DECISION

Hewlett-Packard Company v. Raveclub Berlin a/k/a Raveclub

Claim Number:  FA0302000146572

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Thompson & Knight LLP. Respondent is Raveclub Berlin a/k/a Raveclub, Cherry Hill, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 21, 2003; the Forum received a hard copy of the Complaint on February 24, 2003.

On February 24, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by e-mail to the Forum that the domain names <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> are registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.Com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 February 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 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@officejetsuport.com, postmaster@oficejetsupport.com and postmaster@hewletpackardprinters.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 March 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <officejetsuport.com> and <oficejetsupport.com> domain names are confusingly similar to Complainant’s OFFICEJET mark. Respondent’s <hewletpackardprinters.com> domain name is confusingly similar to Complainant’s HEWLETT PACKARD mark.

2. Respondent does not have any rights or legitimate interests in the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> domain names.

3. Respondent registered and used the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> domain names in bad faith.

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

FINDINGS

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HEWLETT PACKARD mark, including Reg. No. 1,861,560 (registered on November 8, 1994) related to computers and computer accessories such as printers and printer accessories. Complainant maintains its main website at the <hewlettpackard.com> domain name, which Complainant registered on October 17, 1996.

Complainant holds a trademark registration with the USPTO for the OFFICEJET mark (Reg. No. 1,968,861 registered on April 16, 1996) in relation to peripheral devices for use with computers and data processing equipment, namely printers; facsimile machines; copy machines; and multiple-function machines for the purpose of printing, copying, sending and receiving facsimile messages; parts therefor; and user manuals supplied therewith. Complainant registered the domain name <officejetsupport.com> on January 19, 1999, which resolves to the support section of Complainant’s website.

Respondent registered the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> domain names on September 8, 2001. Respondent is using the disputed domain names to redirect Internet traffic to pornographic websites.

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 draw such inferences it 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 and/or Confusingly Similar

Complainant has established that it has rights in both the HEWLETT PACKARD and OFFICEJET marks through registration with the USPTO.

Respondent’s domain names are confusingly similar to Complainant’s registered trademarks because the disputed domain names incorporate Complainant’s marks and simply include common misspellings and generic terms added to Complainant’s marks. Neither common misspellings nor the addition of generic terms sufficiently differentiate Respondent’s domain names from Complainant’s marks for Respondent to survive a confusing similarity challenge pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not favored this Panel with a Response in this proceeding. Therefore, the Panel accepts all reasonable inferences and allegations in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, because of Respondent’s failure to respond to the Complaint, the Panel presumes that Respondent lacks any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent is using the disputed domain names to redirect Internet traffic to a portal to pornographic websites. The use of a domain name confusingly similar to a registered trademark to redirect Internet users to a pornographic website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Furthermore, Respondent has provided this Panel with no circumstances and there is no evidence in the record to establish that Respondent is commonly known by OFFICEJET SUPORT, <officejetsuport.com>, OFICEJET SUPPORT, <oficejetsupport.com>, HEWLET PACKARD PRINTERS or <hewletpackardprinters.com>. Thus, Respondent has failed to establish its rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain names to redirect Internet traffic to a portal to pornographic websites. Panels have consistently held that the use of a domain name confusingly similar to a registered trademark to redirect Internet users to a pornographic website is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use).

Moreover, Respondent’s registration of the disputed domain names establishes a pattern of “typosquatting,” which is also evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

Respondent has a long history of registering domain names confusingly similar to others’ registered trademarks, including a history with this particular Complainant. Respondent’s registration of the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> domain names establishes a pattern of preventing Complainant from reflecting its mark in a corresponding domain name, which is evidence of bad faith pursuant to Policy 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <officejetsuport.com>, <oficejetsupport.com> and <hewletpackardprinters.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 27, 2003

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