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Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard Company v. Inversiones HP
Milenium C.A.
Claim Number: FA0203000105775
PARTIES
Complainant
is Hewlett-Packard Company, Palo
Alto, CA (“Complainant”) represented by Eliane
Setton, of Gray, Cary, Ware &
Freidenrich LLP. Respondent is Inversiones HP Milenium C.A., Caracas,
VENEZUELA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hpmilenium.com>,
registered with Verisign - 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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 8, 2002; the Forum received
a hard copy of the
Complaint on March 11, 2002.
On
March 13, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the
Forum that the domain name <hpmilenium.com>
is registered with Verisign - Network Solutions, Inc. and that Respondent is
the current registrant of the name. Verisign
- Network Solutions, Inc. has verified that Respondent is bound by the Verisign
- 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
March 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 2,
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@hpmilenium.com by e-mail.
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
April 5, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed John
J. Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility
under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <hpmilenium.com>
domain name is confusingly similar to Complainant's HP mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
FINDINGS
Complainant has used its HP mark since
1946. Among other uses, Complainant
uses the mark in relation to desktops and workstations such as business and
home personal computers,
business and personal computer accessories, monitors,
notebook personal computers, printing and digital imaging products such as
printers, fax and copiers. Complainant
owns numerous trademark registrations for the mark including United States
Patent and Trademark Office Reg. Nos. 2,015,875
and 2,017,918.
Respondent registered the disputed domain
name on December 11, 1999. Respondent
used the disputed name in order to sell what appeared to be Complainant’s
products. Complainant’s investigation
revealed that the products sold on Respondent’s website were counterfeit HP
products. Complainant reported the
activity to the Venezuelan government and proceeded to dismantle an
international network manufacturing counterfeit
HP products. Respondent and its principal officers have
fled to the United States to avoid prosecution from the Venezuelan
authorities.
DISCUSSION
Paragraph 15(a) of 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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; and
(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
Complainant, through registration and
continuous use, has established that it has rights in its HP mark. Furthermore, Respondent’s <hpmilenium.com>
domain name is confusingly similar to Complainant’s mark because Respondent
incorporates the entirety of Complainant’s mark and
merely appended the generic
and misspelled term “milenium” (millennium) in the domain name. The addition of a generic word 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 Complainant
combined with a generic word
or term); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat.
Arb. Forum Aug. 29, 2000)
(finding that given the similarity of Complainant’s marks with the domain name,
consumers will presume the domain
name is affiliated with Complainant;
Respondent is attracting Internet users to a website, for commercial gain, by
creating a likelihood
of confusion with Complainant’s mark as to the source,
sponsorship, or endorsement of the Respondent’s website).
Furthermore the addition of a generic
top-level domain name to another’s mark does not create a distinct domain name
capable of overcoming
a claim of confusing similarity, because the top-level
domain name is irrelevant. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1146 (9th
Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . .
assume, as a rule of thumb, that the domain name
of a particular company will
be the company name [or trademark] followed by ‘.com’”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent’s use of a confusingly similar
domain name to sell counterfeit versions of Complainant’s products is not a
bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks); 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).
Furthermore, based on the fame of
Complainant's HP mark it would be very difficult for Respondent to show that it
had rights and legitimate
interests in the disputed domain name. Any use by Respondent of the <hpmilenium.com>
domain name, confusingly similar to Complainant's famous mark, was an
opportunistic attempt to attract customers via Complainant's
famous mark. 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).
Respondent is intentionally diverting
Internet users to its website for its own commercial gain and is therefore not
making legitimate
noncommercial, or fair use of the disputed domain pursuant to
Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948
(WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has
an intention to divert consumers of Complainant’s
products to Respondent’s site
by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet
traffic is not a legitimate use of the
domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent registered the disputed domain
name in order to sell counterfeit versions of Complainant’s products. Therefore, Respondent registered <hpmilenium.com>
in order create a likelihood of confusion as to the source, sponsorship, and
affiliation of its domain name and products.
This type of behavior is in bad faith pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13,
2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc
parts and robots
on website <fanuc.com> because customers visiting the
site were confused as to the relationship between Respondent and Complainant);
see
also Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the
Respondent attempted to attract customers to its website located at
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Based on the fame of Complainant’s HP
mark, and the fact that Respondent was using the domain name to sell
counterfeit versions of
Complainant’s products, it can be inferred that
Respondent had actual notice of Complainant’s mark when it registered the disputed
domain name. The registration of an
infringing domain name despite actual notice is evidence of bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given
the world-wide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Victoria's Secret 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
constituted
bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 name <hpmilenium.com> be transferred from Respondent
to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2002
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