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Generic Top Level Domain Name (gTLD) Decisions |
Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v.
HP Supplies and Nationwide Office
Supplies Ltd.
Claim Number: FA0406000282387
PARTIES
Complainants
are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”),
represented by Heather C. Brunelli, of Thompson & Knight, LLP,
Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201. Respondents are HP Supplies and Nationwide Office Supplies Ltd. (“Respondent”), 1 Beadman Street, West
Norwood, London, England SE27 ODN.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <hpsupplies.com>, registered with
iHoldings.com, Inc. d/b/a Dotregistrar.com (hereinafter
“Dotregistrar.com”).
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.
Louis E.Condon as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 1, 2004; the Forum received
a hard copy of the Complaint
on June 2, 2004.
On
June 8, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain
name <hpsupplies.com> is
registered with Dotregistrar.com and that the Respondent is the current
registrant of the name.
Dotregistrar.com has verified that Respondent is bound by the
Dotregistrar.com 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
June 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 28,
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@hpsupplies.com by e-mail.
A
timely Response was received and determined to be complete on June 24, 2004.
Complainant
filed a timely Additional Submission on June 29, 2004.
Respondent
filed a timely Additional Submission on July 1, 2004.
On July 8, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Louis E. Condon
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Hewlett-Packard is the owner of numerous
proprietary marks in connection with computer hardware, printers, peripherals,
software,
and other related goods and services. Hewlett-Packard 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 trademark “HP” and for marks containing "HP"
(collectively, the "HP Marks").
In addition, Complainant also uses the HP Marks worldwide, and have
registrations for trademarks and services marks containing HP
in over 140
countries and regions around the world.
The mark “HP” was first used by Hewlett-Packard 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.
The
domain name <hpsupplies.com> is confusingly similar to
Complainant’s famous HP mark, which was registered as a trademark throughout
the world long before Respondent
registered the domain name on April 5,
2001. In fact, Complainant’s HP mark
was in use for more than 60 years and had become famous for the products
manufactured by and services
offered by Complainant prior to Respondent’s
registration of the <hpsupplies.com> domain name. Respondent’s domain name <hpsupplies.com>
contains Complainant’s famous HP trademark along with the descriptive word
“supplies” 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. The term “supplies” is a
descriptive term that does not change the character of the domain name to avoid
confusion with Complainant’s
HP mark.
The term “supplies” is often used to describe toner and ink jet
cartridges used with Complainant’s printers.
Consumers will likely assume that a domain name containing the famous HP
mark and the descriptive term “supplies” is associated with
or sponsored by
Complainant when it is not. The
addition of the descriptive term “supplies” and the URL suffix “.com” does not
prevent the domain name <hpsupplies.com> from being confusingly
similar to Complainant’s HP Marks.
Respondent has no rights or legitimate interests in
the <hpsupplies.com> 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 and services or for a
legitimate noncommercial or fair use.
Respondent is simply exploiting the fact that Hewlett-Packard’s
customers and potential customers may assume that a website located
at a domain
name incorporating the HP trademark is affiliated with or sponsored by
Complainant.
The
Complainant has not authorized Respondent to use the HP mark as a domain name
or company name. HP Respondent is fully
aware of Complainant’s HP trademark as Respondent advertises products and
products for use with Hewlett-Packard
products.
By using
the <hpsupplies.com> domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to Respondent’s web
site by creating
a likelihood of confusion with the Complainant’s HP mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s web site. Respondent
has intentionally created this situation by use of the HP mark. In addition, the wide notoriety of the
Complainant’s HP mark permits the inference that Respondent knew of
Complainant’s ownership
of the mark and that Respondent acted in bad faith by
registering a domain name that includes a mark they knew or should have known
was the proprietary property of another.
B.
Respondent
The
domain name was first registered in January 1998 to a company Called
Interactive Web World. The domain name
was used by a company called <expresssupplies.com> which Respondent
believes is part of interactive Web World.
The company is still trading and still selling many brands of Laser
toner and ink cartridges including Hewlett Packard and Epson. The domain registration expired in January
2001 and was bought by <buydomains.com>.
