DECISION

 

Hewlett-Packard Company v. Alvaro Collazo

Claim Number: FA0302000144628

 

PARTIES

Complainant is Hewlett-Packard Company, Palo Alto, CA, USA (“Complainant”) represented by Molly Buck Richard, of Thompson & Knight LLP.  Respondent is Alvaro Collazo, Tarariras, Colonia, Republic of Uruguay (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hpcanada.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

 

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 5, 2003; the Forum received a hard copy of the Complaint on February 10, 2003.

 

On February 7, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <hpcanada.com> is registered with Iholdings.Com, Inc.d/b/a Dotregistrar.Com and that the Respondent is the current registrant of the name.  Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a 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 February 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 3, 2003 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@hpcanada.com by e-mail.

 

A timely Response was received on February 13, 2003.

 

Additional material was submitted by the Complainant, which was received by the National Arbitration Forum on February 15, 2003.

 

On February 19, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

Complainant

Complainant claims as follows:

A.        CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶ 4(a)(i)):

 

The domain name <hpcanada.com> registered by Collazo is confusingly similar to Complainant’s famous HP mark, which was registered as a trademark throughout the world long before Collazo registered the domain name on November 3, 2002.  The Respondent’s domain name contains Complainant’s exact mark, “HP,” with a non-distinctive geographically descriptive term, “Canada,” 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.”   Caterpillar Inc. v. Stephen R. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001). See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “neither 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”). Complainant’s HP Marks were in use almost 60 years prior to Respondent’s registration of the domain name <hpcanada.com>.  Furthermore, consumers seeking information on Hewlett-Packard products or services available in Canada could easily assume that a site with the domain name <hpcanada.com> is associated with Hewlett-Packard, and would be highly surprised to discover that the owner of the domain name has no relationship to Hewlett-Packard. Respondent is not a licensee and is not affiliated with Complainant in any manner. Respondent’s continued use of the domain name <hpcanada.com> is likely to confuse Complainant’s customers and potential customers into believing that there is some affiliation, connection, sponsorship, approval or association between the Respondent and Complainant when in fact none exists.

 

B.        NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):

 

Collazo has no rights or legitimate interests in the <hpcanada.com> domain name.  He is simply exploiting the fact that Hewlett-Packard’s customers and potential customers will, from time to time, include the geographic term “Canada” in a domain address when looking for information on Hewlett-Packard’s business in Canada.  He is attempting to confuse and to divert such customers to his Internet website for his own commercial gain through a posting of links on his website and the presence of advertising, including “pop-up” advertising.  Collazo uses the <hpcanada.com> domain name to post links to commercial websites, some of which sell computers and related software and services, which is the same business in which Hewlett-Packard engages.  (See printout from <hpcanada.com> at Exhibit C.)  Certain links lead to websites operated by Dell Computer Corporation and Gateway, Inc., direct competitors of Hewlett-Packard.  Collazo’s <hpcanada.com> website also initiates “pop-up” advertising and contains large advertisements on the website home page itself.  (See Exhibit C and additional printouts from <hpcanada.com> at Exhibit D.)  All of these advertisements are for products or services offered by third-party businesses, not by Collazo himself.

 

This use is not a bona-fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 114 (D. Mass. 2002) (finding that, because Respondent’s sole purpose in selecting the domain names was to cause confusion with Complainant’s website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding that a respondent who sought profit by redirecting Internet traffic connected with the MSNBC mark had no rights or legitimate interests in the famous mark); N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona-fide use where Respondent used the domain name to divert Internet users to its competing website); Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use of a mark when a respondent was using another’s marks to divert Internet users to its own website).

 

On information and belief, Respondent is not known by, and is not affiliated with any business known by, the name “hpcanada.com,” “hpcanada,” or any similar name or mark.  Hewlett-Packard has never granted Respondent permission to use the HP mark or any similar name or mark.  Respondent is in no way affiliated with Hewlett-Packard.  Respondent does not sell any of Complainant’s products.  Thus, Respondent does not meet the requirements of Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark); see also General Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that misspelled a famous mark and that led users to a series of advertisement sites, stating that a “[r]espondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire; Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that a respondent was not commonly known by the mark contained in the domain name where the complainant, Nokia Corp., had not permitted the respondent to use the NOKIA mark and no other facts or elements justified prior rights or a legitimate connection to the name “NOKIA” or “wwwnokia”); Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark). 

 

Here, it is clear that Collazo has no rights or legitimate interests in the disputed domain name, <hpcanada.com>, thus Policy ¶ 4(c)(ii) has been satisfied.

 

C.        REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):

 

Collazo uses the HP mark in the <hpcanada.com> domain name to divert Internet users to a website that links to other commercial websites, some of which sell competitive computers and related software and services and that contains pop-up and other advertisements.  This is a commercial purpose for which Collazo has no legitimate reason to use the name or mark “HP” or “hpcanada.com.”  By diverting consumers to sites selling computers and computer-related products and services and by placing third-party advertisements on the site, Collazo is opportunistically attempting to trade on and to profit from the goodwill in and fame of Complainant’s mark.  Collazo can be presumed to have known of Complainant’s famous HP mark – it is not a common word and yet is incorporated in its entirety into Respondent’s domain name.

