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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Compaq Trademark B.V. v.
SNPCO Products
Claim Number:
FA0311000208587
PARTIES
Complainant is Compaq Trademark B.V. (“Complainant”),
represented by Molly Buck Richard and Heather C. Brunelli of Thompson
& Knight LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201. Respondent is SNPCO Products (“Respondent”),
represented by Shawn Wilmoth, 613 West Highway 11E, New Market, TN
37820.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <compaqrepair.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.
R. Glen Ayers served as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on
November 5, 2003; the Forum received
a hard copy of the Complaint on November
7, 2003.
On November 11, 2003,
Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <compaqrepair.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 November 12, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of December 2, 2003 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@compaqrepair.com by e-mail.
A Response was received
and determined to be complete on December 3, 2003. A hard copy was not timely received, but the Panelist has decided
to consider the Response. The
Respondent is not represented by counsel, and the Panelist agrees with the
rulings in Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000),
finding that any weight to be given to the lateness of the Response is solely
in the discretion
of the Panel. See also Strum v. Nordic Net Exchange AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible
because of formal deficiencies would be an extreme remedy
not consistent with
the basic principles of due process").
An additional submission
was timely received from Complainant on December 8, 2003 and considered by the
Panel.
On December 10, 2003,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed
R. Glen Ayers as Panelist.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that Respondent has registered and is using a domain name, <compaqrepair.com>,
which is identical to or confusingly similar to the various trademarks which
Compaq Trademark B.V. holds for products manufactured
by Compaq Computers of
Houston, Texas.
Complainant contends and
has submitted extensive evidence of the trademarks which it holds. Complainant made demand in October of 2003,
requesting transfer of the domain name.
Complainant asserts that
Respondent has not used the domain in connection with a bona fide
offering of goods and services.
Complainant does state that the domain name is used “in connection with
a website that advertises replacement parts” for COMPAQ Computers,
but
Complainant asserts that this is improper, citing a number of domain name
decisions.
Complainant also assets
that Respondent is using Complainant’s name to attract Internet users to its
website.
Complainant asserts that
it has not authorized the use of the trademark in the domain name. Complainant also asserts that there is a
substantial likelihood of confusion between Complainant’s and Respondent’s
business.
As to rights or
legitimate interests, Complainant asserts there are no rights or legitimate
interests held by Respondent.
Complainant asserts that other Panels and Panelists have found that the
COMPAQ trade name is distinctive. Complainant
goes on to state that the domain name and trade name are confusingly similar.
Complainant asserts that
the domain name has been registered in bad faith. Complainant asserts that Respondent “has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s website
by
creating a likelihood of confusion....”
Complainant asserts that any reasonable Internet user seeing the domain
name would be “likely to assume” some association between
the domain name and
Complainant.
B. Respondent
Respondent, not
represented by counsel, filed a very persuasive rejoinder.
Respondent asserts that
the domain name was registered in August of 1999, prior to the adoption of the
domain name rules by ICANN. At the
time, the domain name was owned by Advanced Systems Designs, Inc., an
authorized Compaq sales and service dealer.
Advanced Systems Design, Inc. was owned by Shawn Wilmoth who now owns
SNPCO Products. SNPCO Products is now
the registrant. Respondent asserts that
the domain name was established to sell parts and repair services to
Complainant’s customers.
Respondent asserts that
Complainant terminated the business relationship after the domain name was
registered in September of 2000. At
that time, Complainant requested that Respondent not refer to itself as an
“authorized” COMPAQ reseller. Complainant knew of the
domain name and did not
exhibit any concern with Respondent’s continued use.
Thereafter, Respondent
asserts that it purchased a shopping system with “built-in” references to
products including COMPAQ products.
Respondent states that references to those products in no way are meant
to infringe on any trademark or copyright.
Respondent also asserts
that each page of its website contains a disclaimer.
Respondent denies that
there is a any confusion. Respondent
asserts that it offers repairs and parts.
