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Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard
Company and Hewlett-Packard Development Company, L.P. v. Kevin Rochford
Claim
Number: FA0410000351161
Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented
by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas,
TX 75201. Respondent is Kevin
Rochford (“Respondent”), represented by Martin Galvin, of Reminger & Reminger, 1400 Midland Building, 101 Prospect
Avenue West, Cleveland, OH 44115-1093.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hpstore.net>, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
26, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 26, 2004.
On
October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hpstore.net> 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
October 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 18, 2004 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@hpstore.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 12, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
James A. Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <hpstore.net>
domain name is confusingly similar to Complainant’s HP mark.
2. Respondent does not have any rights or
legitimate interests in the <hpstore.net> domain name.
3. Respondent registered and used the <hpstore.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
is the holder of 50 trademarks and service marks registered with the United
States Patent and Trademark Office (“USPTO”)
for the HP mark. Some of Complainant’s marks registered on
the Principal Register include USPTO Registration No. 2,404,023 for the HP mark
(registered
on August 22, 2000), Registration No. 2,414,234 for the HP
VISUALIZE mark (registered on December 19, 2000) and Registration No.
2,261,482
for the HP STAR (registered on July 13, 1999).
Complainant also uses its HP marks worldwide, and has registrations for
its HP marks in some 140 countries around the world (for example,
Registration
No. 52,499 for the HP mark in the European Community).
Complainant
uses its marks in connection with computers, hardware, printers, peripherals,
software and other related goods and services.
Since at least as early as 1941, Complainant has used its HP marks in
association with its goods, services and advertising for its
goods and services
throughout the world.
Complainant
also holds various domain name registrations for domain names incorporating its
HP marks. For example, Complainant
operates websites at the <hp.com>, <hp.net> and <hp.org>
domain names, which display information
about its products and services as well
as information about the company.
Complainant also operates a commercial website at the
<hpstore.com> domain name where it sells its products directly to
consumers.
At one
time, Respondent’s company, Ask Coleman, Inc., was an authorized reseller of
Complainant’s products that had entered into a
business development partner
agreement with Complainant. An express
provision in this agreement barred Respondent from registering any domain names
containing Complainant’s HP mark.
Respondent, however, registered the <hpstore.net> domain
name on December 6, 2001. Respondent
uses the domain name to advertise Complainant’s products as well the products
of Complainant’s competitors.
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.
The Panel finds
that Complainant has rights in the HP mark as evidenced by its registration
with the U.S. Patent and Trademark Office.
See Men’s Wearhouse, Inc. v.
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 Janus Int’l
Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Additionally,
Respondent’s <hpstore.net> domain name is confusingly similar to Complainant’s HP
mark because the only difference is the addition of the word “store.” The Panel finds that adding the generic word
“store” does not significantly distinguish the domain name from the mark, and
thus cannot
overcome a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See
Space Imaging LLC v. Brownell, 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 Brambles Indus. Ltd. v. Geelong Car
Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the
domain name <bramblesequipment.com> is confusingly similar because the
combination
of the two words "brambles" and "equipment" in
the domain name implies that there is an association with Complainant’s
business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
The fact that
Respondent was a licensed reseller of Complainant’s products when Respondent
registered the <hpstore.net> domain name does not give Respondent
rights or legitimate interests in a domain name confusingly similar to
Complainant’s mark pursuant
to Policy ¶ (4)(a)(ii). See Allen-Edmonds
Shoe Corp. v. Takin’ Care of Bus.,
D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement
between the parties, the reseller does not have the
right to use the licensor’s
trademark as a domain name”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s
products, did not have rights or
legitimate interests in a domain name that was
confusingly similar to Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that because Respondent was once a licensed reseller of Complainant’s products,
Respondent had actual knowledge of
Complainant and Complainant’s marks when
registering the <hpstore.net> domain name. See Entrepreneur Media, Inc. v. Smith,
[2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. 2002) ("[w]here an alleged infringer chooses
a mark he knows to be similar to another, one can infer an intent to
confuse");
see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly
known mark at the time of registration).
Additionally,
Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) by registering
a domain name confusingly similar
to Complainant’s mark and using it to market competing products. The <hpstore.net> domain name
is confusingly similar to the HP mark. The fact that the domain name resolves to a site that advertises
products of Complainant’s competitors is evidence that Respondent
intentionally
registered a domain name confusingly similar to Complainant’s mark in order to
siphon off traffic from unsuspecting
Internet users. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from Complainant's marks suggests that Respondent, Complainant’s competitor,
registered
the names primarily for the purpose of disrupting Complainant's
business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business).
Furthermore, the
fact that Respondent, a licensed reseller of Complainant’s products, was
specifically barred from registering domain
names including Complainant’s HP
mark is further evidence that Respondent registered and used the disputed
domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. OfficeOnWeb
Ltd., FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s
unauthorized use of the LASERJET mark to operate as a reseller
of Complainant’s
products constituted bad faith use and registration pursuant to Policy ¶
4(b)(iv)); see also Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb.
Forum Mar. 1, 2000) (holding that the registration of a domain name in
violation of a license agreement is evidence
that the domain name was
registered and used in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hpstore.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
December 29, 2004
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