DECISION

Hewlett-Packard Company v. NA

Claim Number:  FA0304000154141

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA (“Complainant”) represented by Heather C. Brunelli, of Thompson & Knight LLP. Respondent is NA, Brooklyn, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <1-hpprintercartridges.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 9, 2003; the Forum received a hard copy of the Complaint on April 11, 2003.

On April 9, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <1-hpprintercartridges.com> is registered with Directnic.Com and that Respondent is the current registrant of the name. Directnic.Com has verified that Respondent is bound by the Directnic.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 April 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 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@1-hpprintercartridges.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A.Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <1-hpprintercartridges.com> domain name is confusingly similar to Complainant’s HP mark.

2. Respondent does not have any rights or legitimate interests in the <1-hpprintercartridges.com> domain name.

3. Respondent registered and used the <1-hpprintercartridges.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Hewlett-Packard Company, is the owner of numerous HP marks in connection with computer hardware, printers, peripherals, software, and other related goods and services. Complainant holds over 50 trademarks and service marks registered on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) for the HP trademark, and marks containing HP. Specifically, Complainant holds the following marks, among others:

Mark	Reg. No.	Reg. Date	Use Date	Goods/Services
HP	1,116,835	4.24.79	1941 Cl. 9; 1966 Cl. 10; 1957 Cl. 14; 1941 Cl. 16; 1943 Cl. 37; 1949 Cl. 41	Computers, calculators and other data handling and processing apparatus; programs for computers and calculators.
HP & Design	614,803	10.25.55	1941	Thermistor mounts.
HP & Design	850,251	6.4.68	1965	Technical periodicals, pamphlets and books, reprints of articles, data sheets, product and system application notes.
HP & Design	862,308	12.24.68	1966 Cl. 9; 1965 Cl. 9; 1966 Cl. 10	Electrical systems, instruments, components, and apparatus.
HP & Design	1,031,413	1.27.76	1966	Clocks; timers; laboratory and portable time standards; and elapsed time, time ratio, time interval and average time interval measuring instruments.
HP-GL	1,489,998	5.31.88	1977 Cl. 16; 1977 Cl. 9	Graphics language computer programs user manuals, pamphlets and guidebook in Class 16.
HP DIRECT & DESIGN	1,761,887	3.30.93	1987	Mail order catalog services featuring computer systems, peripherals, supplies, parts, paper, magnetic storage media, and related goods.
HP HEWLETT PACKARD & DESIGN	1,850,493	8.23.94	1980 Cl. 9; 1980 Cl. 10; 1980 Cl. 16; 1980 Cl. 36	House mark for computers, computer software, data processing and data storage systems and parts therefore; printers and parts therefore.
HP VISUALIZE	2,414,234	12.19.00	1995	Computer hardware and software for use in the field of computer graphics, and user manuals supplied therewith.

As indicated above, Complainant made first use of the HP mark in 1941, and has subsequently continuously used the mark to denote its computer hardware and related goods. Complainant has invested substantial effort, including significant expense, to develop goodwill in the HP family of marks and to cause the relevant consuming public to recognize the HP mark as distinctly designating Complainant’s products.

Respondent, NA, registered the <1-hpprintercartridges.com> domain name on September 19, 2001. Complainant’s investigation of Respondent reveals that the disputed domain name resolves to a website that sells products that compete with those offered by Complainant. Respondent is not authorized or licensed by Complainant to make use of the HP mark for any purpose or in connection with any online offering.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the HP mark through registration and continuous subsequent use of the mark in commerce.

Respondent’s <1-hpprintercartridges.com> domain name is confusingly similar to Complainant’s HP mark. Respondent’s domain name incorporates Complainant’s mark in its entirety along with the numeral “1,” the descriptive words “printer cartridges” and the most commonly used URL suffix, “.com.” The addition of descriptive or generic words to a famous mark does not, however, eliminate the similarity between the domain name and the trademark. Respondent chose descriptive words that identify and describe Complainant’s product, namely, “printer cartridges.” Therefore, Respondent’s domain name is rendered confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownwell, 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 PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent’s failure to submit a Response allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Moreover, Respondent’s failure to submit evidence of circumstances that may support a finding of rights or legitimate interests in the disputed domain name corroborates Complainant’s assertions that Respondent has none. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Uncontested evidence before the Panel indicates that Respondent’s <1-hpprintercartridges.com> domain name is used in connection with a website that sells cartridges and refill kits for printers manufactured by Complainant. However, although the printers are manufactured by Complainant, many of the cartridges advertised on Respondent’s website are marketed by Complainant’s competitors. Using a domain name that incorporates Complainant’s established HP mark to sell similar competing goods, goods that the mark specifically denotes, fails to establish rights in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use).

As stated, Complainant has never authorized Respondent to use the HP mark for any purpose or in connection with any offering. Although Respondent is using “#1 HP Deskjet Laserjet Inkjet Printer Cartridges” as a business name on its website, evidence suggests that Respondent’s name represents unauthorized use of a number of Complainant’s registered marks. Therefore, Respondent fails to establish rights in the <1-hpprintercartridges.com> domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the <1-hpprintercartridges.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Specifically, circumstances indicate that Respondent intentionally registered the disputed domain name to attract Internet users to its website for commercial gain. The subject domain name resolves to a website that not only offers Complainant’s products for sale, but also advertises competitor’s products as well. The domain name is used as an attempt to attract customers to Respondent’s website, and to create consumer confusion as to Complainant’s sponsorship of or affiliation with Respondent’s website. Respondent’s unauthorized use of Complainant’s HP mark in the domain name in order to benefit from the goodwill associated therein constitutes bad faith registration and use under the Policy. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <1-hpprintercartridges.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  May 27, 2003

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