National Arbitration Forum

DECISION

Compaq Trademark B.V. v David Portilla

Claim Number: FA0410000349005

PARTIES

Complainant is Compaq Trademark B.V. (“Complainant”), represented by Heather C. Brunelli, of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.  Respondent is David Portilla (“Respondent”), 4347 Orangewood Ave., Fort Myers, FL 33901.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thecompaqstore.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2004.

On October 24, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the domain name <thecompaqstore.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 October 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 15, 2004 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@thecompaqstore.com by e-mail.

A timely Response was received and determined to be complete on November 15, 2004.

On November 19, 2004, Additional Submission was received from Compaq Trademark B.V. and was duly considered.  Panel adopts with approval the law and argument of the Additional Submission.

On December 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Richard B. Wickersham, Judge (Ret.), as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Compaq is the owner of numerous proprietary marks in connection with computer hardware, computer software, computing and business solutions services and other related goods and services.  Compaq is the owner of numerous trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for the trademark “COMPAQ” and for marks containing "COMPAQ" (collectively, the "COMPAQ Marks").

“Compaq” and “Complainant,” as used herein, include Compaq’s licensees, including Compaq Computer Corporation and Hewlett-Packard Company, and Compaq’s predecessors in interest.

The mark “COMPAQ” was first used by Compaq in commerce at least as early as 1982, was continuously used thereafter, and is still in use in the United States and globally. Compaq has invested substantial effort, including the expenditure of millions of dollars each year, to develop goodwill in the COMPAQ Marks and to cause consumers throughout the United States and the rest of the world to recognize the COMPAQ Marks as distinctly and exclusively designating products associated with Complainant.  In 1994, Compaq was the largest global supplier of personal computers. In 2000, Complainant’s COMPAQ-branded businesses represented over $40 billion in sales. Over 20 years of promotional efforts have made the COMPAQ Marks famous and distinctive.  In 2001, Interbrand, a leading brand marketing and consulting firm, ranked the COMPAQ name as the 24^th most valuable name in the world.  At that time, Interbrand valued the brand at $14.6 billion.

Significant revenue is generated from sales at the <compaq.com> website.  Compaq owns the domain name registration for <compaq.com>.  At the domain <compaq.com>  the Complainant operates a website that contains information about the products and services offered by Compaq.

The domain name <thecompaqstore.com> is confusingly similar to Complainant’s famous COMPAQ mark, which was registered as a trademark throughout the world long before Respondent registered the domain name on January 17, 2003.  In fact, Complainant’s COMPAQ mark was in use for over 20 years and had become famous for the products manufactured by and services offered by Complainant prior to Respondent’s registration of the <thecompaqstore.com> domain name.

Respondent has no rights or legitimate interests in the <thecompaqstore.com> domain name because Respondent is not commonly known by Complainant’s mark, nor has Respondent used the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.  Respondent is simply exploiting the fact that Complainant’s customers and potential customers may assume that a website located at a domain name incorporating the COMPAQ trademark is affiliated with or sponsored by Complainant.

Respondent registered and is using the <thecompaqstore.com> domain name in bad faith.  By using the <thecompaqstore.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s COMPAQ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.  See Compaq Information Technology Group, L.P. v. Waterlooplein, Ltd., FA 109718 (Nat. Arb. Forum May 29, 1992) (finding bad faith where respondent used the disputed domain name in order to attract consumers for commercial gain to its website where it sells complainant’s products without authorization).

 

B. Respondent

Complainant’s main concern is that we are trying to confuse the consumer by tricking them into thinking we are indeed COMPAQ by some way, they say we sell the same items as their client, they say we never notified COMPAQ of our intentions to use our domain name, and lastly and the most provocative is that we use the site in bad faith.

At our site, <thecompaqstore.com>, we sell parts; these parts are for laptops and laptops only. No desktops, servers, printers, software, extended warranties, NO COMPLETE LAPTOPS, and in no way are we in competition with the complainant.

Upon visiting our site, <thecompaqstore.com>, you will find on the main page a disclaimer that says quote “ Note: The Compaq and HP logos are property of their respective owners. <thecompaqstore.com> is a private site not endorsed by or affiliated with either company”.

Until October of 2004, the <thecompaqstore.com> domain name was a registered HP authorized service center, and authorized HP partner. Upon the complainant Thompson & Knight law firm, finding out that we were indeed authorized by their client to use the <thecompaqstore.com> domain name, they notified their client they could not proceed with this complaint until all ties with us were severed. Upon sending a letter to us canceling our partnership on October 21 2004, the very next day this complaint was filed. Clearly Complainant had this file ready to proceed just waiting for the actions of their client. After receiving the letter terminating our partnership, we were never given an opportunity to resolve any conflicts with Complainant. This in itself is a bad faith gesture on behalf of Complainant.  If resolve is what they wanted in this matter, then clearly they would of asked us “ now that the partnership with HP has been terminated, can we come to some type of resolve.”  That opportunity was never presented to us.

