Hewlett-Packard Company
v.
High Performance Networks, Inc.
[Indexed as: Hewlett-Packard v. High Performance Networks]
[INDEXED AS: SURESTORE.COM ET AL.]
National Arbitration Forum
Domain Name Dispute Administrative Decision
File No.: No.: FA0006000095083
Commenced: 5 July 2000
Judgement: 31 July 2000
Arbitrator: James A. Carmody
Domain name Domain name dispute resolution Registered trademark Trademark infringement Claims of damage to business, reputation, goodwill - No response to complaint Identical No rights or legitimate interests Not commonly known by mark No offering of bona fide goods or services No legitimate noncommercial or fair use No intentions of using domain name Bad faith registration Knew or should have known about mark and competing business of Complainant Purpose of disrupting Complainants business Passive holding of domains.
Complainant owned registered trademark for SURESTORE, which it used in conjunction with its electronic data storage and mass memory systems and mechanisms for computers. Respondent registered the domain names SURESTORE.COM and SURESTORE.NET. Complainant contacted Respondent informing them that registration of the domain names infringed upon Complainants registered trademark and asked for a transfer. Respondent indicated that the domain names were not registered with any intent to use them to offer goods and services and they had rights to the domains under a first come, first serve policy. Complainant asks for transfer of domain names. Respondent did not file a response, so all of Complainants allegations are being accepted as true.
Held, Names Transferred
The domain names in dispute were identical to Complainants registered trademark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the domain name, nor has Respondent indicated that it plans on using the domain names in connection with bona fide offering of goods and services, nor is it making a legitimate noncommercial or fair use. Furthermore, Respondent indicated that it had no intentions of using the domain names to offer goods or services and that its rights in the domain names came from a first-come, first-serve policy.
The domain names were registered and being used in bad faith. Respondent knew or should have known about Complainants registered trademark and competing business. The domain names were registered with the intent or disrupting Complainants business. Furthermore, passive holding of a domain name, without attempting to develop a website for it, infers bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000)
America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679
(Nat. Arb. Forum Mar. 15, 2000)
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000)
Panel Decision referred to
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Carmody, Panelist: -
PARTIES
The Complainant is Hewlett Packard Company, Palo Alto, CA, USA ("Complainant").
The Respondent is High Performance Networks, Inc., Long Island City, NY,
USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain names at issue are "SURESTORE.COM" and "SURESTORE.NET",
registered with Network Solutions Inc ("NSI").
PANELIST
Hon. James A. Carmody, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
("The Forum") electronically on June 29, 2000; The Forum received a hard
copy of the Complaint on June 29, 2000.
On July 5, 2000, NSI confirmed by e-mail to The Forum that the domain
names "SURESTORE.COM" and "SURESTORE.NET" are registered with NSI and that
the Respondent is the current registrant of the name. NSI has verified
that Respondent is bound by the Network Solutions Service Agreement Version
5.0 and has thereby agreed to resolve domain-name disputes brought by third
parties in accordance with ICANNs UDRP.
On July 5, 2000, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of July
25, 2000 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via email, post and fax, and to all entities
and persons listed on Respondents registration as technical, administrative
and billing contacts by email.
On July 25, 2000, having received no Response from Respondent, using
the same contact details and methods as were used for the Commencement
Notification, The Forum transmitted to the parties a Notification of Respondent
Default.
On July 28, 2000, pursuant to Complainants request to have the dispute
decided by a Single Member panel, The Forum appointed the Hon. James A.
Carmody as Panelist.
Having reviewed the communications records in the case file, the Administrative
Panel (the "Panel") finds that The Forum has discharged its responsibility
under Paragraph 2(a) of the Uniform Rules "to employ reasonably available
means calculated to achieve actual notice to Respondent." Therefore, the
Panel may issue its Decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, The Forums Supplemental Rules and
any rules and principles of law that the panel deems applicable, without
the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from
the Respondent to the Complainant.