Respondent denies any
“bait switch” or confusion although it sells parts for other brands.
Respondent asserts that
Complainant’s customer assistance center refers customers to Respondent.
Respondent denies and
bad faith and asserts that: (1) it named the website before the UDRP Rules were
adopted; (2) Complainant has
given implied consent, particularly at the time it
terminated Respondent as an authorized repair center; and (3) Respondent has
made
careful use of disclaimers.
C. Additional
Submissions
In its Additional
Submission, Complainant points out that the UDRP applies to any domain name in
existence at the time that the UDRP
was enacted. Complainant also points out that
the original owner of the domain name, Advanced Design, Inc., has transferred
the name,
and suggests that this should make a difference.
Also, Complainant
asserts that the mere fact that “the site sells products that are not
manufactured by Compaq is enough” to show
bad faith. Here, the Respondent uses the domain to sell Compaq and other
manufacturers’ parts.
In the Additional
Submission, Complainant cites Compaq v. Int’l Aggregate, FA
196024 (October 21, 2003). That case
involves different facts as to one domain name (where a product unrelated to
Compaq was sold) and, more importantly, Respondent
did not file any Response (a
default judgment should not count).
FINDINGS
Even though originally
registered at a time before the ICANN UDRP Rules were promulgated, the UDRP
Rules apply to this domain name
dispute.
See paragraph 2 of the Dispute Policy.
The domain name <compaqrepair.com>
is confusingly similar to the COMPAQ trademark.
The use of the mark
COMPAQ with “repairs” is still confusingly similar.
However, it is also
apparent that Complainant at least initially blessed the registration of the
domain name. Respondent was originally
allowed to use the name while still an authorized repair center. When that authorization
ceased, Complainant
cautioned the Respondent to avoid infringement when using
the domain name. Complainant clearly
permitted continued use. Complainant
personnel continue to refer customers to Respondent and continue to impliedly
consent to Respondent’s activities. Implied
consent has been accepted as a
method by which rights in a name may be created. See Kittenger Co. v.
Kittinger Collector, AF–0107 (e Resolution Aug 8, 2000).
Respondent is using the
domain name to offer repairs and parts to Compaq owners. Respondent began this business as an
authorized repair center - authorized by Complainant - - and continued the
business after Complainant
terminated the official relationship with
Complainant’s almost express permission. Respondent clearly has “rights in the name”
in connection with a legitimate business operation selling Compaq parts and
repairs. See Ty Inc. v.
Perryman, 306 F.3rd 509, 513 (7th Cir. 2002). Therefore,
Respondent has some rights in the name.
At to bad faith, given
Respondent’s attempts at disclaimers, given Complainant’s acquiescence, and
given the context, there can be
no finding of “bad faith.” Bad faith is not
present because:
(1) The original
registration certainly occurred with Compaq’s implied consent as did the
continued use. But, the original
registration is a key point under the UDRP Rules. At the time of the original registration,
Respondent acted with implied consent.
(2) Respondent’s continued use does not create a
likelihood of confusion, because of the use of disclaimers. See generally Al-Anon Family Group
Headquarters, Inc. v. Reid, D-2000-0232 (WIPO June 5, 2000). Almost exactly in point is Caterpillar,
Inc. v. Off Road Equip., FA 95497 (Nat. Arb. Forum October 10, 2000),
involving similar facts and the domain name <catparts.com>.
Although ownership of
the domain name has changed, and while Respondent did little to “trace” the
transfer, Complainant has offered
no real rationale as to why the ownership
change matters.
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
domain name is confusingly similar to the mark.
The
Respondent has rights in the name which Compaq impliedly granted and which were
developed during the period that Respondent was
an authorized repair center.
Respondent
has not acted in bad faith.
DECISION
Complainant having
failed to establish all three elements required under the ICANN Policy, the
Panelist concludes that relief shall
be DENIED.
R. Glen Ayers, Panelist
Dated: December 22, 2003
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