Compaq Computer Corporation v. Boris Beric

[Indexed as: Compaq v. Beric]
[Indexed as: infopaq.com et al]

WIPO Arbitration and Mediation Center 
Administrative Panel Decision

Case No. WIPO D2000-0042
Commenced: 15 February, 2000
Judgment: 28 March, 2000

Presiding Panelist: David Perkins

Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use.

Complainant, one of  the largest producers of personal computers in the world, owns the trademark COMPAQ in association with computer-related products and services in over 100 countries.  Complainant owns a family of registered trademarks prefixed by “SMART” or suffixed by “PAQ” including INFOPAQ.  Respondent registered the domain names INFOPAQ.COM and SMARTPAQ.COM.  Respondent indicated that third parties were offering to buy the domain names with the clear implication that Respondent would sell for the best price.  Respondent has not made a response.

Held, Names Transferred to Complainant.

INFOPAQ.COM is identical to the trademark of Complainant.  Public association of the suffix PAQ with Compaq will give rise to a likelihood of confusion by members of the public as to the source, sponsorship, affiliation or endorsement of Respondent's web site SMARTPAQ.COM with Complainant's business.

Respondent has made no demonstrable preparation to use either name in issue and has no other legitimate interest in those names.

Use in bad faith can be established without use of the domain. Complainant’s strong international reputation, Respondent’s failure to provide evidence of any actual or contemplated good faith use of the domain name and Respondent’s failure to rebut Complainant’s allegations support bad faith registration.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

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Cases referred to

Panavision International, L.P. v. Dennis Toeppen et al., 141 F. 3d 1316 (9th Cir. 1998)
British Telecommunications & Others .v. One in a Million Ltd (1999) FSR 1

Panel Decision referred to
WIPO Decision D99-001
WIPO Decision D2000-003

Perkins, Panelist: -

1. The Parties
Complainant is Compaq Computer Corporation of 20555 State Highway 249, Houston, Texas 7707, United States of America.

Respondent is Mr. Boris Beric of Goriska Ulica 11, Ljubljana, SI 1000, Slovenia.

2. The Domain Name and Registrar
The domain names at issue are
infopaq.com
smartpaq.com
and the registrar is Network Solutions, Inc.

3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on February 4, 2000, [electronic version] and February 7, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is February 15, 2000.

On February 8, 2000, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On February 8, 2000, Network Solutions, Inc. transmitted via email to the Center, Network Solutions' Verification Response, confirming that registrant is Boris Beric and the contact for both administrative and billing purposes is Boris Beric.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 15, 2000, to Boris.beric@siol.net, Veriohostmaster@verio.net, Postmaster@infopaq.com and Postmaster@smartpaq.com the Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by March 5, 2000. On the same day, the Center transmitted by fax and by airmail copies of the foregoing documents to

Mr. Boris Beric
Goriska Ulica 11,
Ljubljana, SI 1000
Slovenia

No response was received from the Respondent by the due date of March 5, 2000. On March 8, 2000, Notice of Respondent Default was sent to the Complainant's representative and to Respondent to boris.beric@siol.net and veriohostmaster@verio.net. On the same day, the Center transmitted the Notice of Respondent Default by fax and by air mail to the Respondent at the above address. No reply by Respondent to the Notification of Respondent Default was received.

Having received on March 14, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was March 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center 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 Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent.

4. Factual Background
4.1 The Complainant
The Complainant, Compaq Computer Corporation ["Compaq"] describes itself as the largest manufacturer of personal computers in the world and claims to advertise its products and services extensively throughout the world.

4.2 The Complainant's Trade Marks

4.2.1 The COMPAQ Mark
Complainant trades under and by reference to its well known trademark COMPAQ. That mark is stated to be used in relation to computer hardware and peripherals: computer software; computer services; financing services; business consulting services; telecommunication services; computer networks; computerised research and reference materials; computer shopping; and on-line communication services.