PARTIES CONTENTIONS
A. Complainant
The Complainant contends that the Respondent has registered a domain
name that is identical to its trademark registered for and in use by the
Complainant. Further, the Complainant contends that the Respondent has
no rights or legitimate interests to the domain name, and that the respondent
has registered and is using the domain name in bad faith.
The Complainant contends that the unauthorized and continued use by
Respondent of the domain names incorporating the Complainants mark constitutes
use of a false description or representation that is likely to cause confusion,
mistake, or deception as to the affiliation, connection or association
between the Complainant and the Respondent.
The Complainant asserts that the Respondents activities impermissibly
interfere with the Complainants rights to hold and control the domain
names in question and that the Respondents actions have caused substantial
and irreparable harm to the Complainants business, reputation, and good-will.
A. Respondent
The Respondent submitted no response in this matter. As a result, all
reasonable inferences of fact in the allegations of the Complainant will
be deemed true.
FINDINGS
The Complainant owns the U.S. trademark registration for the mark,
SURESTORE (registered: November 7, 1995; No. 1,934,114) for use in connection
with electronic data storage and mass memory systems and mechanisms for
computers.
The Respondent registered the domain names in question on April 24,
1998.
The Complainant contacted the Respondent on June 24, 1998 informing
the Respondent of its registered mark, SURESTORE. The Complainant explained
that the use of the domain names constituted trademark infringement and
requested that the domain names be transferred to the Complainant.
The Respondent responded both in writing and in telephone conversations
that it had "no intentions in using the domain names
for purposes of trading
goods or services" and that it was its right under the "first come first
serve" policy to purchase these names and hold, sell or renew them as it
wishes.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy")
directs that the complainant must prove each of the following three elements
to support a claim 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 Complainant has rights in the registered mark, SURESTORE. The domain
names in question are identical to the Complainants mark. See Microsoft
Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the
domain name <microsoft.org> is identical to the Complainants mark).
Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate
interests in the domain names in question. The Respondent has not denied
that assertion.
The domain name in question is not a mark by which the Respondent is
commonly known. Policy 4(c)(ii). Rather, the Respondent is known
by the name, High Performance Networks.
The Respondent has made no claim that it is using the domain name in
connection with a bona fide offering of goods and services or is making
a legitimate noncommercial or fair use of the site. Policy 4(c)(i),
(iii). Instead, the Respondent acknowledged to the Complainant that the
Respondent had "no intentions in using the domain names
for purposes of
trading goods or services" and that it was its right under the "first come
first serve" policy to purchase these names and hold, sell or renew them
as its wishes.
For these reasons, the panel concludes that the Respondent has no rights
or legitimate interest in the domain name in question.
Registration and Use in Bad Faith
The Complainant asserts that the Respondent acted and is acting in
bad faith. The Respondent has not denied that assertion.
The Respondent knew or should have known of the Complainants competing
business and corresponding marks. See America Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 15, 2000) (finding that
Respondent "clearly had knowledge or reasonably should have had knowledge"
of Complainants well-known mark).
The Respondent registered the domain names primarily for the purpose
of disrupting the business of the Complainant, the Respondents competitor.
Policy 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors,
Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree
of variation from the Complainant's marks suggests that the Respondent,
the Complainants competitor, registered the names primarily for the purpose
of disrupting the Complainant's business).
The Respondent admits having no intent to use the domain names for
the purpose of trading goods or services. Passive holding of a domain name,
without any attempts to develop the website raises the inference of use
in bad faith. See Mondich & Amer. Vintage Wine Biscuits, Inc. v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondents failure
to develop its website in a two year period raises the inference of registration
in bad faith).
The panel concludes that the Respondent registered and used the domain
names in bad faith.
DECISION
Having established all three elements required by the ICANN Policy
Rule 4(a), it is the decision of the panel that the requested relief be
granted.
Accordingly, for all of the foregoing reasons, it is ordered that the
domain names, "SURESTORE.COM" and "SURESTORE.NET", be transferred from
the Respondent to the Complainant.
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