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Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. Mazhar Ali
Claim Number: FA0410000353151
PARTIES
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, USA. Respondent is Mazhar Ali (“Respondent”), represented
by Ashish Christopher Sen, of Grand Computer LLC, Ground
Floor, Al Sharafi Building, Ramada Signal, Bur Dubai, Dubai, UAE.
The
domain name at issue is <hpdubai.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge Irving H. Perluss
(Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
27, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 28, 2004.
On
October 29, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hpdubai.com>
is registered with Network Solutions, Inc. and that the 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@hpdubai.com by e-mail.
A
timely Response was received and determined to be complete on November 15, 2004.
A
timely Additional Submission was received from Complainant on November 16,
2004.
An
untimely Additional Submission from Respondent was received on November 29,
2004. Although untimely, the Panelist
will consider the Additional Submission, as it is his practice to consider all
matters on the merits.
On November 29,
2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant is the owner of over 40
trademarks and service marks registered on the Principal Register of the United
States Patent
and Trademark Office for HP marks. Complainant also uses the HP marks worldwide, and has registrations
for trademarks and service marks containing HP in over 140 countries
and
regions around the world. Complainant
has held six registrations for the HP marks in the United Arab Emirates, the
country where Respondent has been located
since 1994. The HP mark was first used by Complainant in commerce at least as
early as 1941, was continuously used thereafter, and is still in
use on or in
connection with Complainant’s goods, services, and advertising for its goods
and services throughout the world.
2. The
HP marks have been found by panelists of the National Arbitration Forum to be
famous and distinctive marks. See
Hewlett-Packard Co. v. Kim Yong Hwan,
FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (“Complainant’s mark ‘HP’ is famous
and distinctive, and, thus, is entitled to the higher
protection afforded it by
law”).
3. Complainant
owns domain name registrations for names incorporating the HP marks, such as
<hp.com>, <hp.net>, <hp.org>,
and <hpshopping.com>.
4. The
disputed domain name <hpdubai.com> is confusingly similar to
Complainant’s famous HP marks, which were registered as a trademark throughout
the world long before Respondent
registered the domain name on September 27,
1999.
5. The
<hpdubai.com> domain name contains Complainant’s famous HP marks
along with the geographically descriptive term “dubai” and the generic
top-level
domain “.com.” The mere
addition of a geographically descriptive term and a generic top-level domain to
a mark does nothing to avoid confusing similarity
to that mark.
6. Respondent
has no rights or legitimate interest in the disputed domain name because
Respondent is not commonly known by Complainant’s
mark, nor has Respondent used
the domain name in connection with a bona fide offering of goods or services or
a legitimate noncommercial
or fair use.
Respondent is exploiting the fact that Hewlett-Packard’s customers and
potential customers may assume that a website located at a
domain name
incorporating the HP marks is affiliated with or sponsored by Complainant.
7. The
disputed domain name is being used in connection with a website that advertises
computers, computer peripherals, parts, accessories
and other electronics. Respondent was never given permission or
authorization by Complainant to use the HP marks in his domain name. Respondent has not used the domain name in
connection with a bona fide offering of goods or services. The site advertises the products of
Complainant as well as the products of Complainant’s major competitors such as
Epson, Dell, Sony,
and Fujitsu.
8. Respondent
registered and is using the disputed domain name in bad faith. By using the <hpdubai.com>
domain name, Respondent has intentionally attempted to attract, for commercial
gain, Internet users to Respondent’s website by creating
a likelihood of confusion
with Complainant’s HP marks as to the source, sponsorship, affiliation, or
endorsement of Respondent’s
website.
9. Respondent
is unfairly and opportunistically benefiting from the goodwill associated with
Complainant’s HP marks and is using the
<hpdubai.com> domain name,
in part, to provide products similar to those of Complainant. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶
4(b)(iv.).
10. Respondent
registered the disputed domain name with actual knowledge of Complainant’s
rights, which is evidence of bad faith registration
and use with regard to
Policy ¶ 4(a)(iii).
B.
Respondent
1. The
<hpdubai.com> domain name has been used by Respondent’s website
since registration in October 1999.
2. The
“HP” in the disputed domain name is an abbreviation for “Hot Products & Hot
Prices.”
3. Respondent
has never claimed, nor given the impression, that Respondent is in anyway
affiliated with the Hewlett-Packard Company.
4. Respondent
owns a computer company and hence Respondent’s website will carry computer and
computer-related products from many manufacturers.
5. Respondent
has been advertising its website in the region’s leading newspaper Gulf News for the last four years. Respondent has placed several full-page and
smaller advertisements in the newspaper Gulf
News, and large sums of money have been spent on the marketing of this
site.
6. Respondent
has promoted his website located at the <hpdubai.com> domain name
for the last four years at GITEX, the region’s largest computer exhibition.
