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Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard Company v. ABC Laserjet,
Inc.
Claim
Number: FA0303000150785
Complainant is
Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented
by Molly Buck Richard, of Thompson & Knight LLP. Respondent
is ABC Laserjet, Inc., Bowie, MD (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <abclaserjet.com>, registered with Network
Solutions, Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 19, 2003; the
Forum received a hard copy of the
Complaint on March 21, 2003.
On
March 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <abclaserjet.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has
verified that Respondent is bound by the 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 25, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 14, 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@abclaserjet.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 21, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <abclaserjet.com>
domain name is confusingly similar to Complainant’s LASERJET mark.
2. Respondent does not have any rights or
legitimate interests in the <abclaserjet.com> domain name.
3. Respondent registered and used the <abclaserjet.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 1984, Complainant has used the LASERJET mark
in association with a line of printers and compatible toner
cartridges. Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the LASERJET
mark (Reg.
No. 1,458,061 issued on September 22, 1987). Complainant has also registered or applied
to register various other marks with the USPTO that incorporate the LASERJET
mark in some
fashion. In addition,
Complainant has registered the DESKJET mark in over forty countries.
For nearly
twenty years, Complainant has invested a substantial amount of resources in an
effort to develop the goodwill associated
with LASERJET related products. The LASERJET mark has grown to be a valuable
source identifier, designating products that originate with Complainant.
Respondent
registered the <abclaserjet.com> domain name with Network
Solutions, Inc. on May 4, 2000.
Respondent uses the domain name to resolve to a website that solicits
the sale of cartridges for laser printers, including Complainant’s
LASERJET
printers. Respondent also sells toner
cartridges for laser printers manufactured by Complainant’s competitors, such
as Canon, Lexmark, Kyocera,
Panafax and Xerox.
Moreover, Respondent advertises remanufacturered cartridges for
Complainant’s printers.
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.
Complainant has
established its rights in the LASERJET mark through proof of trademark
registration with the USPTO, and use in commerce
since 1984.
Respondent’s <abclaserjet.com>
domain name incorporates Complainant’s entire LASERJET mark. The only difference between the second level
domain, “abclaserjet,” and the LASERJET mark is the prefix “abc.” The “abc” prefix holds no descriptive value,
and fails to detract from the dominating presence of Complainant’s LASERJET
mark. Therefore, Respondent’s <abclaserjet.com>
domain name is indistinguishable from Complainant’s mark, and the Panel finds
the domain name to be confusingly similar to said mark. See Oki Data Americas, Inc. v. ASD
Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name
incorporates a Complainant’s registered mark is sufficient to establish
identical or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that adding the suffixes "502" and "520" to the ICQ
trademark does
little to reduce the potential for confusion).
The Panel finds
that Policy ¶ 4(a)(i) is satisfied.
Respondent
did not submit a Response and thus has allowed Complainant’s allegations to go
unchallenged, including the allegation that
Respondent has no rights or
legitimate interests in the <abclaserjet.com> domain name. The Panel infers, from the lack of response,
that Respondent has no such rights or legitimate interests. 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”).
Furthermore, in
the absence of a response, the Panel will draw all reasonable inferences from
the Complaint in Complainant’s favor. See
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 uses
the <abclaserjet.com> domain name to divert Internet traffic to a
website where it sells products in competition with Complainant. Respondent sells new and remanufactured toner
cartridges for Complainant’s LASERJET printers. Hence, Respondent deliberately uses Complainant’s LASERJET mark
to attract customers to a website that sells LASERJET related products. Moreover, Respondent solicits sales of
printer cartridges for printers in competition with Complainant’s LASERJET line
of printers. Respondent’s commercial
use of the <abclaserjet.com> domain name for sales of goods in
direct competition with LASERJET related products does not constitute a bona
fide offering of goods
or services pursuant to Policy ¶ 4(c)(i), nor does
Respondent’s use represent a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). 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 others’ goods,
is not bona fide use); 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).
Respondent’s
WHOIS information lists ABC Laserjet, Inc. as the <abclaserjet.com>
domain name Registrant. However, there
is no affirmative offering of proof that Respondent is commonly known by that
name or specifically the <abclaserjet.com> domain name. Complainant argues that Respondent’s
apparent use of the “ABC Laserjet” trade name does not mean that Respondent is
commonly known
by this name, especially in light of the source identifying
significance of the LASERJET mark.
Without any attempt by Respondent to refute Complainant’s allegations,
the Panel concludes that Policy ¶ 4(c)(ii) cannot be employed
in Respondent’s
favor. 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); see also 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").
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <abclaserjet.com>
domain name and thus Policy ¶ 4(a)(ii) is satisfied.
Respondent’s use
of the <abclaserjet.com> domain name to compete with Complainant’s
LASERJET related products constitutes bad faith registration and use. A consumer who ends up using the confusingly
similar domain name would likely be confused as to Complainant’s affiliation
with the
resulting website that sells toner cartridges, especially since the
LASERJET moniker is used and cartridges for Complainant’s LASERJET
printers are
sold. In sum, Respondent’s use of the <abclaserjet.com>
domain name for commercial sales in competition with Complainant represents 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
Fossil Inc. v. NAS, FA 92525 (Nat.
Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by
registering the <fossilwatch.com>
domain name and using it to sell
various watch brands where Respondent was not authorized to sell Complainant’s
goods).
The Panel finds
that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <abclaserjet.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr.,, Panelist
Dated:
April 24, 3002
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