Generic Top Level Domain Name (gTLD) Decisions

DECISION

Hewlett-Packard Company v. URLPro-2000

Claim Number:  FA0303000147314

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA, USA (“Complainant”) represented by Molly Buck Richard, of Thompson & Knight LLP. Respondent is URLPro-2000, George Town, Grand Cayman, KY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <deskjet-support.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 4, 2003; the Forum received a hard copy of the Complaint on March 6, 2003.

On March 12, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <deskjet-support.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 March 13, 2003, 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@deskjet-support.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 8, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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 makes the following assertions:

1. Respondent’s <deskjet-support.com> domain name is confusingly similar to Complainant’s DESKJET mark.

2. Respondent does not have any rights or legitimate interests in the <deskjet-support.com> domain name.

3. Respondent registered and used the <deskjet-support.com> domain name in bad faith.

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

FINDINGS

Complainant manufactures and distributes computer hardware, printers, peripherals, software and other related goods and services.  Since at least as early as 1987, Complainant has used the DESKJET mark in association with a line of printers and compatible ink cartridges.  Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the DESKJET mark (Reg. No. 1,498,420 issued on August 2, 1988).  In addition, Complainant has registered the DESKJET mark in over forty countries. 

For over fifteen years, Complainant has invested a substantial amount of resources in an effort to develop the goodwill associated with DESKJET related products.  The DESKJET mark has grown to be a valuable source identifier, designating products that originate with Complainant. 

Respondent registered the <deskjet-support.com> domain name on November 24, 2001.  Respondent uses the <deskjet-support.com> domain name to direct Internet traffic to a website entitled <landing.domainsponsor.com>.  This website contains the title “Try the Top Searches on the Web” and serves as search engine.  The website contains topical categories with links to relevant subjects under the category.  In addition, the website includes a list of “popular searches,” which includes links such as “Hp,” “Hewlett Packard,” “Printers,” “Hp Ink Cartridge,” “Hp Printer,” “Hp Printer Cartridge,” “Hp Inkjet Cartridge,” and many more Hewlett Packard specific links.  These links offer a variety of computer goods for sale, including goods associated with DESKJET products. 

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 its rights in the DESKJET mark through proof of trademark registration with the USPTO and continuous use for at least fifteen years. 

Respondent’s <deskjet-support.com> domain name incorporates Complainant’s DESKJET mark with the hyphenated addition of the generic word “support.”  The word “support” holds no source identifying significance, but used in conjunction with the DESKJET mark it suggests a relationship with Complainant’s DESKJET products.  The DESKJET mark is used to denote Complainant’s computer printers and related products, and attaching the word “support” to the mark implies an association with Complainant’s various support services for such products.  Therefore, the DESKJET mark remains the dominant feature in the <deskjet-support.com> domain name and the Panel finds that the domain name is confusingly similar to said mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); 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 Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Respondent uses the <deskjet-support.com> domain name to connect to a website entitled <land.domainsponsor.com>.  This website operates as a generic search engine with topical categories and links to subjects under those categories.  Moreover, the website contains a section labeled “popular searches,” which features many links primarily related to Complainant’s computer products.  Complainant relies on this information in asserting that Respondent has no rights or legitimate interests in the <deskjet-support.com> domain name.  Respondent has not come forward to justify such a use and demonstrate its rights to or legitimate interests in the <deskjet-support.com> domain name.  With no response challenging Complainant’s contentions, the Panel will accept all reasonable inferences as true.  Furthermore, the Panel will draw all reasonable inferences in Complainant’s favor.  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 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).

Respondent’s use of the <deskjet-support.com> domain name in connection with a generic search engine website, which refers to Complainant’s products, exhibits an intent to trade off of the DESKJET mark’s goodwill.  The links referencing Complainant’s products lead to websites offering on sale products similar to Complainant’s line of computer related products.  For example, one such website accessed through the links sells toner refill kits that can be used to refill toner cartridges for Complainant’s printers. Therefore, Respondent’s <deskjet-support.com> domain name use, absent any justification, does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Nothing on the record indicates that Respondent is commonly known by the <deskjet-support.com> domain name.  The WHOIS information for the domain name lists Respondent as URLPRO-2000.  Although the name is unorthodox, without any evidence to the contrary the Panel accepts it as Respondent’s common identity.  Therefore, Respondent has no rights or legitimate interests in the <deskjet-support.com> domain name 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 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).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <deskjet-support.com> domain name, and thus Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith

As previously mentioned, Respondent uses the <deskjet-support.com> domain name to provide links to websites that sell products that compete with Complainant’s products, in particular toner refill kits.  Since goods similar to Complainant’s DESKJET products can be purchased through the <deskjet-support.com> domain name, consumers searching for DESKJET information are likely to become confused as to Complainant’s affiliation.  The Panel presumes that Respondent profits from the generic search engine website, most likely drawing revenue from the entities associated with the various links.  Respondent’s use demonstrates bad faith under Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also 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).

Respondent’s comprehensive list of “popular searches” that refers to Complainant or products Complainant manufactures in every link indicates that Respondent was aware of Complainant.  The Panel further infers that Respondent knew of Complainant’s interests in the DESKJET mark, because there is no indication that Respondent has an independent interest in the mark.  Therefore, Respondent’s registration of the <deskjet-support.com> domain name with knowledge of Complainant’s interests in the DESKJET mark constitutes bad faith registration under Policy ¶ 4(a)(iii).  See 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"); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

The Panel finds that Policy ¶ 4(a)(iii) is satisfied. 

DECISION

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

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

 Honorable Paul A. Dorf (Ret.), Panelist

Dated:   April 14, 2003

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