National Arbitration Forum
Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Alon Shemesh
Claim Number: FA0503000434145
Complainant is Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (“Complainant”), represented by Heather C. Brunelli of Thompson and Knight LLP, 1700 Pacific Avenue, Suite 3300, Dallas, TX 75201. Respondent is Alon Shemesh (“Respondent”), Hagalil 87, Ganey Tikva 55900, Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hp.ro>, registered with Romanian National Institute for R&D in Informatics.
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.
Hon. Richard B. Wickersham, Judge (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2005.
On March 4, 2005, Romanian National Institute for R&D in Informatics confirmed by e-mail to the National Arbitration Forum that the domain name <hp.ro> is registered with Romanian National Institute for R&D in Informatics and that Respondent is the current registrant of the name. Romanian National Institute for R&D in Informatics has verified that Respondent is bound by the Romanian National Institute for R&D in Informatics 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 March 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2005 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 firstname.lastname@example.org by e-mail.
A late Response was received and determined to be complete on March 26, 2005.
On March 31, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Richard B. Wickersham, Judge (Ret.), as Panelist.
Complainant requests that the domain name be transferred from Respondent to 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 forty trademarks and service marks registered on the Principal Register of the United States Patent and Trademark Office for the HP trademark and for marks containing "HP.” In addition, Complainants also use the HP mark worldwide, and have registrations for trademarks and services marks containing HP in over 140 countries and regions around the world.
The HP mark 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 Complainants’ goods, services, and advertising for its goods and services throughout the world. The HP mark has been registered in Israel since at least as early as 1967 and remains registered and in use in Israel. The HP mark has been registered in Romania since at least as early as 2000 and remains registered and in use in Romania.
The HP mark has been found by panelists of the National Arbitration Forum to be a famous and distinctive mark. See Hewlett-Packard Co. v. Homepage Organisation, FA 94446 (Nat. Arb. Forum May 11, 2000) (“These promotional efforts over the past sixty years have resulted in the HP marks becoming famous and distinctive”); see also Hewlett-Packard Co. v. Kim Yong Hwan, FA 95358 (Nat. Arb. Forum Sept. 7, 2000) (“Complainant’s mark “HP” is famous and distinctive, and, thus, is entitled to the higher protection afforded it by law”); see also Hewlett-Packard Co. v. HPB2B.com, FA 96203 (Nat. Arb. Forum Dec. 30, 2000) (finding that promotional efforts have resulted in the HP marks becoming famous and distinctive marks); see also Hewlett-Packard Co. v. Compu-D International Inc., FA 99660 (Nat. Arb. Forum Oct. 5, 2001) (“Over the last sixty years HP has become a famous and distinctive mark due to Complainant’s promotional efforts.”); see also Hewlett-Packard Co. v. Russx Casting Co., FA 99709 (Nat. Arb. Forum Oct. 22, 2001) (“Over the last six decades Complainant has invested a substantial amount of money to develop goodwill in the mark and cause consumers throughout the United States and the world to recognize the mark as distinctly designating products originating from Complainant.”); see also Hewlett-Packard Co. v. Skip Zwahlen, FA 99755 (Nat. Arb. Forum Oct 24, 2001) (finding that HP is recognized in the United States and throughout the world as distinctly designating products originating with Complainant).
The domain name <hp.ro> is confusingly similar to Complainants’ HP mark, which was registered as a trademark throughout the world long before Respondent registered the domain name. In fact, Complainants’ HP mark was registered in Respondent’s country of residence (Israel) since 1967 and had become well known for computers, printers, and related goods and services through extensive use and advertising throughout the world prior to Respondent’s registration of the <hp.ro> domain name.
Respondent’s domain name <hp.ro> is identical to Complainants’ famous HP trademark with the mere addition of the country code top level domain “.ro.” The addition of a top level domain name to a famous trademark does not distinguish the domain name. Since the only difference between Complainants’ famous HP trademark and the Respondent’s domain name is the addition of the top level domain name, the <hp.ro> domain name is identical to Complainants’ mark.
Respondent has no rights or legitimate interests in the <hp.ro> domain name. Respondent is not commonly known by the domain name nor is Respondent actively using the domain name. Respondent has not established any rights or legitimate interests in the domain name.
Respondent registered and is using the <hp.ro> domain name in bad faith. Respondent is passively holding the <hp.ro> domain name which does not resolve to an active website. Respondent must have been aware of Complainant’s rights to the HP mark when registering the domain name. This is all evidence of bad faith registration and use.
(Response was received after deadline for response, but will be fully
Considered by Panel).
