DECISION

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Ustun Elelden

Claim Number: FA0308000190459

PARTIES

Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P., Palo Alto, CA (“Complainant”) represented by Molly Buck Richard of Thompson & Knight LLP. Respondent is Ustun Elelden, Istanbul, Turkey (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hpmarket.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned 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 Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 22, 2003; the Forum received a hard copy of the Complaint on August 25, 2003.

On August 25, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <hpmarket.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a 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 August 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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@hpmarket.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 September 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <hpmarket.com> domain name is confusingly similar to Complainant’s HP mark.

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

3. Respondent registered and used the <hpmarket.com> domain name in bad faith.

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

FINDINGS

Complainant provides evidence of trademark registrations for the HP mark in numerous countries throughout the world, including Turkey, the nation Respondent lists in its contact information for the domain name registration. Complainant also provides evidence of several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HP mark, including Reg. No. 614,803 (registered on October 25, 1955) related to thermistor mounts.

Complainant has used the HP mark in commerce since at least as early as 1941 and continues to use the mark in connection with Complainant’s goods, services, and advertising for its goods and services throughout the world.

Respondent registered the <hpmarket.com> domain name on October 19, 2002. Respondent has not used the disputed domain name in association with an active website.

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 with the USPTO and the government of Turkey. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant contends that Respondent’s <hpmarket.com> domain name is confusingly similar to Complainant’s HP mark because the disputed domain name incorporates Complainant’s entire mark and adds the generic or descriptive term “market” to the end of the mark. The addition of a generic or descriptive term does not serve to quell the confusing similarity between Respondent’s domain name and Complainant’s mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either 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, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

The Panel concludes that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to respond to Complainant’s allegations in this proceeding. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, Respondent’s failure to respond to the Complaint permits the Panel to presume that Respondent lacks any rights to or legitimate interests in the disputed domain name in accord with Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a Response or provided the Panel with evidence to suggest otherwise); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

To this point Respondent has not associated the <hpmarket.com> domain name with an active website. Respondent’s failure to use the disputed domain name for nearly a year does not demonstrate to the Panel a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Furthermore, Respondent has proffered no proof and there is no evidence in the record that indicates that Respondent is commonly known by HP MARKET or <hpmarket.com>. Accordingly, the Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name with regard to 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel concludes that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Policy ¶ 4(b) includes a list of four circumstances, which, if found to be present, evidence registration and use of a domain name in bad faith. This list was never intended to be exclusive. At its discretion, the Panel may look to the totality of the circumstances when determining whether a domain name has been registered and used in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Passive holding of a domain name is one such circumstance not listed in Policy ¶ 4(b) that Panels have found does demonstrate bad faith registration and use. Therefore, Respondent’s failure to associate the  <hpmarket.com> domain name with an active website since the domain name was registered nearly one year ago demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, based on Complainant’s long-standing worldwide use of the HP mark in commerce, along with Complainant’s registration of the mark with the USPTO and the government of Turkey, the Panel finds that Respondent had either actual or constructive notice of Complainant’s rights in the HP mark when the <hpmarket.com> domain name was registered. Registration of the disputed domain name despite actual or constructive notice of Complainant’s rights in its mark evidences Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Accordingly, the Panel concludes that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  October 7, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/966.html