DECISION

Compaq Trademark B.V. v. Anti-Globalization Domains

Claim Number:  FA0310000206310

PARTIES

Complainant is Compaq Trademark B.V. (“Complainant”), represented by Molly Buck Richard and Heather C. Brunelli of Thompson & Knight LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201.  Respondent is Anti-Globalization Domains  (“Respondent”), 5444 Arlington Ave. #g14, Bronx, NY 10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwcompaq.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically October 27, 2003; the Forum received a hard copy of the Complaint October 29, 2003.

On October 29, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <wwwcompaq.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 October 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2003, 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@wwwcompaq.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 November 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following assertions:

1. The domain name registered by Respondent, <wwwcompaq.com>, is confusingly similar to Complainant’s COMPAQ marks.

2. Respondent has no rights to or legitimate interests in the <wwwcompaq.com> domain name.

3. Respondent registered and used the <wwwcompaq.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the holder of numerous marks registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the COMPAQ mark.  Specifically, Complainant holds USPTO Registration Numbers 1,467,066 (registered December 1, 1987), 2,127,189 (registered January 1, 1998) and 2,183,368 (registered August 25, 1998) for the COMPAQ mark.

Complainant has continuously used its COMPAQ mark in commerce since at least as early as 1982.  Complainant uses its COMPAQ mark in connection with computer hardware, computer software, computing and business solutions services and other related goods and services. In 1994, Compaq was the largest global supplier of personal computers.  In 2000, Complainant’s COMPAQ-branded businesses represented over $40 billion in sales. 

Complainant operates a website at the <compaq.com> domain name.  Complainant’s website contains information about its products and services.  Complainant generates significant revenue from sales at the <compaq.com> website.  

Respondent registered the <wwwcompaq.com> domain name August 2, 2003.  Respondent is using the domain name to redirect Internet users to the politically-charged website located at the <abortionismurder.org> domain name.  The website connected with the <abortionismurder.org> domain name features graphic images of aborted fetuses and gives voice to anti-abortion propaganda.  When an Internet user tries to exit the <abortionismurder> website, another pop-up window opens with additional graphic images.  Complainant has not authorized Respondent to use its COMPAQ mark in this or any other manner. 

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

The Panel finds that Complainant established by extrinsic proof in this proceeding that it has rights to and interests in the COMPAQ mark through registration of the mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain name registered by Respondent, <wwwcompaq.com>, contains Complainant’s entire COMPAQ mark with the addition of the “www” prefix, minus the period.  In the past, Panels have found that the “www” prefix is not sufficient to distinguish a domain name from another’s mark when the domain name wholly incorporates another’s mark with the addition of the “www” prefix.  Likewise, Respondent’s elimination of the period between the “www” prefix and Complainant’s mark does not distinguish the domain name from Complainant’s mark because Respondent is taking advantage of a common typographical error.  Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.  Respondent failed to submit a Response in this proceeding and failed to rebut Complainant’s allegations that Respondent lacks rights and legitimate interests in the <wwwcompaq.com> domain name.  Since there is no evidence before the Panel asserting otherwise, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise).

Respondent has not been authorized by Complainant to use its COMPAQ mark.  In addition, Respondent has not produced any evidence for the Panel showing that it is commonly known by the <wwwcompaq.com> domain name.  Consequently, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interests in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

Respondent is taking advantage of Complainant’s customers and potential customers who inadvertently forget to type the period between “www” and Complainant’s COMPAQ mark when trying to reach Complainant’s website.  When Internet users forget to type the period in Complainant’s domain name, Respondent redirects Internet users to the politically-charged <abortionismurder.org> website.  Thus, the Panel finds that Respondent’s diversionary use of the <wwwcompaq.com> domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using a domain name containing Complainant’s protected mark.  Respondent is using the <wwwcompaq.com> domain name to divert Internet traffic to a graphic and highly inflammatory website, which is dedicated to voicing anti-abortion views that are not necessarily endorsed by Complainant.  In the past, Panels have found that such unauthorized use of another’s mark to divert Internet users to a website featuring politically-charged content is evidence that the domain name was registered and used in bad faith.  Thus, the Panel finds that Respondent registered and used the domain name in bad faith.  See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (“when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).

Respondent is using the <wwwcompaq.com> domain name, which incorporates Complainant’s entire mark, to expose Internet users who forget to type a period after the “www” portion of Complainant’s web-address to the provocative content at the <abortionismurder.org> website.  When Respondent uses such common typographical errors to ensnare Internet users, it is engaged in typosquatting, which is a prima facie case of bad faith under the Policy.  Thus, the Panel concludes that Respondent registered and used the <wwwcompaq.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net, D2003-0232 (WIPO May 22, 2003) (the missing period between the “www” and “canadiantire.com” in the <wwwcanadiantire.com> domain name is evidence of bad faith registration and use of the domain name). 

Accordingly, 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 relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwcompaq.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 8, 2003

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