DECISION

Compaq Information Technologies Group, L.P. v. Waterlooplein Ltd.

Claim Number: FA0204000109718

PARTIES

Complainant is Compaq Information Technologies Group, L.P., Houston, TX (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner LLP.  Respondent is Waterlooplein Ltd., Warwickshi, UNITED KINGDOM (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <compaq-broker.com>, registered with BulkRegister.

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 Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 16, 2002; the Forum received a hard copy of the Complaint on April 17, 2002.

On April 18, 2002, BulkRegister confirmed by e-mail to the Forum that the domain name <compaq-broker.com> is registered with BulkRegister and that Respondent is the current registrant of the name.  BulkRegister has verified that Respondent is bound by the BulkRegister 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 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 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@compaq-broker.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 May 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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

Respondent’s disputed domain name <compaq-broker.com> is confusingly similar to COMPAQ, a registered mark in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Since being founded in 1982, Complaint has blossomed into a global leader in the development and manufacturing of computer hardware and software.  Complainant sells computer-related products to customers in business, government, education, and home market sectors.  Complainant advanced itself as the world leader in personal computer sales in 1994 by revolutionizing computer prices.

Complainant has applied the COMPAQ mark, which is fanciful in nature, to a variety of computer-related goods and services; thus, the COMPAQ mark has become well-known around the world.  Complainant has continuously used COMPAQ as a trade name, trademark, and service mark from 1982 to the present.  On October 4, 1982, Complainant registered the COMPAQ mark with the United States Patent and Trademark Office as Reg. No. 1,467,066.  Complainant also owns multiple trademark registrations in the United Kingdom, where Respondent is located, for its computer-related products. 

In addition, Complainant owns a family of COMPAQ marks.  The family of COMPAQ marks includes registrations for:  COMPAQ CAPITAL, COMPAQ PC CARD SOLUTION and Design, COMPAQ CARE and Design, COMPAQ AUTHORIZED DEALER and Design, and COMPAQ INSIGHT MANAGER and Design.  Complainant also has registered the domain name <compaq.com> and operates a website at that address.

Respondent registered the disputed domain name on August 23, 2001, and uses it to operate a website that advertises the sale of Complainant’s goods at “brokerage rates.”  Respondent, however, has never been authorized by Complainant to resell its goods. 

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 has established its rights in the COMPAQ mark through registration with the U.S. Patent and Trademark Office and continuous subsequent use.

This disputed domain name is confusingly similar to Complainant’s COMPAQ mark, as it incorporates the mark in its entirety and merely adds the generic word “broker.”  The addition of a generic word to a famous trademark in a domain name does not defeat a confusing similarity claim.  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 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).

Moreover, the term “broker” has a connection to Complainant’s business.  Complainant is in the business of selling computers and computer products worldwide.  As a means of facilitating distribution Complainant authorizes certain entities to sell its products.  Respondent has not been authorized to sell Complainant’s products.  Respondent, however, conducts business selling Complainant’s products using the term “broker” in conjunction with Complainant’s COMPAQ mark.  The use of a related business term connected to Complainant’s mark creates confusing similarity pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

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

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the COMPAQ mark.  Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondent’s failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Further, due to Respondent’s lack of Response, the Panel may accept all of Complainant’s assertions as true, unless contradicted by the evidence in the record.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that Respondent's failure to respond to the Panel's additional requests warranted a finding for Complainant).

Respondent’s unauthorized use of the COMPAQ mark in connection with reselling Complainant’s goods infringes on Complainant’s rights in the mark.  By using the COMPAQ mark in an infringing manner, Respondent does not use the mark in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Nat’l Collegiate Athletic Ass’n 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 other goods is not bona fide use); 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).

There is no evidence, pursuant to Policy ¶ 4(c)(ii), that Respondent is commonly known by “Compaq-Broker,” “Compaq Broker,” or <compaq-broker.com>; Respondent is only known to this Panel as Waterlooplein Ltd.  Respondent, therefore, does not have any rights in the disputed domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).  Although Respondent apparently uses “Compaq Broker” as a trade name, such an unauthorized use does not establish legitimate interests in the domain name.  See Compaq Info. Techs. Group, L.P. v. Express Tech., Inc., FA 104186 (Nat. Arb. Forum March 13, 2002)(“due to the distinct nature of Complainant’s COMPAQ mark it is not possible for [the Respondent] to be commonly known as <compaqspares.com>”); see also Compaq Info. Techs. Group, L.P. v. Nye, FA 104677 (Nat. Arb. Forum March 22, 2002)(“because Complainant’s COMPAQ mark is so famous, [the Respondent] is presumed not to be commonly known by the mark or a domain name confusingly similar to that mark,”); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

Respondent’s explicit use of the COMPAQ mark in the disputed domain name evidences intent to misleadingly divert consumers for Respondent’s commercial gain and demonstrates no rights pursuant to Policy 4(c)(iii).  This is due to the fact that Respondent’s use of the disputed domain name suggests a connection with Complainant’s business.  See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR); see also 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).

The Panel finds that Respondent has no rights or legitimate interest in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses the disputed domain name in order to attract consumers for commercial gain to its website where it sells Complainant’s products without authorization.  At the website, Respondent uses the famous COMPAQ mark to identify the products it sells.  Also, Respondent trades under the name COMPAQ-BROKER.  This behavior creates a likelihood of confusion with Complainant’s COMPAQ mark as to the source, sponsorship, or affiliation of the website hosted at the disputed domain name pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Respondent’s registration of the disputed domain name disrupts Complainant’s business because it confuses consumers familiar with the COMPAQ mark who are looking to purchase Complainant’s goods.  This is a bad faith registration pursuant to 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 Respondent registered the names primarily for the purpose of disrupting Complainant's business); see also Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent automobile dealership specializing in Volkswagens to Complainant); see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant).

Furthermore, given the fame and notoriety of the COMPAQ mark, Respondent’s very registration and use of the disputed domain name constitute bad faith because they reflect an attempt to trade on the goodwill of the COMPAQ mark for its own benefit without authorization from Complainant.  See Compaq Info. Techs. Group, L.P. v. Shopcompaq.com, FA 99672 (Nat. Arb. Forum Oct. 17, 2001) (“Given the uniqueness of Complainant’s mark COMPAQ, there is no plausible explanation for Respondent’s registration of the domain name <shopcompaq.com> other than to trade on the goodwill of the COMPAQ name.”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

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 should be hereby granted.

Accordingly, it is Ordered that the <compaq-broker.com> domain name be transferred from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

May 29, 2002

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