7. Complainant
has taken no action against Respondent’s use of the disputed domain name for
over four years. Complainant is
unjustly trying to claim the disputed domain name only after Respondent has
made it popular in this region.
8. Respondent
will place a disclaimer on its website, and, if requested, will remove all of
Complainant’s products from the website.
C.
Complainant’s Additional Submission
1. In
his Response, Respondent contends that the “HP” in the <hpdubai.com> domain name
stands for ‘Hot Products & Hot Prices.”
This contention is without merit.
Respondent clearly registered and uses the <hpdubai.com>
domain name with full knowledge of Complainant’s HP marks and with the intent
to attract Internet users seeking Complainant to Respondent’s
own website.
2. Respondent
did not use the terms “Hot Products” or “Hot Prices” on Respondent’s website
prior to the filing of this Complaint.
3. The
Internet Archive at <web.archive.org> demonstrates that Respondent has
hosted a website at the <hpdubai.com> domain
name since February 29,
2000. The archived web page from
February 29, 2000, illustrates that the “HP” in the <hpdubai.com>
domain name was clearly meant to refer to Hewlett-Packard, as the title to the
page reads, “Welcome to Hewlett Packard Dubai” and
the products advertised on
the page appear to be Complainant’s HP branded products.
4. Even
if Respondent used “Hot Products Hot Prices” on previous versions of his
website, this does not change the fact that Respondent
used HP in his domain
name with full knowledge that the HP portion of the domain name was the
registered trademark of another party
and with the intent of attracting
customers to his website based upon the fame of the HP mark.
5. Respondent
asserts that Complainant waited for four years before bringing this proceeding
and filed a Complaint only after Respondent
popularized the disputed domain
name in Respondent’s region.
Complainant did not delay in filing this Complaint. Complainant first discovered Respondent’s
registration and use of the disputed domain name when associates of Complainant
in Dubai
saw an advertisement and brought it to Complainant’s attention on or
about October 16, 2004. This Complaint
was brought on October 27, 2004. This
is a “delay” of less than two weeks.
Complainant did not sit on its rights and wait for Respondent to build
up goodwill in the domain name.
D. Respondent’s Additional Submission
1. Respondent
is one of the oldest computer companies in the UAE.
2. About
four years ago, Respondent decided to market its products online. Respondent wanted to sell the different
brands that it carries under different domain names so as to be very specific
and clear to
customers.
3. Accordingly,
Respondent registered <microsoftdubai.com>, <compaqdubai.com> and <hpdubai.com>. Respondent then proceeded to upload each
manufacturer’s products on the respective domain name.
4. Sometime
later it was brought to Respondent’s notice that it was not allowed to do that
so Respondent relinquished rights in the <microsoftdubai.com>
and
<compaqdubai.com>.
5. Respondent,
however, retained <hpdubai.com> and put up its byline on the
website. Respondent’s logo on the site
has no resemblance to the Hewlett-Packard logo. Even the color schemes are different. Respondent’s contact information clearly states one of
Respondent’s companies’ names as well as location.
6. It
was in October 2004 that Respondent decided to market Hewlett-Packard products
on the site.
7. Respondent
has no intention of misleading anyone and is willing to drop all
Hewlett-Packard products from the site if directed.
FINDINGS AND DETERMINATIONS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
It is found and determined that the <hpdubai.com>
domain name is confusingly similar to Complainant’s marks.
Complainant is the owner of over 40
trademarks and service marks registered on the Principal Register of the United
States Patent
and Trademark Office for the HP marks. Complainant also uses the HP marks worldwide, and has
registrations for trademarks and service marks containing HP in over 140
countries
around the world. Complainant
has held six registrations for the HP marks in the United Arab Emirates, the
country where Respondent has been located
since 1994.
Complainant also owns domain name
registrations for domain names incorporating the HP marks, such as
<hp.com>, <hp.org>,
and <hpshopping.com>.
Complainant’s HP marks have become famous
and distinctive. See Hewlett-Packard Co. v. Yong , FA 95358 (Nat. Arb. Forum Sept.
7, 2000) (“Complainant’s mark ‘HP’ is famous and distinctive, and, thus, is
entitled to the higher
protection afforded it by law”).
It is evident that the <hpdubai.com>
domain name is confusingly similar to Complainant’s HP marks because the only
difference is the addition of the geographic term “dubai,”
which does not
significantly distinguish the domain name from the mark. See
Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that
the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com>
are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark);
see also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between
Complainant’s VERISIGN mark and the <verisignindia.com>
and
<verisginindia.net> domain names where Respondent added the word “India”
to Complainant’s mark).
The award in Hewlett-Packard Company v. Collazo, FA 114628 (Nat. Arb. Forum Mar.