As anyone of our customers will instruct you, we do not operate our site in bad faith. All of our customers come to our site seeking help from the confusing information they have received from Compaq/HP parts center, concerning the parts they are in need of for repair of their laptop.

We do not believe that their complaint has been met to the guidelines provided by the National Arbitration Forum.

        

FINDINGS

Identical and/or Confusingly Similar  Policy ¶4(a)(i).

Complainant asserts that it has established rights in the COMPAQ mark through registration with the Unites States Patent and Trademark Office (e.g., Reg. No. 1,264,107, issued January 17, 1984) and continuous use of the mark in commerce since 1982.  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 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).

Complainant further asserts the <thecompaqstore.com> domain name is confusingly similar to Complainant’s COMPAQ mark because the disputed domain name fully incorporates Complainant’s mark with the addition of the generic article “the” and descriptive word “store.”  Complainant argues that the addition of the generic words “the” and “store” does not eliminate the confusing similarity between the disputed domain name and Complainant’s mark.  See 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); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

Moreover, the addition of the generic top-level domain “.com” in the domain name is irrelevant in determining whether the <thecompaqstore.com> domain name is confusingly similar to 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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Furthermore, Complainant argues that Respondent has appropriated Complainant’s COMPAQ mark and design onto its website.  The Panel finds that this creates a rebuttable presumption that Complainant’s COMPAQ design marks are distinctive.  Complainant has also provided past arbitration decisions where Panelists have found Complainant’s COMPAQ mark to be distinctive.  In support of this contention Complainant sites Compaq Info. Techs. Group, L.P. v. Dealer Direct, Inc., FA 979062 (Nat. Arb. Forum June 14, 2001), Compaq Info. Techs. Group, L.P. v. Nye, FA 104677 (Nat. Arb. Forum Mar. 22, 2002) and Compaq Info. Techs Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002).

 

Rights or Legitimate Interests  Policy ¶4(a)(ii).

Complainant contends that Respondent is not authorized or licensed to register or use the <thecompaqstore.com> domain name that incorporates Complainant’s COMPAQ mark as Complainant has terminated any and all partnership agreements between Respondent and Complainant’s affiliate, Hewlett-Packard.  Moreover, although the company that appeared to be operating the disputed domain name was an authorized HP reseller that had entered into a business development agreement with HP, the agreement strictly prohibited the registration of any domain names containing Complainant’s marks in whole or in part or any other name confusingly similar to Complainant’s marks.  Further, Respondent’s allowance of the company to operate the disputed domain name is irrelevant to determining whether Respondent was itself commonly known by the domain name.  If the Panel determines that Respondent is not commonly known by the disputed domain name, the Panel may find that Respondent lacks rights and legitimate interests in the disputed domain name pursuant 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant contends that Respondent is using the disputed domain name in connection with a website advertising computers, computer peripherals, parts, accessories and electronics including those belonging to Complainant’s competitors.  Respondent is also displaying Complainant’s COMPAQ design marks and logos on its website.  Complainant argues that Respondent’s competitive use of a domain name that is confusingly similar to Complainant’s COMPAQ mark is not 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

Registration and Use in Bad Faith  Policy ¶4(a)(iii).

Complainant asserts that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using a domain name that is confusingly similar to Complainant’s mark for commercial gain and to compete with Complainant’s business.  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites).

Moreover, Complainant argues that Respondent registered and used the domain name in bad faith pursuant to Policy 4(b)(iv) because the domain name is confusingly similar to Complainant’s COMPAQ mark and is used for commercial gain.  The Panel finds that Respondent was attempting to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and its source, sponsorship, affiliation or endorsement of Respondent’s website.  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also 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).

Furthermore, Complainant contends that Respondent had actual or constructive knowledge of Complainant’s mark because the mark is registered with the United States Patent and Trademark Office.  Additionally, Respondent allowed Complainant’s business partner to use the domain name to sell Complainant’s products, where Complainant’s mark was prominently displayed.  The Panel finds that registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

 

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 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;

(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.

 

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 <thecompaqstore.com> domain name be TRANSFERRED from Respondent to Complainant.

___________________________________________________

Honorable Richard B. Wickersham, Judge (Ret.), Panelist
Dated: December 13, 2004

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