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Hewlett-Packard Company and
Hewlett-Packard Development Company, L.P. v. HP Computer Services
Claim Number: FA0412000373890
PARTIES
Complainant
is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively,
“Complainants”), represented by Heather
C. Brunelli, of Thompson & Knight, LLP, 1700
Pacific Ave., Suite 3300, Dallas, TX 75201.
Respondent is HP Computer
Services (“Respondent”), 15958 Woodward Ave., Highland Park, MI 48203.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hpcomputerservices.com>,
registered with Network Solutions, 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.
Jeffrey
M. Samuels as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on December 3, 2004.
On
December 3, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hpcomputerservices.com>
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
December 6, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 27, 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@hpcomputerservices.com
by e-mail.
A
timely Response was received and determined to be complete on December 23, 2004.
On
December 29, 2004, Complainant submitted an “Additional Submission” under
Supplemental Rule 7. While technically
untimely in that it was filed beyond the applicable response period, the Panel
determines, in view of the particular
circumstances involved[1],
that the arguments set forth in Complainant’s “Additional Submission” may be
considered.
On January 6, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jeffrey M. Samuels as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
Hewlett-Packard owns over 40 U.S. - registered trademarks and service marks for
the HP mark and for marks containing the
term “HP,” as used on or in connection
with computer hardware, peripherals, software, and related goods and services. See
Complaint, Exhibit B. Complainants also
own registrations in over 140 countries for HP-related marks (see Complaint,
Exhibit D), as well as various domain
name registrations that incorporate “HP”,
such as <hp.com>, <hp.net>, <hp.org>, and
<hpshopping.com>. See Complaint,
Exhibit F. Complainant provides
information about its products and services and offers them for sale at its web
sites.
Complainants
allege that the domain name in dispute, <hpcomputerservices.com>
is confusingly similar to the HP mark, which has been used for 60 years and was
registered throughout the world long before the registration
of the disputed
domain name.
Complainants
further assert that Respondent has no rights or legitimate interests in the <hpcomputerservices.com>
domain name. Complainants note that
such domain name is used in connection with a web site that advertises
Respondent’s computer-related services
for the Metro Detroit area. See Complaint, Exhibit I. These services include on-site support,
consulting, data transfers, networks, web design, printer repair, notebook
repair, and installations. Respondent
also appears to use the web site to advertise such items as notebook computers
and PDAs for sale at Best Buy and provides
links to the Best Buy web site.
Complainants
point out that Respondent entered into a business development partner agreement
with Complainants on April 5, 2004, pursuant
to which Respondent agreed not to
use the HP mark in a domain name. Upon learning of Respondent’s registration
for the <hpcomputerservices.com> domain name, Complainants
contacted Respondent regarding the violation of the agreement. When Respondent failed to rectify the
situation, Complainants terminated the agreement.
Finally,
Complainants contend that Respondent registered and is using the disputed
domain name in bad faith. They argue
that, given the fame of the HP mark, it is not reasonable to believe that
Respondent, who is in the computer business,
did not know of Complainants’
rights in the HP mark prior to registration of <hpcomputerservices.com>. In addition, Complainants assert,
Respondent, as a former business partner of Complainants, clearly had actual
knowledge of Complainants’
rights in the HP mark.
According
to Complainants, by using the <hpcomputerservices.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 Complainants’ HP mark as to the source, sponsorship, affiliation, or
endorsement of Respondent’s web
site.
B.
Respondent
Respondent
contends that the domain name <hpcomputerservices.com> is not
identical or confusingly similar to <hp.com>, <hp.net>,
<hpinvent>, <hpcomputer.com>, or <hpcomputers.com>. It contends that if a user types in “HP” as
a search term, the search returns hundreds of hits in which the disputed domain
name does
not appear. Moreover,
Respondent argues, even if a Hewlett-Packard customer did stumble upon
Respondent’s web site, it would soon be apparent
to that person “that they would
be on the wrong track.” Respondent
points out that it is clearly stated on its site that it specializes in
computer services such as upgrades and repairs,
network installation, and
internet hosting, as opposed to the sale of new laptop/desktop computers.
