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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Hewlett-Packard Company v. Kim Yong Hwan
Claim Number: FA0008000095358
PARTIES
The Complainant is Hewlett-Packard Company, Palo Alto, CA, USA ("Complainant"). The Respondent is Kim Yong Hwan, Seoul, Korea ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "HPWEB.COM," registered with Network Solutions Inc. ("NSI").
PANELIST(s)
The Panelist 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 the panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/03/2000; The Forum received a hard copy of the Complaint on 08/03/2000.
On 08/03/2000, NSI confirmed by e-mail to The Forum that the domain name "HPWEB.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Dispute Resolution Policy ("Policy").
On 08/04/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/24/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@hpweb.com.
On 08/28/00, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIESí CONTENTIONS
A. Complainant
1. The domain name "HPWEB.COM" is confusingly similar to the Complainantís famous and distinctive HP mark. It has used the mark in commerce since 1941; has registered its trademarks twenty-three times with the United States Patent and Trademark Office commencing on December 24, 1968; and it has spent substantial sums developing goodwill in its marks.
2. Respondent has no right or legitimate interest in the domain name in issue because the domain name consists predominantly of Complainantís world famous and distinctive HP trademarks.
3. Respondent has registered and used the domain name at issue in bad faith because he intentionally has attempted to attract Internet users to his website by creating a likelihood of confusion with Complainantís marks, as to the source, sponsorship, affiliation and/or endorsement of Respondentís website. Such registration and use of the domain name constitutes a false designation of origin, and a false description or representation as to a relationship between Complainant and Respondent.
B. Respondent
1. The domain name "HPWEB.COM" is not confusingly similar to Complainantís marks. "HP" is a common acronym, selected only after Respondent could not register the domain names "HYPERWEB.COM"; "HYPERWEB.NET," OR "HYPERWEB.ORG," because each of them previously had been registered by others. Moreover, "HPWEB.COM" forwards hits to Respondentís site "DIGITALCOUPLE.COM," an e-mail service, obviously not related to Complainant, its products or services.
2. Respondent, a citizen of South Korea, registered the domain name at issue on November 23, 1999, prior to any attempted registration by Complainant, and, accordingly, has rights and a legitimate interest in the domain name.
3. Respondent had no intent to deceive and he did not register nor is he using the domain name in bad faith. He is using the name in connection with this site "DIGITALCOUPLE.COM," an exceptional e-mail service, clearly not related to Complainantís products and services.
FINDINGS
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.
Identical and/or Confusingly Similar
In the Panelistís opinion, Complainantís trademark and the domain name in issue are confusingly similar. The letters "HP," i.e.., Complainantís trademark, have acquired a famous and distinctive secondary meaning, even though one may research and find HP acronyms. To most individuals, even those not involved with computers, the initials "HP" can mean only Hewlett-Packard, the Complainant.
This conclusion is demonstrated by the Panelistís own experience. He opened the National Geographic Magazine for September, 2000, and there on the inside cover and page one was a Hewlett-Packard advertisement with the trademark "HP." He then opened the Conde Nast Traveler for September, 2000, and, again, on the inside cover and page one, was a Hewlett-Packard advertisement with its trademark "HP." Finally, he picked up Consumer Reports for September, 2000, and on pages 30, 31, 32, 35, and 37, "HP" prominently is mentioned, in connection with a review of computer equipment.
There must be many other informative examples, because the three described were seen only by chance.
Rights or Legitimate Interests
Because Complainantís trademark was registered with the United States Patent and Trademark Office long before Respondent registered the domain name in issue, Respondent would have rights and a legitimate interest in the domain name only if his registration and use of the domain name was not in bad faith.
It is of interest to note that the Anticybersquatting Consumer Protection Act ("ACPA") [15 U.S.C. ß1125(d)] protects owners of a famous mark [as here] from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.
As will be seen hereafter, the Panelist necessarily has determined that such bad faith is present here.
Registration and Use in Bad Faith
It is difficult to determine credibility from only a written record. Nevertheless, in the Panelistís view, it simply is unreasonable, objectively, to believe that Respondent did not know of Complainantís famous and distinctive trademark when he registered the domain name.
Professor McCarthy in his treatise 4 McCarthy, Trademarks and Unfair Competition (4th ed. updated 6/2000) at pages 25-211, speaks of the "Reasonable Belief Defense" set forth in ACPA, 15 U.S.C. ß1125(d)(1)(B)(ii), as follows:
The ëReasonable Beliefí Defense. Lanham Act ß43(d)(1)(B)(ii) creates an unusual defense to cypersquatting liability if the court determines that the defendant ëbelieved and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.í This might be dubbed the ëpure heart and empty head defenseí because it might appear to reward the cybersquatter who intended no harm and mistakenly thought that his or her conduct was lawful. This defense has the potential to reward both the ignorance of the law and unawareness of the fact that cybersquatting violates widely accepted standards of fair competition. Therefore, a court should, in the authorís view, make use of this ëreasonable beliefí defense very sparingly and only in the most unusual cases. That is, the court should place emphasis on the phrase ëhad reasonable grounds to believeí that the conduct was lawful, focusing primarily upon the objective reasonableness and credibility of the defendantís professed ignorance of the fact that its conduct was unlawful. Otherwise, every cybersquatter would solemnly aver that it was entitled to this defense because it believed that its conduct was lawful. [Emphasis in original.]
Thus, even though the services [and/or products] sold as between the Complainant and Respondent are completely different, it is objectively reasonable to believe that Respondent falls within Section 4c(iii) of the Policy which provides:
. . . by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location.
Respondent obviously is intelligent and learned. He has been in the computer business as an Internet graphic designer since 1996, and holds numerous web-related domains.
Respondent is not a "bad man," but objective reality and a presumption of deception militates against him.
In Interstellar Starship Services, Ltd. v. Epix, Inc. (9th Cir. 1999) [1999] USCA9 357; 184 F.3d 1107, 1111, it was said:
However, ISS became aware of the ëEPIXí trademark when it applied for its own registration of ëEPIX.í Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive. See Brookfield, 1974 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, [1993] USCA9 3170; 6 F.3d 1385 (9th Cir. 1993)). In turn, intent to deceive is strong evidence of a likelihood of confusion. Sleekcraft, 559 F.2d at 354. [Emphasis in original.]
It is concluded, accordingly, that Respondent registered and is using the domain name in bad faith. He has not overcome the presumption.
DECISION
Based on the above findings, conclusions and pursuant to Rule 4(i), it is decided that the domain name "HPWEB.COM" registered by Respondent Kim Yong Hwan shall be transferred to Complainant Hewlett-Packard Company.
Judge Irving H. Perluss (Retired)Dated: September 7, 2000
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URL: http://www.worldlii.org/int/other/GENDND/2000/1042.html