DECISION

Hewlett-Packard Company v. OfficeOnWeb Ltd.

Claim Number:  FA0303000151537

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Molly Buck Richard, of Thompson & Knight LLP. Respondent is OfficeOnWeb Ltd., Evergreen, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <laserjet-cartridge.com>, registered with Tucows, Inc.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 25, 2003; the Forum received a hard copy of the Complaint on March 27, 2003.

On March 25, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <laserjet-cartridge.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@laserjet-cartridge.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 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <laserjet-cartridge.com> domain name is confusingly similar to Complainant’s LASERJET mark.

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

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

B.  Respondent    

1. Respondent claims that Complainant’s mark, LASERJET, is generic and,

            therefore, the domain name at issue does not infringe on a mark in which                            Complainant has protectable rights.

           

            2.  As a reseller of Complainant’s products, including laserjet cartridges,                                    Respondent needs to use the domain name at issue to direct web surfers to his                     main website.

            3.  Respondent claims that he did not register the domain name at issue in bad                    faith but to assist in his sale of Complainant’s products.

C.            The parties have filed Additional Submissions which have been deemed                      timely, and the additional arguments and rebuttals therein have been taken into             consideration in rendering this decision.

FINDINGS

Complainant, Hewlett-Packard Co., is the owner of numerous marks regarding its 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 its line of printers and their related toner cartridges. Complainant’s LASERJET mark was registered with the U.S. Patent and Trademark Office (“USPTO”) on September 22, 1987 (Reg. No. 1,458,061), and denotes “non-impact printer for office and data processing” and “printer product brochures, data sheets and operator and technical reference manuals.” Complainant’s LASERJET mark is registered in over 40 countries throughout the world.

Complainant has invested substantial resources in developing and advertising the LASERJET mark. Complainant’s advertising campaign is directed at the consuming public, which recognizes the LASERJET mark as representing Complainant’s printing products and related services. Over 18 years of promotional efforts have made Complainant’s LASERJET mark famous and distinct.

Complainant also holds numerous domain name registrations that incorporate its LASERJET mark. More specifically, Complainant has registered the following domain names: <laserjet.com>, <laserjet.net>, <laserjet.org>, <laserjet.info> and <laserjet.us>.

Respondent, OfficeOnWeb Ltd., registered the <laserjet-cartridge.com> domain name on November 1, 2000. Respondent’s domain name resolves to a website (<printpage.com>) that advertises inkjet cartridges and laser toner cartridges manufactured by Complainant as well as Complainant’s competitors, such as Apple, Canon, Epson, Lexmark, Panasonic, Sharp and Xerox.

Complainant asserts that it never authorized Respondent to use its registered trademarks separate and apart from its own manufactured goods for which Respondent is a reseller.

In correspondence dated February 2002, Respondent communicated to Complainant that it would not transfer the domain name registration voluntarily, and suggested that Complainant purchase the registration for “fair use value.” In its Additional Submission, Respondent indicates that it seeks reprogramming costs, lost revenue, expenses for time lost for participating in this proceeding and other expenses which are “… more than just domain ownership.”

Respondent argues that it is engaged in a legitimate business that offers laserjet, laserjet compatible and laserjet remanufactured cartridges. See Grobet File Co. of Am., Inc. v. Exch. Jewelry Supply, FA 94960 (Nat. Arb. Forum July 14, 2000) (holding that “[w]ithin its rights as a distributor, therefore, Respondent registered the domain name and sold Complainant's legitimate goods online.  In sum, Respondent has successfully shown that it was using the <grobet.com> domain name and web site in connection with the bona fide offering of goods and services, before any notice of the dispute”); see also Hewlett Packard Co., v. Napier, FA 94368 (Nat. Arb. Forum Apr. 28, 2000) (finding that Respondent’s sale and service of Complainant’s software established its legitimate interest in the domain name <openview.com>, which contained Complainant’s trademark OPENVIEW); see also ABIT Computer Corp. v. Motherboard Super Store, Inc., D2000-0399 (WIPO Aug. 8, 2000) (finding “that Respondent demonstrated bona fide use of the domain name in the offering for sale by retail of Complainant's motherboards and that such use commenced prior to notice of the dispute”).

Respondent argues that it is an online store, and that although it sells products produced by other companies, its situation is no different “than the local store,” which sells numerous goods that compete in different areas of office 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."

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 rights in the LASERJET mark by registration and continuous use of the mark in commerce since at least 1984. Although Complainant’s LASERJET mark may appear to be descriptive, Complainant’s promotional efforts and extensive advertising campaign have aided the LASERJET mark in acquiring significant secondary meaning among the consuming public. Additionally, Complainant’s LASERJET mark is registered on the Principal Register of the USPTO, a position that indicates Complainant’s mark is distinct. See The Men’s Wearhouse, Inc. v. Brian 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 15 U.S.C. § 1052(e)-(f); Lanham Act § 2(f) (A term is generally not viable for registration if it is “merely descriptive” when applied to the goods of the applicant. However, an exception is made for terms which, although merely descriptive, have become “distinctive of the applicant’s goods in commerce.” If such “secondary meaning” is shown, the mark may be registered).

Respondent’s  <laserjet-cartridge.com> domain name is confusingly similar to Complainant’s LASERJET mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and merely adds “cartridge,” a generic word that partially describes Complainant’s LASERJET product. The addition of industry-related words to famous marks fails to create a distinguishable domain name for the purposes of Policy ¶ 4(a)(i). 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 PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Respondent has offered no evidence that Complainant’s LASERJET mark has become generic.

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

Rights or Legitimate Interests

Complainant asserts that Respondent is not licensed to use its LASERJET mark separate and apart from Complainant’s manufactured goods. Once Complainant asserts that Respondent is lacking rights and legitimate interests in the disputed domain name, the burden shifts to Respondent to provide credible evidence that supports its claim to the domain name. Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

As stated, the subject domain name resolves to a commercial website where Respondent advertises ink cartridges and laser toner cartridges for sale. Unrefuted evidence reveals that Respondent’s website uses Complainant’s LASERJET mark to create Internet interest in products that are not only affiliated with Complainant, but also Complainant’s competitors. Using a domain name that is confusingly similar to Complainant’s LASERJET mark to sell similar products, products that Complainant’s mark specifically denotes, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it equate to a 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 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).

Respondent is not authorized or licensed by Complainant to make use of the LASERJET mark in the domain name. Although Respondent may offer Complainant’s LASERJET products via its Internet “OfficeOnWeb” entity, merely selling another’s goods does not entitle one to market oneself under the mark absent permission from the primary user. Therefore, Respondent fails to establish rights in the domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

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

Registration and Use in Bad Faith

Respondent registered and used the subject domain name in bad faith as described under Policy ¶¶ 4(b)(i) and (iv).

Complainant never authorized Respondent to use the LASERJET mark for any purpose. Upon learning that Respondent had registered the <laserjet-cartridge.com> domain name, Complainant’s counsel sent a letter to Respondent seeking voluntary transfer of the domain name registration. Respondent replied and refused to transfer its rights in the domain name voluntarily, instead stating that Complainant “MUST purchase the domain from us for fair use value. The offer should recognize our existing expense and the value of the site for the next five years.” Respondent’s statements suggest it is holding the domain name hostage, seeking to solicit purchase bids beyond out-of-pocket expenditures. Respondent’s exploitation of Complainant’s rights and goodwill in the LASERJET mark evidence bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Furthermore, by using the <laserjet-cartridge.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s LASERJET mark. The infringing domain name is used in connection with a commercial website that advertises the products of Complainant’s competitors. Such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <laserjet-cartridge.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  May 21, 2003

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