First of all, I would like to indicate the fact that I'm a student (computer science), and therefore do not have the financial possibility to hire a lawyer who will help me to protect what I believe is mine by law. I do not have also the time nor the money to type and to print thousands of pages to explain my position. As the honorable prosecutor should know some of us do have to pay the outrageous price for each tuner. I'm aware of the fact that my lack of financial ability will harm my chances to win, and therefore I want to declare here and now that if it will be decided to take the domain from my property, I'm keeping for my self the future right to sue back what is mine.
I purchased the domain <hp.ro> in the year 1998. This domain was purchased with the intention to offer a worldwide service that will give homepage with short address (sub domain) to sites with long URL (e.g. sites hosted in geocities). In case you didn’t get it HP = Home Page. At the time I didn't have the technical knowledge needed to build a site of this kind, but I wanted to own a suitable domain for prospective use. I checked some different extensions, and eventually chose ro, mainly due to the fact that it was a one life time payment of $60, with no yearly fee. Up to date, I'm offering a similar service in Israel, with the domain <pri.co.il>, that offers a short address to Israeli sites. The service is free, and contrary to competitive sites it has no popup windows. As soon as I have the time to translate the system to English, I'm going to offer a parallel worldwide service with the domain <hp.ro>. The service is going to be money free, ads free and open to all.
Hewlett-Packard is trying to demand ownership of the two letters hp, and I cannot help but wonder why. The prosecutor registered under the name: Hewlett-Packard Development Company, L.P. The two letters hp are nothing more than the acronyms of the first two words in the company's name. As you know, there are only 26 letters in English. The number of potential combinations of two letters is 676. If we assume, for the sake of simplicity, that the distribution is equal we will come to the conclusion that:
There are 10,000,000 people that hp is the acronyms of their name. Are we going to forbid them to sign with acronyms from now on? If we assume again for the simplicity of the calculation that there are 70,000,000 companies/businesses with two words name, we will find that for each combination of two letters there will be more than 100,000 commercial competitors.
Accepting Hewlett-Packard's sue will create an absurd situation. Every private man with two letters domain will be exposed to sues from 100,000 different firms.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 Policy ¶ 4(a)(i).
Complainant asserts that it has established rights in the HP mark through registration of the mark in countries around the world including, the United States Patent and Trademark Office (Reg. No. 614,803 issued October 25, 1955. Moreover, Complainant states that it has used the mark in commerce since at least 1941 in the United States, 1967 in Israel, and 2000 in Romania for a wide variety of products and services. 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.).
Complainant avers that the <hp.ro> domain name registered by Respondent is identical to Complainant’s HP mark because the domain name incorporates Complainant’s mark in its entirety, deviating only with the addition of the country code top-level domain “.ro.” The Panel finds that the addition of a country code top-level domain is irrelevant, because top-level domains are required and do not negate the identical nature of the domain name. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Rights or Legitimate Interests Policy ¶ 4(a)(ii).
Complainant argues that Respondent is wholly appropriating Complainant’s mark and is not using the <hp.ro> domain name in connection with an active website. The Panel finds that the passive holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the <solgarvitamins.com> domain name where the respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
In addition, Complainant contends that Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by the <hp.ro> domain name. Furthermore, Complainant has not licensed Respondent to use the HP mark. Thus, Complainant states that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Finally, Complainant argues that Respondent has offered the domain name for sale to Complainant. The Panel concludes that since Respondent was willing to sell the domain name for an amount in excess of out-of-pocket expenses to Complainant, Respondent lacks rights or legitimate interests in the domain name. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).
The Panel finds that the time frame within which Complainant initiated the present proceedings is of no consequential value. See E.W. Scripps Co. v. Sinologic Ind., D2003-0447 (WIPO July 1, 2003) (“[T]he Policy does not provide any defense of laches. This long accords with the basic objective of the Policy of providing an expeditious and relatively inexpensive procedure for the determination of disputes relating to egregious misuse of domain names.); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“. . . laches by itself is not a defense to a Complaint brought under the Policy. . . .”)
Registration and Use in Bad Faith Policy ¶ 4(a)(iii).
Complainant alleges that Respondent registered and used the domain name in bad faith. The Panel determines that Respondent’s offer to sell the <hp.ro> domain name registration to Complainant, the owner of the HP mark, for an amount in excess of Respondent’s out-of-pocket expenses is evidence of Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain names except to offer them for sale to the complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
Although Respondent registered the <hp.ro> domain name, Complainant argues Respondent has not used the disputed domain name in connection with the offering of any services or in conjunction with an active website. The Panel concludes that Respondent has passively held the domain name, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hp.ro> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Richard B. Wickersham, Judge (Ret.), Panelist
Dated: April 20, 2005