5, 2003) involving the <hpcanada.com> domain name is directly on
point. The Panel held:
“The domain name <hpcanada.com> registered by Collazo is confusingly similar to
Complainant’s famous HP mark, which was registered as a trademark throughout
the world long before Collazo registered the domain name on November 3,
2002. The Respondent’s domain name
contains Complainant’s exact mark, ‘HP,’ with a non-distinctive geographically
descriptive term, ‘Canada,’
and the most common URL suffix ‘.com.’ The mere addition of descriptive or generic
words to a famous mark, however, does not eliminate the similarity between the
domain
name and the trademark. Caterpillar Inc. v. Vine, FA 97097 (Nat.
Arb. Forum June 22, 2001).”
Complainant has established the required
first prong of the Policy.
It is found and determined that
Respondent has no rights or a legal interest in the disputed domain name.
It is apparent that Respondent has
utilized the disputed domain name and the marks on which it is predicated to
sell Complainant’s
goods and the goods of Complainant’s competitors. Complainant has not licensed Respondent to
sell its products. Accordingly, it is
found that Respondent’s appropriation of Complainant’s marks to sell
Complainant’s and Complainant’s competitors’
goods is not 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
G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002)
(finding Respondent’s use of the disputed domain name to solicit pharmaceutical
orders
without a license or authorization from Complainant does not constitute
a bona fide offering of goods or services under Policy ¶
4(c)(i)); see also Computerized Sec. Sys., Inc. v.Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s
appropriation of Complainant’s mark to market products that
compete with Complainant’s
goods does not constitute a bona fide offering of goods and services).
Further, it is found that Respondent is
not commonly known by the <hpdubai.com> domain name, even though
Respondent identifies itself as “hpdubai.com” on its website. See
Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum
June 10, 2003) (finding that Respondent was not “commonly known by” the
<edollarshop.com> domain
name, despite naming itself “eDollarShop,”
because Respondent’s website was almost identical to Complainant’s “first in
use” website
and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048
(Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established
itself as the sole holder of all rights and
legitimate interests in the NEIMAN
MARCUS mark,” in holding that Respondent was not commonly known by the
<neiman-marcus.net>
name, despite naming itself “Neiman-Marcus” in its
WHOIS contact information).
Complainant has established the second
prong of the Policy.
It is found and determined that
Respondent registered and used the disputed domain name in bad faith. Although
the issue was not raised
by the parties, the Panelist is concerned because of
the use of archival printouts by Complainant to prove bad faith registration
and use by Respondent.
The Panelist has concluded that such
archival materials are admissible. This
is because of the broad discretion given to Panelists in Policy ¶ 10(d) which
states that the Panel “shall determine the admissibility,
relevance,
materiality and weight of the evidence.”[1]
The website archival information
establishes that Respondent had actual notice of Complainant’s rights in the HP
mark. Thus, the evidence establishes
bad faith registration and use of the <hpdubai.com> domain name by
Respondent pursuant to Policy ¶ 4(a)(iii).
See Entrepreneur Media, Inc. v.
Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (:Where an
alleged infringer chooses a mark he knows to be similar to another, one can
infer intent to confuse.”);
see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002 (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”).
Respondent’s contention in its defense
that the disputed domain name now stands for “Hot Products” or “Hot Prices” on
the website
does not help Respondent.
This is because Respondent used HP in the disputed domain name with full
knowledge that the HP portion of the domain name was the
registered trademark
of another party and with the intent of attracting customers to Respondent’s
website based upon the fame of
the HP mark.
Moreover, Respondent did so to benefit
from the goodwill associated with Complainant’s HP marks and using the <hpdubai.com>
domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶
4(b)(iv). See 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); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent’s use of
the domain name at issue to resolve a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); 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); see also
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, evidence of bad faith registration
and
use pursuant to Policy ¶ 4(b)(iv)); see
also 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).
Furthermore, it is found and determined
that Complainant did not delay in filing a dispute resolution claim because
Complainant’s
obligations began at the time that it becomes aware of the
existence of a confusingly similar domain name. See Hebrew Univ. of
Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“Complainant
did not delay unreasonably after first becoming aware. . . of Respondent’s
registration
of the disputed domain name.”).
Finally, it is found that Respondent’s
offer of a disclaimer and Respondent’s offer not to sell Complainant’s products
will not provide
relief to Respondent because of the initial attraction of the
user. See Nestle Waters North America Inc. v. JAT a/k/a Jer Ter, (Nat.
Arb. Forum Jan. 28, 2004) (finding that Respondent’s use of a disclaimer does
not absolve Respondent’s bad faith registration
and use of the disputed domain
name because of the initial interest attraction of the consumer).
Complainant has established the required
third prong of the Policy.
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 <hpdubai.com>
domain name be TRANSFERRED from Respondent to Complainant.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: December 13, 2004
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