word.  The Panel so finds.

Complainant asserts that the disputed domain name <compaqspares.com> is confusingly similar to its COMPAQ mark because it incorporates the entirety of Complainant’s mark and merely adds the generic term “spares.”  The addition of a generic term to a well-known mark does not create a distinct mark capable of overcoming a claim of confusing similarity.  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).  Furthermore, the addition of “.com” is irrelevant when considering whether or not a mark is confusingly similar.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied).   The Panel so finds.

Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant asserts that Respondent is using the disputed domain name in order to sell its products as well as those of its competitors.   Complainant asserts that the use of <compaqspares.com> domain name to sell competing products is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the diputed domain names were confusingly similar to the Complainant’s mark and that the Repondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).  The Panel so finds.

The Panel finds that due to the distinct nature of Complainant’s COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant’s distinct and famous NIKE trademark).  The Panel so finds.

Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because it is using the domain to sell Complainant’s goods, as well as goods of Complainant’s competitors, without its permission for commercial gain.  See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant is that the Respondent lacks rights or legitimate interests in the domain name); see also Ullfrottré AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent legitimately sells goods originating from the Complainant, this does not give him the right to register and to use the mark as a domain name without the consent of the holder of the trademark); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).  The Panel so finds.

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant asserts that Respondent was on notice of Complainant’s mark when it registered the disputed domain name and therefore acted in bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria’s Secret et al v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants’ famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).  The Panel so finds.

Complainant asserts that Respondent’s <compaqspares.com> domain name is confusingly similar to Complainant’s mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the confusingly similar <compaqspares.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is ‘inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).  The Panel so finds.

Complainant further asserts that Respondent registered the disputed domain name in order to disrupt Complainant’s business because Respondent sells Complainant’s products as well as competing products on its website.  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).  The Panel so finds.

DECISION

I find that the domain name registered by the Respondent is identical or confusing similar to a trademark or service mark in which the Complainant, Compaq, has rights; further, that the Respondent has no rights or legitimate interests in respect of the domain name; and, the domain name has been registered and is being used in bad faith.   Further, I find that the request of the Complainant that the domain name be transferred from the Respondent to the Complainant be GRANTED.

                                                           

Hon. Richard B. Wickersham

Dated: March 13, 2002

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