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Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. [2004] GENDND 874 (22 July 2004)


National Arbitration Forum

DECISION

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

HP Supplies and Nationwide Office Supplies Ltd.

Claim Number: FA0406000282387

PARTIES

Complainants are Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented by Heather C. Brunelli, of Thompson & Knight, LLP, Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas, TX 75201.  Respondents are HP Supplies and Nationwide Office Supplies Ltd.  (“Respondent”), 1 Beadman Street, West Norwood, London, England SE27 ODN.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hpsupplies.com>, registered with iHoldings.com, Inc.  d/b/a Dotregistrar.com (hereinafter “Dotregistrar.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.

Louis E.Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 1, 2004; the Forum received a hard copy of the Complaint on June 2, 2004.

On June 8, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain name <hpsupplies.com> is registered with Dotregistrar.com and that the Respondent is the current registrant of the name.  Dotregistrar.com has verified that Respondent is bound by the Dotregistrar.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 June 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 28, 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@hpsupplies.com by e-mail.

A timely Response was received and determined to be complete on June 24, 2004.

Complainant filed a timely Additional Submission on June 29, 2004.

Respondent filed a timely Additional Submission on July 1, 2004.

On July 8, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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").  In addition, Complainant also uses the HP Marks worldwide, and have 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 domain name <hpsupplies.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 April 5, 2001.  In fact, Complainant’s HP mark was in use for more than 60 years and had become famous for the products manufactured by and services offered by Complainant prior to Respondent’s registration of the <hpsupplies.com> domain name.  Respondent’s domain name <hpsupplies.com> contains Complainant’s famous HP trademark along with the descriptive word “supplies” and the most common URL suffix “.com.”  The mere addition of descriptive or generic words to a famous mark, however, does not eliminate the similarity between the domain name and the trademark.  The term “supplies” is a descriptive term that does not change the character of the domain name to avoid confusion with Complainant’s HP mark.  The term “supplies” is often used to describe toner and ink jet cartridges used with Complainant’s printers.  Consumers will likely assume that a domain name containing the famous HP mark and the descriptive term “supplies” is associated with or sponsored by Complainant when it is not.  The addition of the descriptive term “supplies” and the URL suffix “.com” does not prevent the domain name <hpsupplies.com> from being confusingly similar to Complainant’s HP Marks.

Respondent has no rights or legitimate interests in the <hpsupplies.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 Hewlett-Packard’s customers and potential customers may assume that a website located at a domain name incorporating the HP trademark is affiliated with or sponsored by Complainant. 

The Complainant has not authorized Respondent to use the HP mark as a domain name or company name.  HP Respondent is fully aware of Complainant’s HP trademark as Respondent advertises products and products for use with Hewlett-Packard products.   

By using the <hpsupplies.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 HP mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.  Respondent has intentionally created this situation by use of the HP mark.  In addition, the wide notoriety of the Complainant’s 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 the proprietary property of another.

B.  Respondent

The domain name was first registered in January 1998 to a company Called Interactive Web World.  The domain name was used by a company called <expresssupplies.com> which Respondent believes is part of interactive Web World.  The company is still trading and still selling many brands of Laser toner and ink cartridges including Hewlett Packard and Epson.  The domain registration expired in January 2001 and was bought by <buydomains.com>.  Respondent purchased it from <buydomains.com> for $300 on January 21, 2001.  Respondent states that it was aware of the history of the domain name and bought it in good faith, as it had already been used for a number of years by a company reselling branded toner cartridges.

When Respondent first started <hpsupplies.com> site it was only selling Hewlett Packard branded goods and it had a disclaimer that read: “The HP logo is a registered trademark of Hewlett Packard Company and does not imply endorsement of this web site.  All trademarks are acknowledged and respected.  Hpsupplies.com is an independent reseller of genuine HP supplies for laserjet, deskjet and other types of printer consumables.”

At a point in time, Respondent decided to have the web site updated with online payment available.  While this was being done Respondent asked the programmer to redesign the site and point <hpsupplies.com> towards <nationwideofficesupplies.co.uk>, a reseller of various branded ink and laser cartridges.  Respondent states it is common knowledge that a Lexmark ink cartridge does not fit in a Hewlett Packard printer; therefore there is no conflict of interest.  Respondent further states that there was never any intention to confuse customers.  Respondent believes it is obvious that its site has nothing to do with The Hewlett Packard Company.  Either way, if a potential customer found his or her way to the <nationwideofficesupplies.co.uk> site via <hpsupplies.com>, she or he would surely be looking only for original Hewlett Packard products.  Respondent does not deny that it sells compatible products for Hewlett Packard printers but maintains there was no bad faith intended.  Further, this was only a temporary situation and the site would return to selling only HP products when the revisions were completed.

Respondent understands HP is a trademark but was of the opinion “supplies” or “hpsupplies” are not registered trademarks.  Respondent believes <hpsupplies.com> states what Respondent will be doing as a company, which is sell HP supplies. 

C.  Additional Submissions

Complainant

In its Response to Complainant’s Complaint, Respondent provides the prior registration history for the <hpsupplies.com> domain name.  This information is of no value in evaluating whether Respondent registered the domain name in bad faith.  Simply because a domain name is available for registration does not mean that it does not violate the rights of a third party and has no bearing on whether the registration and use was in bad faith.  The prior registrant’s use of the domain name may have been an infringement of Complainant’s rights and Respondent’s unfounded reliance on a third party’s potentially infringing prior use of a domain name does not negate the fact that its use and registration of the domain name violates the UDRP. 

