COMBINED

RESTRICTIONS DISPUTE RESOLUTION POLICY

UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

DECISION

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Mario Dolzer

Claim Number: FA0404000250246

PARTIES

The Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented by Heather C. Brunelli, of Thompson & Knight LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201.  The Respondent is Mario Dozer (“Respondent”), Burghausenerstr.2a, Muenchen, DE 80634, Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

            The domain name at issue is <hp-cartridges.biz>, registered with PSI USA, 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 April 1, 2004; the Forum received a hard copy of the Complaint on April 1, 2004.

On April 5, 2004, PSI USA, Inc. confirmed by e-mail to the Forum that the domain name <hp-cartridges.biz> is registered with PSI USA, Inc. and that Respondent is the current registrant of the name.  PSI USA, Inc. has verified that Respondent is bound by the PSI USA, Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Restrictions Dispute Resolution Policy (the “RDRP Policy”) and the Uniform Domain Name Dispute Resolution Policy (the “UDRP Policy”).

On April 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 27, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent pursuant to paragraph 2(a) of the Rules for the Uniform Dispute Resolution Policy as supplemented by the Supplemental Restrictions Dispute Resolution Policy (the “Rules”).

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 May 13, 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 “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

1. Respondent is not making a bona fide business or commercial use of the <hp-cartridges.biz> domain name.

2. Respondent’s <hp-cartridges.biz> domain name is confusingly similar to Complainant’s HP mark.

3. Respondent does not have any rights or legitimate interests in the <hp-cartridges.biz> domain name.

4. Respondent registered and used the <hp-cartridges.biz> domain name in bad faith.

            B.             Respondent

No Response was received.        

FINDINGS

Complainant is an internationally known company specializing in computer hardware and software, printers, electronics and other technical goods and services.  Complainant has used the HP mark in commerce since 1941.  Complainant holds several registrations for the HP mark with the U.S. Patent and Trademark Office (“USPTO”) and in Respondent’s country of residence, Germany.

Respondent registered the <hp-cartridges.biz> domain name on January 29, 2004.  The domain name has been used to resolve to several websites including a website that provided humorous content and a website that provided downloads for games.  Each website provided links to pornographic websites.  Internet users were bombarded with browser windows, which included pop-ups for pornographic websites and “security warnings” that would continue unless the user shut down their Internet browser.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a Complainant 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 UDRP Policy requires that the 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 the Complainant has rights;

(2) the 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.

Paragraph 4(b) of the RDRP Policy defines “bona fide business or commercial use” as the bona fide use or bona fide intent to use the domain name or any content software, materials, graphics or other information thereon, to permit Internet users to access one or more host computers through the DNS:

(1) to exchange goods, services, or property of any kind; or

(2) in the ordinary course of trade or business; or

(3) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business.

Bona Fide Business or Commercial Use

           

Under paragraph 4(a) of the RDRP, a respondent is required to submit to an administrative proceeding if a complainant asserts that a ".biz" domain name "is not being or will not be used primarily for a bona fide business or commercial purpose." The RDRP then (in paragraph 4(b)) goes on to define what is meant by "bona fide business or commercial use."  RDRP ¶ 4(a) expressly states that “the complainant will bear the burden of proving that [the domain name is not used primarily for a bona fide business or commercial purpose].”

Complainant asserts, “the websites actually located at the domain name do not appear to sell any product or service.  The websites are simply used as conduits to refer Internet visitors to other businesses through the opening of new browser windows and the links to pornographic websites.  A website which is merely used “as a referral to other businesses […] is not the purpose of the ‘.biz’ domain.”  Complainant cites GEA AG v. Jouse da Silva, D2003-0727 (WIPO Nov. 3, 2003) (quoting Citigroup, Inc. v. Parvin, D2002-0969 (WIPO May 12, 2003)).  Complainant provides print-offs of the websites that the domain name has resolved to but the majority of the text is in the German language.

Based on the Complaint, the Panel finds that there is insufficient evidence to determine whether Respondent is or is not using the domain name for a bona fide business or commercial use.  The Panel finds that transfer of the disputed domain name pursuant to the RDRP is not warranted. Because the Panel finds that the requirements of the RDRP have not been met, the Panel will proceed to analyze the dispute under the UDRP. 

Identical and/or Confusingly Similar

Due to Respondent’s failure to provide a Response, the Panel accepts all reasonable allegations and inferences in the Complaint as true.  See 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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint.

Complainant asserts that it holds several registrations with the USPTO and other trademark authorities for the HP mark.  However, Complainant has merely listed the marks it holds with the USPTO and other authorities by listing the marks’ corresponding registration numbers.  Complainant has not provided copies of the registration documents.  However, Complainant asserts rights in the HP mark and Respondent has failed to refute this assertion; therefore, the Panel accepts Complainant’s assertion as true. 

Moreover, other Panels have recognized that Complainant has rights in the HP mark.  See Hewlett-Packard Co. v. Administration Local, FA 190511 (Nat. Arb. Forum Oct. 13, 2003); see also Hewlett-Packard Co. v. Int’l Aggregate, FA 196139 (Nat. Arb. Forum Nov. 3, 2003).

Respondent’s <hp-cartridges.biz> domain name is confusingly similar to Complainant’s HP mark because the domain name fully incorporates the mark and merely adds the generic or descriptive term “cartridges.”  The addition of the term “cartridges” is insufficient to distinguish the domain name from 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 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity.

Furthermore, the addition of the generic top-level domain “.biz” is irrelevant in determining whether the <hp-cartridges.biz> domain name is confusingly similar to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants".

The Panel finds that UDRP ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel presumes that Respondent lacks rights and legitimate interests in the <hp-cartridges.biz> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name; 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.

Nothing in the record establishes that Respondent is commonly known by the <hp-cartridges.biz> domain name.  Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to UDRP ¶ 4(c)(ii).  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 UDRP ¶ 4(c)(ii) does not apply; 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.

Respondent’s <hp-cartridges.biz> domain name incorporates Complainant’s mark and is used in connection with pornographic websites.  Respondent’s use of the domain name tarnishes Complainant’s mark and is evidence that Respondent is not using the domain name to make a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii).  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name; see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”.

The Panel finds that UDRP ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

           

Respondent’s <hp-cartridges.biz> domain name incorporates Complainant’s mark and is used in connection with pornographic websites.  The content at Respondent’s domain name tarnishes Complainant’s mark and is evidence of bad faith registration and use pursuant to UDRP ¶ 4(a)(iii).  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith; see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name.

Furthermore, Complainant’s mark is well known internationally and is registered in Respondent’s country of residence.  Moreover, the domain name not only incorporates the HP mark but includes the term “cartridges,” which is undeniably related to Complainant’s business.  Thus, the Panel concludes that Respondent had actual or constructive knowledge of Complainant’s HP mark.  Registration of a domain name confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to UDRP ¶ 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 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 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.”).

           

            The Panel finds that UDRP ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all elements required under the UDRP, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <hp-cartridges.biz> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: May 24, 2004

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