Complainant states that the COMPAQ mark is registered in over 100 countries. Complainant asserts that the COMPAQ mark is famous. By way of evidence Complainant sets out its United States registrations for the COMPAQ mark [Appendix C to the Complaint]. These comprise:

US Registration  Mark  International Class  Filed  First use in Commerce 
1,264,107  COMPAQ + design  9  24 November 1984  4 October 1982 
1,467,066  COMPAQ  9  15 September 1986  4 October 1982 
1,993,755  COMPAQ  9  9 July 1993  31 December 1993 
1,993,756  COMPAQ  9  9 July 1993  31 December 1993 
2,127,189  COMPAQ  16  27 December 1996  1986 
2,183,367  COMPAQ  9  3 October 1996  12 September 1996 

The specifications of the above registrations cover goods and services relating to computer hardware and peripherals; computer software; and computer services.

4.2.2 The COMPAQ prefixed marks
In Appendix C to the Complaint, Complainant also lists its United States Registrations for marks where COMPAQ is the prefix. These comprise:

US Registration Mark  International Class  Filed  First use in Commerce 
2,200,597  COMPAQ CAPITAL  36  29 May 1997  1 July 1998 
2,127,695  COMPAQ PC CARD SOLUTION and device  9  22 February 1996  15 September 1997 
1,880,853  COMPAQ CARE and design  36 & 42  25 August 1993  15 July 1993 
1,776,889  COMPAQ AUTHORISED DEALER and design  42  5 October 1992  15 January 1991 
1,780,816  COMPAQ INSIGHT MANAGER  9  20 May 1992  15 February 1992 
App. 75-831,343  COMPAQ ID  9  25 October 1999 

4.2.3 The PAQ suffix marks
In Appendix C the Complaint, Complainant also lists its United States Registrations and Applications where PAQ is the suffix. These are:

US Registration/Application Mark  International Class  Filed  First use in Commerce 
App. 75-708,878  BACKPAQ  40  18 May 1999  31 August 1992 
App. 75-691,987  CAREPAQ  37 & 42  26 April 1999  29 March 1999 
2,150,126  TWIN PAQ  9  28 May 1996  22 March 1988 
2,065,474  INFOPAQ  42  10 November 1994  30 September 1996 
1,883,424  ROMPAQ  9  7 March 1994  3 March 1992 
1,943,343  SOLUTION PAQ  9  21 January 1994  23 October 1992 
1,788,481  REMOTEPAG  37  29 December 1992  15 December 1992 
1,883,213  SPEEDPAQ  9  21 September 1992  11 August 1992 
1,767,684  BACK PAQ  40  15 September 1992  31 August 1992 
1,769,774  TECHPAQ  9  21 June 1991  15 May 1991 
1,775,553  TECHPAQ  42  21 June 1991  15 May 1991 
1,765,044  LICENSEPAQ  42  5 April 1991  14 January 1991 
1,552,377  TWIN PAQ  9  9 September 1988  22 March 1988 
App. 75-884,834  IPAQ  9  9 November 1999 

4.2.4 The SMART prefixed marks
In Appendix D to the Complaint, Complainant lists its United States Registrations and Applications where SMART is the prefix. They are:

US Registration/Application Mark  Class  Filed  First use in Commerce 
2,169,479  SMARTSTART  9  22 May 1997  30 September 1993 
2,173,568  SMARTQ  9  18 June 1998  2 March 1998 
App. 75-412,497  SMARTSOURCE  9 & 42  31 December 1997 
1,912,840  SMARTSTATION  9  16 December 1993  7 March 1994 

4.3 Use of Complainant's Marks
Apart from the uses of the COMPAQ mark set out in paragraph 4.2.1 (supra), Complainant also points to its PAQ suffixed marks and claims that 
"its pattern of usage of the suffix PAQ is so substantial that the public associates not only Complainant's individual marks but also the common characteristic, i.e. the PAQ suffix, with Complainant."

Complainant also points to its SMART suffixed marks and identifies the goods in relation to which the marks in Appendix D are registered, pointing to use of SMARTSTART since September 1993, SMARTSTATION since March 1994 and SMARTQ since March 1998.
4.4 In the absence of a Response, there is no challenge by Respondent to Complainant's assertions as to both ownership and use of its COMPAQ marks, its PAQ suffixed marks, or its SMART prefixed marks.

5. Parties' Contentions
A. Complainant
Complainant contends that Respondent has registered as domain names two marks which are confusingly similar to Complainant's family of PAQ marks as well as Complainant's SMART marks, that Respondent has no rights or legitimate interests in respect of the two domain names in issue and that Respondent has registered and is using those domain names in bad faith.

