DECISION

Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Knowledge In Motion, Inc.

Claim Number: FA0404000255565

PARTIES

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, Texas 75201.  Respondent is Knowledge In Motion, Inc. (“Respondent”) represented by Kim M. Usiak, PMB 239, 1825 Ponce de Leon Blvd., Coral Gables, FL 33134.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpworlddirect.com>, registered with Network Solutions, 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.

Judge Karl V. Fink (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 14, 2004; the Forum received a hard copy of the Complaint on April 15, 2004.

On April 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <hpworlddirect.com> 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 April 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 11, 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@hpworlddirect.com by e-mail.

A timely Response was received and determined to be complete on May 11, 2004.

A timely Complainant’s Addition Submission was received on May 17, 2004 and a timely Respondent’s Additional Submission was received on May 24, 2004.

All submissions were considered by the Panel.

On May 25, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Hewlett-Packard is the owner of numerous proprietary marks in connection with computer hardware, printers, peripherals, software, and other related goods and services.  Hewlett-Packard is the owner of over 40 trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for the trademark “HP” and for marks containing "HP" (collectively, the "HP Marks"). Included in these registrations is a registration for “HP Direct & Design” and two registrations for “HP WORLD”.  Complainant uses the HP Marks worldwide, and has registrations for trademarks and services marks containing HP in over 140 countries and regions around the world.  The mark “HP” was first used by Hewlett-Packard in commerce at least as early as 1941, was continuously used thereafter, and is still in use on or in connection with Complainant’s goods, services, and advertising for its goods and services throughout the world.

The HP Marks have been found by panelists of the National Arbitration Forum to be famous and distinctive marks.

Hewlett-Packard also owns various domain name registrations for domain names incorporating “HP” such as <hp.com>, <hp.net>, <hp.org>, <hpshopping.com>, <hpprinters.com> and <hpprinter.com>. 

The domain name <hpworlddirect.com> is confusingly similar to Complainant’s famous HP mark, which was registered as a trademark throughout the world long before Respondent registered the domain name on May 9, 2003. 

Respondent’s domain name <hpworlddirect.com> contains Complainant’s famous HP trademark along with the descriptive words “world” and “direct” and the most common URL suffix “.com.” The mere addition of descriptive or generic words to a famous mark, does not eliminate the similarity between the domain name and the trademark.  

The website found at <hpworlddirect.com> could cause further confusion based upon the domain name.  The website represents that “HPworldDIRECT” has over 25 years of “Hewlett Packard and Compaq product experience” and then advertises products for HP and COMPAQ branded computer systems. The site uses the HP logo and the name “HPworldDIRECT” without permission and sells numerous computer parts and accessories. A visitor to the website located at <hpworlddirect.com> can easily assume that the site originates with or is authorized by Complainant, when it is not.

Complainant attempted to work directly with Respondent to resolve all issues with respect to the domain name, by sending a letter to Respondent asking that the domain name be transferred to Complainant. 

Respondent has no rights or legitimate interests in the <hpworlddirect.com> domain name.  Respondent has not used the domain name in connection with a bona fide offering of goods or services.  Respondent lacks rights in the disputed domain name because Respondent competes with Complainant by selling Complainant’s used parts without a license from Complainant to do so. 

Respondent knew of the HP mark prior to its registration of the domain name as the mark is famous and Respondent appears to sell products to be used with Complainant’s products.  In addition, knowledge of the HP mark is presumed since the mark was registered prior to Respondent’s registration of the domain names. 

Complainant has not authorized Respondent to use the HP mark as a domain name or company name.  Respondent was not known as “HPworldDirect” at any time prior to registration of the domain name.

Respondent registered and is using the <hpworlddirect.com> domain name in bad faith.  Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s HP mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. 

Any reasonable Internet users seeing the <hpworlddirect.com> domain name is likely to assume that the website affiliated with this domain name is sponsored by or affiliated with Complainant.  Respondent has intentionally created this situation by use of the HP mark. 

B. Respondent

Complainant has provided abundant case law regarding the use of and rulings on the HP mark.  In each case cited, the use of HP was teamed with a specific product or service provided by Hewlett-Packard.  hpworlddirect (hereafter referred to as “the website”) is a more generic domain name by nature and does not reference any specific product or service that would be confused with any product or service provided by Hewlett-Packard.

The website specifically states that it is not affiliated with Hewlett-Packard and denotes that HP logos are copyrights and trademarks of the Hewlett-Packard Company. 

Complainant itself orders products from Respondent as well as refers its customers directly to Respondent.  This demonstrates there is no confusion.

