DECISION

Hewlett-Packard Company and Hewlett Packard Development Company, L.P. v. Administraion Local

Claim Number:  FA0308000190511

PARTIES

Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P., Palo Alto, CA, USA (“Complainants”) represented by Molly Buck Richard, of Thompson & Knight LLP.  Respondent is Administraion Local, Hong Kong, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <h-p.com>, registered with Fabulous.Com Pty Ltd.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 22, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 29, 2003, Fabulous.Com Pty Ltd. confirmed by e-mail to the Forum that the domain name <h-p.com> is registered with Fabulous.Com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd. has verified that Respondent is bound by the Fabulous.Com Pty Ltd. 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 August 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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@h-p.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 October 3, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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

Complainants requests that the domain name be transferred from Respondent to Complainant Hewlett-Packard Company.

PARTIES' CONTENTIONS

A.  Complainants makes the following assertions:

1. Respondent’s <h-p.com> domain name is confusingly similar to Complainants’ HP mark.

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

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

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

FINDINGS

Complainant Hewlett-Packard Company, L.P., is the owner of numerous HP marks related to computer hardware, printers, peripherals, software and other goods and servcies. Complainants Hewlett-Packard Company and Hewlett Packard Development Company, L.P., along with their licensees (hereinafter “Complainant”) own or are authorized to use Complainant’s HP mark, which is registered worldwide, including in the United States (e.g. U.S. Reg. No. 1,733,457, registered on November 17, 1002) and in Hong Kong, Respondent’s place of domicile (e.g. Reg. No. 11921/2000, registered on October 25, 1991).

Complainant and its predecessors in interest have used the HP mark in commerce since 1941 in connection with the goods and services described above. In addition to spending substantial sums of money promoting the HP marks, Complainant operates many domain names incorporating the mark, including the <hp.com>, <hp.net>, <hp.org>, <hpshopping.com>, <hpprinters.com> and <hpprinter.com> domain names.

Respondent, Administraion Local, registered the <h-p.com> domain name on February 21, 2000. Until approximately August 21, 2003, the disputed domain name hosted a website that advertised computers, software and other computer related goods and services that were not Complainant’s products. This website asked Internet users if they wanted “to find the best computers and technology related websites?” and went on to note that “these h-p.com approved sites can help you with everything computers and technology related online.” Upon receiving a cease-and-desist letter from Complainant, Respondent removed all content from the disputed domain name. It currently remains inactive.

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 rights in the HP mark through registration of the mark with the appropriate governmental authorities worldwide, as well as through widespread and continuous use of the mark in commerce.

Respondent’s <h-p.com> domain name is confusingly similar to Complainant’s HP mark. The domain name merely hyphenates Complainant’s HP mark. As the HP mark is an abbreviation for the HEWLETT-PACKARD mark, Respondent’s shrewd placement of a hyphen at this point in Complainant’s mark isn’t enough to create a domain name that defeats a finding of confusing similarity under the Policy. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").

Accordingly, the Panel finds that the <h-p.com> domain name is confusingly similar to Complainant’s HP mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to operate a business that competes with Complainant’s business operations under the HP mark. Internet users who access the disputed domain name will often confuse Respondent’s claim that “these h-p.com approved sites can help you with everything computers and technology related online” with a claim that Complainant approves of these websites. Thus, Respondent’s use of the disputed domain name cannot be considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

Respondent submitted no evidence to contradict Complainant’s sound assertion that Respondent is not “commonly known by” the name “h-p.” Thus, the Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. See Tercent Inc. v. 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <h-p.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In this dispute, Respondent is using a confusingly similar variant of Complainant’s HP mark, both in its domain name and at its website, to promote products that compete with those that are offered to the public under the registered HP mark. Respondent’s use of the disputed domain name is therefore creating a likelihood of confusion in the minds of Internet users as to whether the actual sponsor or source of the disputed domain name is Complainant. As Respondent’s use creates this likelihood of confusion for commercial gain, its activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name pursuant to Policy 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel thus finds that Respondent registered and used the <h-p.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is 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 <h-p.com> domain name be TRANSFERRED from Respondent to Complainant Hewlett-Packard Company.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 13, 2003

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