DECISION

Compaq Trademark B.V. v. Diana Teylor

Claim Number:  FA0312000220039

PARTIES

Complainant is Compaq Trademark B.V. (“Complainant”), represented by Molly Buck Richard and Heather C. Brunelli, of Thompson & Knight LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201. Respondent is Diana Teylor (“Respondent”), no address provided.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <compaqcenter.org>, registered with Network Solutions, Inc.

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 17, 2003; the Forum received a hard copy of the Complaint on December 22, 2003.

On December 19, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <compaqcenter.org> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent solely via e-mail (as Respondent failed to provide any physical address) to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@compaqcenter.org 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 January 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <compaqcenter.org> domain name is confusingly similar to Complainant’s COMPAQ mark.

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

3. Respondent registered and used the <compaqcenter.org> domain name in bad faith.

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

FINDINGS

Complainant, Compaq Trademark B.V., is the owner of numerous proprietary marks used in connection with computer hardware, computer software and other related goods, including its numerous registrations of the COMPAQ mark (e.g. U.S. Reg. Nos. 1,467,066 and 2,183,367). Complainant first used the COMPAQ mark in 1982, and by 2000 Complainant’s COMPAQ-branded buisnesses represented over $40 billion in sales. In 2001, Interbrand (a leading brand marketing and consulting firm) ranked the COMPAQ mark as the 24th most valuable mark in the world, with a value of $14.6 billion.

In addition to its use of the COMPAQ mark for the above mentioned goods and services, Complainant lent the COMPAQ mark to the COMPAQ Center in Houston, a forum for sports and entertainment in Houston, Texas that hosts such professional sports teams as the Houston Rockets, the Houston Comets and the Houston Aeros. Complainant also operates a website at the <compaqcenter.com> domain name, which contains information about the COMPAQ center and the performances and sporting events held at the center.

Respondent, Diana Teylor, registered the <compaqcenter.org> domain name on November 4, 1998, without license or authorization to use Complainant’s COMPAQ mark for any purpose. Respondent uses the disputed domain name to host a webpage entitled “Ameteur Sex. Categorised Directory of Adult Sites.” Upon reaching the disputed domain name, Internet users are advised to “Enter Here” and directed to a directory of adult-oriented websites at the <free-porno-pics-xxx.com> domain name. 

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. See Microsoft Corp. v. J. Holiday Co., D2000-1493 (WIPO Feb. 20, 2000) (“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”).

Respondent’s <compaqcenter.org> domain name is confusingly similar to Complainant’s COMPAQ mark. The disputed domain name entirely incorporates Complainant’s COMPAQ mark, which is strong evidence of confusing similarity. Respondent’s addition of the word “center” to Complainant’s mark does not mitigate this confusing similarity, especially considering Complainant’s use of its mark in connection with the COMPAQ Center in Houston, Texas and its registration of the <compaqcenter.com> domain name. 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 Yellow Corp. v. MIC, D2003-0748 (WIPO Dec. 6, 2003):  “In short, when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity. Here, the other word ("Roadway") points toward, not away from, the services offered by Yellow Corporation. Confusing similarity is established on that basis”.

Accordingly, the Panel finds that the <compaqcenter.org> domain name is confusingly similar to Complainant’s COMPAQ mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the disputed domain name to operate a portal that directs Internet users to a directory of adult-oriented websites at the <free-porno-pics-xxx.com> domain name. The Panel presumes that Respondent’s motivation for this type of use for Complainant’s mark is commercial gain, via referral fees or commissions, and finds that such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, rendering Policy ¶¶ 4(c)(i) and (iii) inapplicable in this dispute. See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) finding that the use of the disputed domain name in connection with pornographic images and hyperlinks "tarnishes and dilutes" Complainant's mark and serves as evidence that Respondent lacks rights and legitimate interests in the name; see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use.

There is no affirmative evidence before the Panel that anyone other than Complainant is “commonly known by” the name COMPAQ CENTER, and the Panel thus finds that Policy ¶ 4(c)(ii) does not avail Respondent in this dispute. 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <compaqcenter.org> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered a domain name that is not only confusingly similar to Complainant’s COMPAQ mark, but that is identical to the name of the COMPAQ Center in Houston, Texas. Furthermore, Respondent’s domain name differs from Complainant’s <compaqcenter.com> domain name only in that it carries a different top-level domain (dot-org instead of dot-com). For these reasons the Panel infers that Respondent was aware of Complainant’s rights in the COMPAQ mark when it registered the disputed domain name, and concludes that Respondent’s decision to profit from the goodwill surrounding Complainant’s mark (and consequently tarnish that mark) by directing Internet users to adult-oriented content is evidence that the domain name was registered and used in bad faith. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”).

The Panel thus finds that Respondent registered and used the <compaqcenter.org> domain name 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 <compaqcenter.org> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  February 3, 2004

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