DECISION

Compaq Trademark B.V. v. International Aggregate and Darrell Small

Claim Number:  FA0309000196024

PARTIES

Complainant is Compaq Trademark B.V., Palo Alto, CA (“Complainant”) represented by Heather C. Brunelli, of Thompson & Knight LLP.  Respondent is International Aggregate and Darrell Small, Scottsdale, AZ, (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <compaqsparepartsstore.com> and <compaqpartsdirect.com>, registered with Register.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 15, 2003; the Forum received a hard copy of the Complaint on September 17, 2003.

On September 15, 2003, Register.Com confirmed by e-mail to the Forum that the domain names <compaqsparepartsstore.com> and <compaqpartsdirect.com> are registered with Register.Com and that Respondent is the current registrant of the names. Register.Com has verified that Respondent is bound by the Register.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 September 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 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@compaqsparepartsstore.com and postmaster@compaqpartsdirect.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 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names are confusingly similar to Complainant’s COMPAQ mark.

2. Respondent does not have any rights or legitimate interests in the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names.

3. Respondent registered and used the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names in bad faith.

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

FINDINGS

Complainant, Compaq Trademark B.V., first used the COMPAQ mark in commerce in 1982 and holds many valid and subsisting trademark registrations for the mark (e.g. U.S. Reg. No. 1,467,066, registered on December 1, 1987). By 1994 Complainant was the largest global supplier of personal computers, and in 2000 Complainant’s COMPAQ branded businesses represented over $40 billion in sales. In addition to its use of COMPAQ branded goods in the marketplace, Complainant has registered the <compaq.com> domain name for use in connection with the providing of computer related services and products. Of note, Complainant’s parts ordering buisness operates under the name “COMPAQ spare parts store.”

Respondent, International Aggregate and Darrell Small, registered the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names on August 1, 2003, and August 6, 2002, respectively, without license or authorization to use Complainant’s COMPAQ mark for any purpose. The <compaqsparepartsstore.com> domain name resells parts for COMPAQ products, claiming to be “The absolute best source for HP and Compaq parts.” The <compaqpartsdirect.com> domain name resolves to a website entited “GetRescued.Net” and advertises a personal locator beacon (“PLB”), an electronic device used to broadcast the location of the owner in case of an emergency.

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 COMPAQ mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce.

Respondent’s <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names are confusingly similar to Complainant’s COMPAQ mark. The distinctive feature of each domain name is Complainant’s famous COMPAQ mark. The addition of the phrase “parts direct” to the <compaqpartsdirect.com> domain name does nothing to dispell this confusing similarity. The addition of the phrase “spare parts store” to the <compaqsparepartsstore.com> is even more confusing, as this is the actual name that Complainant uses for its authentic parts ordering business. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also 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).

Accordingly, the Panel finds that the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names are confusingly similar to Complainant’s COMPAQ mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Both of Respondent’s domain names utilize the famous COMPAQ mark, without authorization by Complainant. At the <compaqsparepartsstore.com> domain name, Respondent holds itself out as the “absolute best source for HP and Compaq parts,” giving the impression that it is an authorized agent of Complainant. At the <compaqpartsdirect.com> domain name, a PLB device is advertised, giving the impression that Complainant is somehow affiliated with the device. In both cases Respondent is using the goodwill that Complainant has built up around the COMPAQ mark for its own illegitimate ends. Such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names, making Policy ¶¶ 4(c)(i) and (iii) inapplicable in this dispute. See Hewlett-Packard Co. v. Burgar, FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that Respondent has no rights or legitimate interests in the <hewlettpackard.com> domain name, because Respondent is not a licensed dealer of Hewlett-Packard products and has not demonstrated any right except to declare that he is affiliated with a licensed re-seller of Complainant’s products); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Respondent is not licensed or authorized to use Complainant’s famous COMPAQ mark, and names itself as either “International Aggregate” or “Darrell Small” in the WHOIS contact information for the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names, rendering Poilcy ¶ 4(c)(ii) inapplicable in this dispute as well. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

At both of the disputed domain names, Respondent is capitalizing on a likelihood of confusion between the content hosted and Complainant’s COMPAQ mark. With respect to the <compaqsparepartsstore.com> domain name, Internet users will likely be confused as to whether Complainant is affiliated with or endorses Respondent’s unauthorized activities. Upon arriving at the <compaqpartsdirect.com> domain name, Internet users will likely believe that Complainant is the sponsor or source of the PLB device that is advertised. In both instances, Respondent has created a likelihood of confusion with Complainant’s mark for commercial gain, evidence that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

The Panel thus finds that Respondent registered and used the <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <compaqsparepartsstore.com> and <compaqpartsdirect.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 21, 2003

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