DECISION

Hewlett-Packard Company and Hewlett Packard Development Company, L.P. v. InNet Technologies

Claim Number: FA0309000193580

PARTIES

Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P., Palo Alto, CA (“Complainants”) represented by Molly Buck Richard and Heather C. Brunelli of Thompson & Knight LLP. Respondent is InNet Technologies, Rialto, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hp-laserjet-printer.com> registered with Tucows, 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.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 5, 2003; the Forum received a hard copy of the Complaint on September 8, 2003.

On September 5, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <hp-laserjet-printer.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 September 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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@hp-laserjet-printer.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 October 10, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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

Complainants request that the domain name be transferred from Respondent to Complainants.

PARTIES' CONTENTIONS

A.  Complainants make the following assertions:

1. Respondent’s <hp-laserjet-printer.com> domain name is confusingly similar to Complainants’ HP and LASERJET marks.

2. Respondent does not have any rights or legitimate interests in the <hp-laserjet-printer.com> domain name.

3. Respondent registered and used the <hp-laserjet-printer.com> domain name in bad faith.

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

FINDINGS

Complainants have provided this Panel with evidence of numerous 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. Complainants have used the HP mark in commerce since at least as early as 1941 in connection with Complainants’ goods, services and advertising throughout the world.

Complainant has also provided evidence of trademark registrations with the USPTO for the LASERJET mark (Reg. No. 1,458,061 registered on September 22, 1987) related to, inter alia, non-impact printers for office and data processing.

Respondent registered the <hp-laserjet-printer.com> domain name on June 23, 2003. Prior to notification of this dispute by Complainants, Respondent made no use of the disputed domain name. Subsequent to Complainants’ notification, Respondent established a website at the domain name purportedly related to “Landmark Printer Services,” which offers refurbished HP laserjet printers, new HP printers, authorized HP laserjet service, printer support, laserjet maintenance kits and “SuperLife” brand laser toner cartridges. Landmark Printer Services is an authorized reseller that participates in Complainants’ authorized service provider program. However, Respondent is not affiliated with Complainant.

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 Complainants’ 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 Complainants 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 Complainants have 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

Complainants have demonstrated rights in both the HP and LASERJET marks with regard to Policy ¶ 4(a)(i) through registration of said marks with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Complainants contend that Respondent’s <hp-laserjet-printer.com> domain name is confusingly similar to Complainants’ marks because the disputed domain name appropriates Complainants’ marks and merely adds the generic term “printer,” a term directly related to Complainants’ business. The addition of this term to Complainants’ marks does not significantly distinguish Respondent’s domain name from the marks pursuant to Policy ¶ 4(a)(i). 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 L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

The Panel finds that Complainants have established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to answer Complainants’ allegations in the Complaint. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <hp-laserjet-printer.com> domain name. When Complainants assert a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

The website at the <hp-laserjet-printer.com> domain name advertises the products and services offered by Landmark Printer Services, an authorized reseller of Complainants’ products. However, the WHOIS information associated with the disputed domain name lists Respondent as the registrant of the domain name. The Panel finds that Respondent’s advertising for an authorized reseller of Complainants’ products does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also 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).

Furthermore, even assuming, arguendo, that the authorized product reseller registered the <hp-laserjet-printer.com> domain name, its status as an authorized reseller does not entitle it to use Complainants’ marks in a domain name. See Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (“without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to Complainant’s mark).

Respondent has proffered no proof and no evidence in the record indicates that Respondent is commonly known by HP LASERJET PRINTER or <hp-laserjet-printer.com>. Thus, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See 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); 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).

Accordingly, the Panel finds that Complainants have established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s unauthorized registration of the <hp-laserjet-printer.com> domain name to sell Complainants’ products suggests that the disputed domain name was primarily registered to disrupt the business of a competitor, Complainants, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Nokia Corp. v. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant).

Moreover, Respondent’s unauthorized, commercial use of the <hp-laserjet-printer.com> domain name indicates that Respondent has attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainants’ marks, which is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Furthermore, even if Respondent were the authorized reseller advertised on Respondent’s website, such status does not impute rights in the <hp-laserjet-printer.com> domain name. See Hewlett-Packard Co. v. OfficeOnWeb Ltd., FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s unauthorized use of the LASERJET mark to operate as a reseller of Complainant’s products constituted bad faith use and registration pursuant to Policy ¶ 4(b)(iv)); see also Heel Quik! Inc. v. Goldman, FA 92527 (Nat. Arb. Forum March 1, 2000) (holding that the registration of a domain name in violation of a license agreement is evidence that the domain name was registered and used in bad faith).

The Panel finds that Complainants have established Policy ¶ 4(a)(iii).

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 <hp-laserjet-printer.com> domain name be TRANSFERRED from Respondent to Complainant, Hewlett-Packard Company.

James A. Carmody, Esq., Panelist

Dated:  October 15, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/979.html