With
respect to the issues of “rights or legitimate interests” and “bad faith”
registration and use, Respondent notes that it is located
in Highland Park,
Michigan and that the designation HP, as used by Respondent, stands for
“Highland Park.” Respondent further
notes that since it has been in business, not one customer that was directed to
it via the internet has mistaken
the company for Complainant.
C.
Additional Submission
In
their “Additional Submission,” Complainants contend that the services offered
at Respondent’s web site overlap with the services
offered by Complainants
under the HP mark. Complainants also
reiterate their earlier contention that Respondent was clearly aware of the HP
mark prior to its registration of
the disputed domain name and “find it very
difficult to believe that Respondent did not intend to trade upon the HP mark
when selecting
the name HP Computer Services and the domain name <hpcomputerservices.com>.” As for Respondent’s contention that its use
of “hp” stands for Highland Park, the site of its store, Complainants indicate
that Respondent
“could have just as easily named his company Highland Park
Computer Services.”
FINDINGS
Upon review of the entire record, the
Panel concludes that: (1) the domain name in issue is confusingly similar to a
mark in which
Complainants have rights; (2) Respondent has no rights or
legitimate interests in the domain name; and (3) the domain name was 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 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;
(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.
There is no question that Complainants,
through their long use and registrations of the HP mark, have rights in the
mark. The Panel further concludes that
the domain name <hpcomputerservices.com> is confusingly similar to
the HP mark. The mere addition of the descriptive terms “computer” and
“services,” as well as of the top-level
domain “.com,” does not eliminate the
confusing similarity between the HP mark and the disputed domain name.” See
Sony Kabushki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “neither the addition of an
ordinary descriptive word … nor the suffix `.com’ detract
from the overall
impression of the dominant part of the name in each case…”).
The Panel finds no evidence to support a
determination that any of the circumstances set forth in paragraph 4(c) of the
Policy is
applicable. Respondent’s
contention that its use of “hp” merely refers to the location of its store in
Highland Park, Michigan has some surface
appeal. The Panel concludes, however, that, given the nature of the
services offered by Respondent, the longstanding use by Complainants of
the HP
mark, and the renown of such mark, Respondent’s adoption of the disputed domain
name was motivated primarily as an effort
to trade upon the goodwill built up
by Complainants over the many years of use of the HP mark.
The Panel finds that the evidence
supports a determination that, by using the disputed domain name, Respondent
has intentionally attempted
to attract, for commercial gain, internet users to
its web site by creating a likelihood of confusion with Complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of such site or of the
products and services offered at such site, within
the meaning of paragraph
4(b)(iv) of the Policy. As found above,
the HP mark and the disputed domain are confusingly similar. Moreover, the goods and/or services offered
by Respondent at its site are related, if not identical, to those offered by
Complainants
under the HP mark. These
findings support the existence of a likelihood of confusion. The absence of any evidence of actual
confusion does not compel a contrary determination. See E. & J. Gallo Winery v. Consorzio del
Gallo Nero, 782 F. Supp. 457 (N.D. Cal. 1991) (“While evidence of actual
consumer confusion provides strong support for a finding of a likelihood of
confusion,
`the failure to provide instances of actual confusion is not
dispositive’ of an infringement claim.
Thus evidence of actual confusion `is merely one factor to be considered
… and is not determinative’ if it is not shown.”). Moreover, even if one accepts the contention that no one entering
Respondent’s store has mistaken Respondent for Complainant, such
fact would not
preclude a finding of likelihood of confusion.
The concept of likelihood of confusion, as noted in the applicable
policy, embraces concepts of sponsorship and affiliation, as well
as source.
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 <hpcomputerservices.com>
domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: January 20, 2005
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