B. Respondent
Although no Response has been filed, at Appendix G to the Complaint is Respondent's letter to Complainant's Authorised Representative of 14 July 1999 ["the Respondent's Letter"], to which reference will be made below.

6. Discussion and Findings
6.1 The Policy para. 4a provides that Complainant must prove  each of the following:

that Respondent's domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and 

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

that the domain names have been registered and are being used in bad faith. 

Identical or Confusingly Similar

6.2 Respondent states in Respondent's Letter that:
INFOPAQ is not a fanciful word with no ordinary meaning; and 

that in the Slovenian language the word INFOPAQ reflects Respondent's activity - Information Packaging Systems or Information Package. 

6.3 The Panel refers to Complainant's registration and use of the service mark INFOPAQ [see, para. 4.2.3. supra] in the United States for:

"Providing on-line information to re-sellers and end-users concerning personal computers and related goods."

That service mark was filed on 10 November 1994 and claims first use in US commerce on 30 September 1996. Respondent's infopaq.com domain name was registered 12 May 1998. That domain name is identical to Complainant's service mark INFOPAQ.

6.4 Respondent's smartpaq.com domain name was registered on 24 February 1999. Although Complainant has asserted no identical mark or service mark, the Panel accepts that Complainant's COMPAQ mark is a well-known mark internationally. Further, Complainant has identified a family of PAQ suffixed marks with use in the United States from as early as 1988. Many of those marks and other PAQ suffix marks are also clearly used internationally in relation to Complainant's business as appears from its website, www.compaq.com referred to in the Complaint. Complainant has also pointed to its SMART prefixed marks, the earliest of which has been used in the United States since September 1993: see again Complainant's web site.

No use [see, below] appears to have been made by Respondent of the smartpaq.com domain name. The question for the Panel is, therefore, whether by reason of the public association of the suffix PAQ with the marks and business of Compaq use of the domain name in issue will give rise to a likelihood of confusion by members of the public. Such confusion could, for example, be as to the source, sponsorship, affiliation or endorsement of Respondent's web site with Complainant's business.

In the Panel's view, Complainant has shown sufficient notoriety of its family of PAQ marks that the requirement of confusing similarity is met.

6.5 The Panel finds Complainant succeeds in establishing the requirement of para. 4a(i) 
of the Policy with regard to both the domain names in issue.

Rights or Legitimate Interests

6.6 Para. 4c of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's right of legitimate interest to the domain name for the purposes of para. 4a(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue.

6.7 As to (i), there is no evidence that Respondent has made any use nor that he has made demonstrable preparations to use the domain names in issue, or either of them. Nor is there any evidence that Respondent satisfies (ii) or (iii) above. Complainant has not licensed or otherwise permitted Respondent to use its service mark INFOPAQ or the PAQ suffix of its family of PAQ marks, nor to apply for or use any domain name incorporating those marks. Indeed, the Respondent's Letter [Appendix G] states:

"I wanted to register domain Infopak.com or Infopac.com however they have already been registered. The only available domain was INFOPAQ.com and I have registered it immediately and no one has mentioned that I should have the permission from Compaq Computer Corporation for that." [Emphasis added]

6.8 In the circumstances, the Panel can find no evidence that would tend to establish that Respondent has legitimate interests in respect of the domain names in issue. The Complainant succeeds in establishing the requirement of para. 4a(ii) of the Policy.

Bad Faith

6.9 Para. 4a(iii) of the Policy requires that Respondent's domain names must both have been registered and be being used in bad faith. Both requirements must be met [see, Decision in Case D2000-003 at paras. 7.4 to 7.6].

6.10 Para. 4b of the Policy sets out circumstances which, if found by the Panel to be present, "… shall be evidence of the registration and use of a domain name in bad faith". These circumstances are

(i) circumstances indicting that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location.

The Policy, however, states that the above circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

Registered in Bad Faith

6.11 Respondent's communications to Complainant and Complainant's Authorised Representative are at Appendices E and G to the Complaint. In the absence of a Response, the Panel considers it appropriate to quote in this respect from those communications.