Respondent purchased it from <buydomains.com> for $300 on January
21, 2001. Respondent states that it was
aware of the history of the domain name and bought it in good faith, as it had
already been used for
a number of years by a company reselling branded toner
cartridges.
When Respondent first started <hpsupplies.com>
site it was only selling Hewlett Packard branded goods and it had a
disclaimer that read: “The HP logo is a registered trademark of
Hewlett Packard
Company and does not imply endorsement of this web site. All trademarks are acknowledged and
respected. Hpsupplies.com is an
independent reseller of genuine HP supplies for laserjet, deskjet and other
types of printer consumables.”
At a
point in time, Respondent decided to have the web site updated with online
payment available. While this was being
done Respondent asked the programmer to redesign the site and point <hpsupplies.com>
towards <nationwideofficesupplies.co.uk>, a reseller of various
branded ink and laser cartridges.
Respondent states it is common knowledge that a Lexmark ink cartridge
does not fit in a Hewlett Packard printer; therefore there is
no conflict of interest. Respondent further states that there was
never any intention to confuse customers.
Respondent believes it is obvious that its site has nothing to do with
The Hewlett Packard Company. Either
way, if a potential customer found his or her way to the
<nationwideofficesupplies.co.uk> site via <hpsupplies.com>,
she or he would surely be looking only for original Hewlett Packard
products. Respondent does not deny that
it sells compatible products for Hewlett Packard printers but maintains there
was no bad faith intended. Further,
this was only a temporary situation and the site would return to selling only
HP products when the revisions were completed.
Respondent
understands HP is a trademark but was of the opinion “supplies” or “hpsupplies”
are not registered trademarks.
Respondent believes <hpsupplies.com> states what Respondent
will be doing as a company, which is sell HP supplies.
C.
Additional Submissions
Complainant
In
its Response to Complainant’s Complaint, Respondent provides the prior
registration history for the <hpsupplies.com> domain name. This information is of no value in
evaluating whether Respondent registered the domain name in bad faith. Simply because a domain name is available
for registration does not mean that it does not violate the rights of a third
party and
has no bearing on whether the registration and use was in bad
faith. The prior registrant’s use of
the domain name may have been an infringement of Complainant’s rights and
Respondent’s unfounded reliance
on a third party’s potentially infringing prior
use of a domain name does not negate the fact that its use and registration of
the
domain name violates the UDRP.
Simply because Respondent claims that in
the past it only sold HP branded products on the <hpsupplies.com>
website does nothing to prove that Respondent did not register and use the
domain name in bad faith. Respondent
admits that it sells products competitive with HP branded products on the
website currently found at <hpsupplies.com> and could continue to
do so in the future regardless of its claims that such use is only
temporary. By putting the famous HP
mark into its domain name, Respondent had the intention of using the goodwill
built up in the HP brand to
attract visitors to its website for commercial gain
by creating a likelihood of confusion with the Complainant’s mark as to the
source,
sponsorship, affiliation or endorsement of Respondent’s website and
Respondent’s products.
Respondent
argues that at one point (and not currently) the Respondent had a disclaimer on
its website regarding the HP logo which
it argues shows it had no bad
faith. The use of a disclaimer does not
avoid a finding that the registration and use of the domain name violates the
UDRP. The disclaimer can do nothing to
avoid the initial interest confusion caused by use of the HP mark in the domain
name. In addition, the disclaimer
related only to the HP logo and mentioned nothing about use of the HP mark in
the domain name. Additionally, as the
disclaimer no longer even appears on the site, it should have no bearing on the
determination of whether the
current use and registration of the domain name
violates the UDRP.
Although
Respondent claims to be part of the Hewlett-Packard “partnership / channel
programme” in the UK, Respondent provides no proof
of this allegation and
Complainant’s records do not reflect any such association. However, Complainant notes that its standard
partnership agreements expressly prohibit resellers from incorporating “HP”
into its
domain names. So even if
Respondent’s claim is true, Respondent is likely in breach of its agreement
with Hewlett-Packard. In addition, if
Respondent had entered into such a contract with Complainant, Respondent would
also be on notice that its registration
of the <hpsupplies.com> domain
name was not condoned by Complainant, which would further prove Respondent’s
bad faith registration and use of the domain name.