Simply because Respondent claims that in the past it only sold HP branded products on the <hpsupplies.com> website does nothing to prove that Respondent did not register and use the domain name in bad faith.  Respondent admits that it sells products competitive with HP branded products on the website currently found at <hpsupplies.com> and could continue to do so in the future regardless of its claims that such use is only temporary.  By putting the famous HP mark into its domain name, Respondent had the intention of using the goodwill built up in the HP brand to attract visitors to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and Respondent’s products. 

Respondent argues that at one point (and not currently) the Respondent had a disclaimer on its website regarding the HP logo which it argues shows it had no bad faith.  The use of a disclaimer does not avoid a finding that the registration and use of the domain name violates the UDRP.  The disclaimer can do nothing to avoid the initial interest confusion caused by use of the HP mark in the domain name.  In addition, the disclaimer related only to the HP logo and mentioned nothing about use of the HP mark in the domain name.  Additionally, as the disclaimer no longer even appears on the site, it should have no bearing on the determination of whether the current use and registration of the domain name violates the UDRP. 

Although Respondent claims to be part of the Hewlett-Packard “partnership / channel programme” in the UK, Respondent provides no proof of this allegation and Complainant’s records do not reflect any such association.  However, Complainant notes that its standard partnership agreements expressly prohibit resellers from incorporating “HP” into its domain names.  So even if Respondent’s claim is true, Respondent is likely in breach of its agreement with Hewlett-Packard.  In addition, if Respondent had entered into such a contract with Complainant, Respondent would also be on notice that its registration of the <hpsupplies.com> domain name was not condoned by Complainant, which would further prove Respondent’s bad faith registration and use of the domain name. 

 

Respondent

Respondent states that he has now pointed <hpsupplies.com> to a blank page.  This was done he says as he got the impression Hewlett Packard feels Respondent is losing them sales through its web site as it sells compatible products for its printers.  In truth, Respondent states, he has not sold one compatible cartridge as a result of pointing <hpsupplies.com> towards <nationwideofficesupplies.co.uk> web site.  Respondent reiterates its earlier position and, especially, that pointing <hpsupplies.com> towards <nationwideofficesupplies.co.uk> was a temporary measure and no bad faith was intended. 

FINDINGS

Having duly considered the Complaint, Response and the additional submissions by both parties, I find that:

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 interest to the domain name

3. The domain name has been registered and is being used in bad faith


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 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 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

The Panel finds that Complainant has rights in the HP mark as evidenced by its registration with the U.S. Patent and Trademark Office.  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).

The Panel finds that Respondent’s <hpsupplies.com> domain name is confusingly similar to Complainant’s HP mark because the only difference is the addition of the word “supplies.”  The Panel also finds that adding the generic word “supplies” does not significantly distinguish the domain name from the mark.  See Space Imaging LLC v. Brownell, 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 Brambles Indus.  Ltd.  v. Geelong Car Co.  Pty.  Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business). 

The Panel finds that actual confusion has little or no bearing on likelihood of confusion, especially in the context of the Internet.  See Gateway, Inc., v. Pixelera.com, Inc., D2000-0109, (WIPO Apr. 6, 2000) (“Evidence of lack of actual confusion is irrelevant since the test is confined to a consideration of the disputed domain name and the trademarks.”).


Rights or Legitimate Interests

Complainant alleges that Respondent is using the disputed domain name to refer to a website that sells supplies of its competitors.  The Panel finds that Respondent’s use of Complainant’s mark to sell Complainant’s competitor’s goods is not in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name, 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).

The Panel determines that even an agreement to sell Complainant’s supplies does not give Respondent rights to use Complainant’s mark in a domain name.  See Allen-Edmonds Shoe Corp.  v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (“[W]ithout a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name.”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent, a reseller of Complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to Complainant’s mark).

Complainant asserts that Respondent is not commonly known by the disputed domain name even though Respondent had registered the domain name under the name “HP Supplies.”  The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the “HP Supplies” name does not establish that Respondent is commonly known by the  <hpsupplies.com> domain name.  See Neiman Marcus Group, Inc.  v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan.13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information); see also Yoga Works, Inc.  v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name).

Registration and Use in Bad Faith

Complainant alleges that Respondent is appropriating Complainant’s mark in the <hpsupplies.com> domain name to refer Internet users to <nationwideofficesupplies.co.uk>.  The Panel finds that Respondent, by appropriating Complainant’s mark to sell competing products, is creating a likelihood of confusion for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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 Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

The Panel also finds that, because Respondent is selling supplies for Complainant’s products, Respondent had actual notice of Complainant’s rights in the HP mark.  Therefore, the Panel finds that Respondent’s subsequent registration and use of the mark is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See 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."); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Although Respondent claims to be part of the Hewlett-Packard “partnership / channel programme” in the UK, Respondent provides no proof of this allegation and Complainant’s records do not reflect any such association.  However, Complainant notes that its standard partnership agreements expressly prohibit resellers from incorporating “HP” into any domain names.  So even if Respondent’s claim is true, Respondent is likely in breach of its agreement with Hewlett-Packard.  In addition, if Respondent had entered into such a contract with Complainant, Respondent would also be on notice that its registration of the <hpsupplies.com> domain name was not condoned by Complainant, which would further prove Respondent’s bad faith registration and use of the domain name.  By putting the famous HP mark into its domain name, Respondent had the intention of using the goodwill built up in the HP brand to attract visitors to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and Respondent’s products. 

DECISION

Claimant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <hpsupplies.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E.  Condon, Panelist
Dated: July 22, 2004


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