13 May 1999: Respondent's email to Complainant [Appendix E]

"Hello!
My name is Boris Beric and I am the owner of the INFOPAQ.COM and SMARTPAQ.COM domain names. In the last few weeks I have got some interested offers for the domain names, so I am considering to sell one of them. When I've bought those domain names I didn't have any plans of selling them but now I would like to sell one. Is it COMPAQ interested of buying one of them? Looking forward to hear from you soon!
Best regards.
Boris Beric"

14 July 1999: the Respondent's Letter [Appendix G]

"Your allusion that I have registered the domain names with the intention of selling them is completely unfounded and insulting.
However you should know that I have received several different offers in the last few months, to sell INFOPAQ.COM domain or SMARTPAQ.COM domain. We have analysed the possible motives for such demand on those domain names. After the reconsideration we have decided to sell the domains to Compaq, because we believe this is the best possible solution for both parties
We are prepared to reach a compromise with Compaq."

6.12 Despite Respondent's protestations that the domains in issue were not registered with a view to selling them to Complainant for a consideration in excess of its costs in registering those domains, there is no evidence that Respondent has used the infopaq.com domain since registration on 12 May 1998. The Respondent's Letter states that:

"… in the Slovenian language word INFOPAQ reflects our activity - Information Packaging Systems or Information Package"

but there is no evidence of this or of any bona fide use. As to the smartpaq.com domain name, the Respondent's Letter states:

"The web page is not finished yet."

Indeed, Respondent offered to sell that domain in his email to Complainant dated 13 May 1999, the day following registration on 12 May 1999.

6.13 The Panel is not convinced by Respondent's protestations of good faith in relation to registration of either of the domain names in issue and Complainant, therefore, succeeds in establishing the first part of the requirements of para. 4a(iii) of the Policy.

Use in Bad Faith

6.14 Respondent refers to "Information Packaging Systems or Information Package" as "our activity" [the Respondent's Letter, see para. 6.11 supra] but there is no evidence offered by Complainant to show use in bad faith by Respondent. Indeed, it appears that neither domain name is used in relation to an active web site. How, therefore, can there be use?

6.15 Decision D99-001 equates use in bad faith with an offer to sell the domain name to Complainant and cites two US decisions in support: for example, Panavision International L.P. .v. Dennis Toeppen et al 141 F 3d 131b (9th Cir. 1998). The Panel also refers to a judgment of the English Court of Appeal in British Telecommunications & Others .v. One in a Million Ltd (1999) FSR 1 wherein a threat to infringe plaintiffs' well known trademarks by defendant registering them as domain names was sufficient use for the purposes of the UK Trade Marks Act, 1994.

6.16 Decision D2000-003 goes still further as to what constitutes use in bad faith. In that case, there was no positive action being undertaken by the Respondent in relation to the domain name. The Panel held that the relevant approach was to consider whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

6.17 In such circumstances, the Panel must consider whether on the particular facts of a Complaint, the passive holding of domain names by Respondent amounts to Respondent acting in bath faith. In Decision D2000-003, relevant circumstances were held to include

the strong reputation of Complainant's trademark and its use internationally; and 

the Respondent's failure to provide evidence of any actual or contemplated good faith use by it of the domain name. 

6.18 Both of those circumstances are of equal application here, together with Respondent's failure to submit any evidence to rebut Complaint's allegations. Indeed, from the outset in his correspondence with Complainant, the Respondent indicated that third parties were offering to buy the domain names with the clear implication that Respondent would sell for the best price, a price inevitably greater than Respondent's out-of-pocket costs related to acquiring the domain names. Nowhere did Respondent limit his claim for payment of out-of-pocket expenses. Finally, Respondent has been given the opportunity to respond to the Complaint but has chosen not to do so and this is a yet further circumstance the Panel is entitled to take into account when assessing the particular circumstances of this case [see, para. 14(b) of the Rules].

6.19 Taking into account all the circumstances of this case, the Panel finds that Complainant succeeds in establishing the second part of the requirement of para. 4a(iii) of the Policy.

7. Decision
For all the foregoing reasons, the Panel decides that Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that the registration of the domain names infopaq.com and smartpaq.com be transferred to Complainant.


Domain Names Transferred