Respondent
Respondent states that he has now pointed <hpsupplies.com>
to a blank page. This was done he says
as he got the impression Hewlett Packard feels Respondent is losing them sales
through its web site as it sells
compatible products for its printers. In truth, Respondent states, he has not sold
one compatible cartridge as a result of pointing <hpsupplies.com>
towards <nationwideofficesupplies.co.uk> web site. Respondent reiterates its earlier position
and, especially, that pointing <hpsupplies.com> towards
<nationwideofficesupplies.co.uk> was a temporary measure and no bad faith
was intended.
FINDINGS
Having
duly considered the Complaint, Response and the additional submissions by both
parties, I find that:
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 interest to the domain name
3. The domain name has been registered and
is being used in bad faith
DISCUSSION
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.
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).
The
Panel finds that Respondent’s <hpsupplies.com> domain name is confusingly similar to Complainant’s HP
mark because the only difference is the addition of the word “supplies.” The Panel also finds that adding the generic
word “supplies” does not significantly distinguish the domain name from the
mark. 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 actual confusion has little or no bearing on likelihood of
confusion, especially in the context of the Internet. See Gateway, Inc., v. Pixelera.com, Inc., D2000-0109, (WIPO Apr. 6, 2000) (“Evidence of lack of
actual confusion is irrelevant since the test is confined to a consideration of
the disputed domain name and the
trademarks.”).
Complainant alleges that Respondent is
using the disputed domain name to refer to a website that sells supplies of its
competitors. The Panel finds that
Respondent’s use of Complainant’s mark to sell Complainant’s competitor’s goods
is not in connection with a bona
fide offering of goods or services, pursuant
to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain
name, pursuant
to Policy ¶ 4(c)(iii). See
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); see also 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).
The Panel determines that even an
agreement to sell Complainant’s supplies does not give Respondent rights to use
Complainant’s mark
in a domain name. See
Allen-Edmonds Shoe Corp. v. Takin’
Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (“[W]ithout 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).
Complainant asserts that Respondent is
not commonly known by the disputed domain name even though Respondent had
registered the domain
name under the name “HP Supplies.” The Panel finds, because of the prominence
of the HP mark, that Respondent’s registration under the “HP Supplies” name
does not establish
that Respondent is commonly known by the <hpsupplies.com> domain name. See
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); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to
its registration of the disputed domain name).
Complainant
alleges that Respondent is appropriating Complainant’s mark in the <hpsupplies.com>
domain name to refer Internet users to
<nationwideofficesupplies.co.uk>.
The Panel finds that Respondent, by appropriating Complainant’s mark to
sell competing products, is creating a likelihood of confusion
for commercial
gain, which is evidence of 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 to 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).
The
Panel also finds that, because Respondent is selling supplies for Complainant’s
products, Respondent had actual notice of Complainant’s
rights in the HP
mark. Therefore, the Panel finds that
Respondent’s subsequent registration and use of the mark is evidence of bad
faith pursuant to Policy
¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir., 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an 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.”).
Although Respondent claims to be part of
the Hewlett-Packard “partnership / channel programme” in the UK, Respondent
provides no proof
of this allegation and Complainant’s records do not reflect
any such association. However,
Complainant notes that its standard partnership agreements expressly prohibit
resellers from incorporating “HP” into any
domain names. So even if Respondent’s claim is true, Respondent
is likely in breach of its agreement with Hewlett-Packard. In addition, if Respondent had entered into
such a contract with Complainant, Respondent would also be on notice that its
registration
of the <hpsupplies.com> domain name was not condoned by
Complainant, which would further prove Respondent’s bad faith registration and
use of the domain
name. By putting the
famous HP mark into its domain name, Respondent had the intention of using the
goodwill built up in the HP brand to
attract visitors to its website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
as to the source,
sponsorship, affiliation or endorsement of Respondent’s
website and Respondent’s products.
DECISION
Claimant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hpsupplies.com>
domain name be TRANSFERRED from Respondent to Complainant.
Louis E.
Condon, Panelist
Dated: July 22, 2004
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