 

Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).  In addition, Collazo’s behavior constitutes bad faith registration and use under Policy ¶ 4(c)(iv).  See General Mills, supra (finding bad faith where the respondent linked the disputed domain name, which was a misspelling of a famous mark, to a series of other advertisement websites, and noting that similarity or dissimilarity of products is not a factor under the ICANN Policy or the current law of famous marks); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding a suggestion of opportunistic bad faith where a mark was obviously connected with the complainant and its products and where respondent had no connection with the complainant or its products); AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(c)(iv) where the respondent linked the domain name to an Internet site that advertised and offered numerous web services); ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith when the website in dispute was linked by the respondent to a second website, from which second website the respondent presumably received a portion of advertising revenue because of his direction of Internet traffic to that site); 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 the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

Respondent’s only possible reason for using the domain name <hpcanada.com> is to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

 

B. Respondent

According to the Respondent:

I have registered this domain to create a portal of resources for Canadian expatriates in Uruguay and the rest of South America. HP in my domain stands for "Home Page". Giving Hewlett Packard exclusivity over the two letter combination "HP" is completely irrational and against the spirit of the Internet and the UDRP.

 

The domain was parked with the registrar while in development and I didn't realize that there were offers for products competing with Hewlett Packard since that advertising is not controlled by me. I have now forwarded the domain to a dedicated parking page with no advertising.

 

C. Additional Submissions

Complainant submitted additional material contending:

Respondent does not deny in his e-mailed comments that Hewlett-Packard is the owner of the “HP” trademark or any of the many registrations described in the complaint or that sixty years of significant and extensive use of the HP marks have made those marks famous and distinctive.  He does voice his dislike of that portion of well-established trademark law that allows Hewlett-Packard to exclude others from using its distinctive, famous “HP” mark in a manner likely to confuse others, but that dislike is, unfortunately for Collazo, irrelevant to the famous and highly-distinctive nature of the HP marks and the effect that status has on the ability of others to use “HP” in commerce.

 

            Respondent’s only attempt to defend his bad-faith infringing activity is to say that “HP” in his domain name stands for “Home Page,” and to claim not to have known what advertising was being placed on his <hpcanada.com> site.  Hewlett-Packard notes that the advertising at <hpcanada.com> was the same advertising that still appears on another of Respondent’s websites, <alvarocollazo.com>.  Respondent admits that the advertising contained “offers for products competing with Hewlett Packard.”  Respondent claims that he has now forwarded the domain to a page with no advertising.

 

Hewlett-Packard declines to place any credence in Respondent’s hurried, after-the-fact attempt to justify his bad-faith infringing activity, and respectfully requests that the Panel do the same, deciding this dispute with regard only to the facts and evidence as they existed at the time the complaint was filed.  To allow Respondent’s claim that he has made post-filing changes to his website to alter the outcome of this dispute would open the door for all future respondents in domain name disputes to avoid the consequences of their actions and continue to hold domain names containing the famous, distinctive trademarks of others simply by claiming that they had modified their websites after a complaint is filed.  This would defy the entire basis of the Uniform Domain Name Dispute Resolution Policy.  Borrowing language from Respondent’s e-mail, Hewlett-Packard notes that such an outcome would be “completely irrational and against the spirit of the Internet and the UDRP.”

 

Respondent did not submit any additional material.

 

FINDINGS

Complainant has proved each of the three necessary elements for this Panel to order the <hpcanada.com> domain name to 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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

Identical and/or Confusingly Similar

 

Complainant, Hewlett-Packard Co., is the owner of numerous marks in connection with computer hardware, printers, peripherals, software and other related goods and services. Complainant holds numerous registrations for the HP mark, including, inter alia, U.S. Patent and Trademark Office Reg. No. 1,116,835 registered on April 24, 1979. Complainant first used the HP mark in commerce in 1941. The earliest registered trademark provided to the Panel dates from 1955 (still a rather long time for these two letters to be used in commerce). Many decades of extensive promotional efforts have made the HP mark famous and distinct, especially in the computer market where Complainant manufactures printers, See The 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Complainant has rights to the name when the mark is registered in a country even if Complainant has never traded in that country).

 

Respondent’s <hpcanada.com> domain name is confusingly similar to Complainant’s HP mark. Respondent’s domain name contains Complainant’s HP mark in its entirety (even though the mark is admittedly short), and only deviates by the addition of a non-distinctive geographic term. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark); see also Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark); see also 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).

 

 

Rights or Legitimate Interests

 

Respondent does not have any rights or legitimate interests in the <hpcanada.com> domain name. Respondent is simply exploiting the fact Hewlett-Packard’s customers and potential customers might include the geographic term “Canada” in a domain address when looking for information on Complainant’s business in Canada. Such use attempts to confuse and divert Internet users based solely on the fame of Complainant’s HP mark. Respondent’s use of the domain name indicates <hpcanada.com> posts links to commercial websites, some of which sell computers and related software and services that compete with Complainant (even if such information commonly occurs on so-called “parking” pages, Respondent has a responsibility for the content Respondent allows to be posted at its site).

 

Additionally, Respondent makes use of “pop-up” advertising on its website. Respondent’s use of the domain name is not a bona-fide offering of goods or services under Policy ¶ 4(c)(i), or noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

 

Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii). Respondent is not authorized to make use of the HP mark, nor is Respondent affiliated in any way with Complainant, 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 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).

 

Registration and Use in Bad Faith

 

Respondent had knowledge of Complainant’s rights in the HP mark prior to seeking registration of the <hpcanada.com> domain name. Therefore, subsequent registration of the infringing domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

 

Respondent’s only possible reason for using the domain name <hpcanada.com> is to intentionally attract, for commercial gain, Internet users to Respondent’s website. Respondent’s infringing use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).

 

While Respondent’s claim the HP in <hpcanada.com> means “home page” may be true, it strikes this Panelist as not likely to be true, especially in light of the fact the domain name was registered on November 3, 2002 and nothing was constructed at the site as of the time of this complaint.  It doesn’t take much to construct a “portal of resources for Canadian expatriates” because such a site would consist primarily of links to other sites.

 

DECISION

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

 

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

 

  

Houston Putnam Lowry, Panelist
Dated: March 5, 2003

 

 

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