Respondent, as stated on the website, has over 25 years of Hewlett Packard and Compaq product experience.  Standard business practice is for a service/sales provider to state one’s expertise within their particular industry. 

Respondent has not willfully or knowingly registered the website or used the website in an act of bad faith, either to attract customers to the website or to create consumer confusion. The name of the website denotes only that Respondent sells Hewlett Packard parts and by its nature does not imply an affiliation with Complainant or attempt to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

Complainant’s mark is not affiliated with the goods and services offered by the website.

C. Additional Submissions

Complainant

In their original complaint, Complainant cited to numerous decisions where domain names incorporating the “HP” and “HEWLETT-PACKARD” marks were paired with descriptive or generic terms.  Although many of the domain names identified in the cited decisions did contain terms identifying products provided by Hewlett-Packard such as “copier” and  “printer,” Complainant also cited to Hewlett-Packard Company v. Compu-D International Inc., FA 99660 (Nat. Arb. Forum Oct. 5, 2001) wherein the domain name <hpdeals.com> was found to be confusingly similar to the famous HP mark “because it is merely the trademark with a generic word and the common URL suffix ‘.com’ attached.” 

The addition of descriptive or generic terms to a trademark, where the terms do not specifically refer to products or services offered under a trademark, does not make the domain name any less confusingly similar to the trademark.

As pointed out in Complainant’s original Complaint, a disclaimer does nothing to avoid initial interest confusion based upon the domain name. 

Respondent argues that “Complainants themselves order products from Respondent as well as refer their customers directly to Respondent.”  Respondent offers no proof to support this statement, and Complainant is not aware of any such orders or referrals. 

Even were it found to be true that Complainant has engaged in business with Respondent this does not grant them any rights to use the HP mark in their domain name.  Respondent’s use of the HP mark in its domain name creates the false impression that the website found at the domain name is sponsored by or affiliated with Complainant when it is not and therefore is confusingly similar to the HP mark. 

Complainant has never authorized Respondent to use the HP mark in its domain name, and simply having experience selling HP branded products does not give Respondent the right to use the famous HP mark in its domain name. 

Respondent

Respondent has attached copies of e-mails and orders from Complainant’s employees evidencing the Complainant’s business dealings with Respondent.  This business relationship between Complainant and Respondent clearly demonstrates that Complainant’s claim that Respondent’s “domain name creates the false impression that the website found at the domain name is sponsored by or affiliated with Complainants” is unsubstantiated. 

FINDINGS

For the reasons set forth below, the Panel finds Complainant has proved that the domain name should be transferred.

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 the 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.

Identical and/or Confusingly Similar

Complainant is “the owner of numerous proprietary marks in connection with computer hardware, printers, peripherals, software, and other related goods and services.” Complaint at Sec. 4(C).  Complainant asserts rights in the marks HP (Reg. No. 1116835, issued Apr. 24, 1979), HP DIRECT & DESIGN (Reg. No. 1761887, issued Mar. 30, 1993), and HP WORLD (Reg. No. 2339761, issued Apr. 11, 2000), which are all listed on the Principal Register of the United States Patent and Trademark Office.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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.); see also 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.”).

The Panel finds the disputed domain name <hpworlddirect.com> is confusingly similar to Complainant’s famous HP mark because the domain name incorporates the mark and merely adds the generic or descriptive terms “world” and “direct.”  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 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 Policy).

Complainant has proven this element.

Rights or Legitimate Interests

The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name and Complainant has “not authorized Respondent to use the HP mark as a domain name or company name.”  Complaint at Sec. 5(B) ¶ 6.  See 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); see also 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 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 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); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

The inclusion of a disclaimer does not stop initial interest confusion.  See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the addition of a disclaimer, when the domain name consists of Complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by Complainant).

Complainant has proven this element.

Registration and Use in Bad Faith

The Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) as a result of its intention to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark.  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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

The Panel also finds that Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith registration and use.  See Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (finding that “Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights”); see also Thomas & Betts Int’l v. Power Cabling Corp., Inc., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to Complainant’s website on Respondent’s website).

Complainant argues, and the Panel finds, that the fame associated with its HP mark “permits the inference that Respondent knew of Complainant’s ownership of the mark and that Respondent acted in bad faith by registering a domain name that includes a mark they knew or should have known was proprietary property of another.”  Complaint at 5(C) ¶ 3.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Complainant has proven this element.

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

Judge Karl V. Fink (Ret.), Panelist
Dated: June 8, 2004

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