1738
Nominet UK Dispute Resolution Service
DRS 01738
HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P
-v-
INTER-MEDIATES LIMITED
Decision of Independent Expert
1 Parties:
Complainant: Hewlett-Packard Development Company, L.P
Country: USA
Respondent: Inter-Mediates Ltd
Country: United Kingdom
2 Domain Name:
The domain names are ukhewlettpackardink.co.uk; ukhpink.co.uk; ukhp.co.uk.
3 Procedural Background:
The Complaint was lodged with Nominet on 5 May 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 11 May 2004. The Respondent was informed that it had until 3 June 2004 in which to file a response. On 17 May 2004 a hard copy Response was received by Nominet which was forwarded to the Complainant. On 24 May 2004, a Reply was received by Nominet from the Complainant. Mediation documents were generated on 25 May 2004. It appears that a mediation was unsuccessful. On 16 June 2004 fees were received from the Complainant for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 23 June 2004, Mr Clive Duncan Thorne, the undersigned, ("Expert") was selected. On 23 June 2004, he confirmed to Nominet that he knew of no reason why he couldn't properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4 Outstanding Formal/Procedural Issues (if any):
On 2 June 2004 a "non-standard submission" was received from the Respondent and which has been put before the Expert. The Expert has considered the "non-standard submission" but is not prepared to entertain it in preparing its decision. It was open to the Respondent to raise the points set out in the "non-standard submission" in its Response. It failed to do so.
5 The Facts:
The Complainant, according to the pleading set out in the Complaint, is part of Hewlett-Packard's global corporate group. Hewlett-Packard is one of the world's leading providers of information technology products, solutions and services for businesses and consumers, serving millions of customers with over 160 countries. It was established in 1939 and has expanded significantly since then. There is a UK subsidiary in Berkshire called Hewlett-Packard Ltd incorporated since 24 April 1961. Hewlett-Packard uses its HP and HEWLETT-PACKARD trademarks extensively around the world including on its mainly hardware and software products and throughout its website at www.hp.com selected printouts of which are at annex 4 to the Complaint. The Complainant first registered the domain name www.hp.com on 3 March 1986. Its activities conducted by reference to its trademarks resulted in net revenues of $73.06 billion for the fiscal year 2003. The Complainant submits that Hewlett-Packard has acquired a very substantial global reputation in its well known HP Hewlett-Packard marks including the UK.
Evidence of the Complainant's trademark rights are set out at annexes 1 and 2 to the Complaint. At annex 1 are set out 41 European Community and United Kingdom trade mark registrations incorporating the trade mark "HP" and at annex 2; 15 Community and UK trade mark registrations for the mark "HEWLETT-PACKARD". The registrations cover a wide variety of goods and services including computer printers and related supplies such as inkjet container print cartridges as represented in annex 3.
The Expert has considered the trade mark registrations for the letters "HP" annexed at annex 1 to the Complaint. These consist of registrations for the well known "Hp" logo and registrations for the mark "HP" (i.e. in capitals). There is also a European Community trade mark registration for the mark "hp" (i.e. in small letters). This, mark number 1232487, is registered in classes 2, 9, 16, 17, 25, 28, 35, 36, 37, 38 and 39 was registered on 7 July 1999.
The Respondent in its Response makes the following main points:-
(i) In October 1999, Mr Rainbird of the Respondent apparently devised a family domain designed for use in the future business of the Respondent. Those that began with "ukh" were "ukharddrives.co.uk", "ukhealthshop.co.uk", "ukheating.co.uk", "ukhelmets.co.uk", "ukhealth.co.uk", "ukherbal.co.uk", "ukhifi.co.uk", "ukhobbies.co.uk", "ukhomesecurity.co.uk", "ukhousehold.co.uk" and "ukhp.co.uk". These were all registered on the same day. The Expert has looked at the "WHOIS" search result in relation to "ukhp" which shows that it was originally registered on 11 October 1999.
(ii) The domain name "ukhp.co.uk" was chosen because the initials "hp" stand for hire purchase.
(iii) The domain name "ukhp.co.uk" has never been used by the Respondent in connection with Hewlett Packard products although a sister site called "ukprinters.co.uk" does offer Hewlett Packard products for sale.
(iv) The domain names "ukhpink.co.uk" and "ukhewlettpackardink.co.uk" were registered in May 2003 for use as section edits for the sale of Hewlett Packard printers.
A series of correspondence took place between the representatives of the Complainant, Messrs Baker & McKenzie and the Respondent commencing with a demand letter dated 2 January 2004. That correspondence appears to have concluded in an email sent by Mr Rainbird of the Respondent to Baker & McKenzie on 19 March 2004. In that email Mr Rainbird indicated that the Respondent had agreed to take down the domain names "ukhpink.co.uk" and "ukhewlettpackardink.co.uk" in the coming three months. He suggested that "Hewlett Packard may wish to acquire the domain names "UKhp.com" and "UKhp.co.uk" purely to avoid them being used to sell hire purchase or other unconnected purposes in which case, the price is shown and has been shown since well before your first approach, at £3,000 and £1,000 respectively."
6 The Parties' Contentions:
Complainant:
The substance of the Complaint is as follows:-
(i) the Complainant has registered marks worldwide in respect of the trade marks "HP", "hp" and "Hewlett Packard";
(ii) the Respondent has never been authorised to use the Complainant's marks or variations of the marks in a domain name or otherwise;
(iii) the Respondent's registrations are identical or similar to "ukhpink", "ukhewlettpackardink" and "ukhp";
(iv) the Respondent is not in any way authorised to use the Respondent's trade marks and domain names or otherwise;
(v) the domain name "ukhp.co.uk" was registered primarily for the purpose of subsequent transfer to the Complainant or one of its competitors at a profit;
(vi) the Respondent registered the domain name "ukhp.co.uk" as a blocking registration and to unfairly disrupt the Complainant's business;
(vii) the Respondent is engaged a pattern of making abusive registrations;
(viii) the Complainant has not authorised the Respondent to use any of its trademarks and the domain names have been registered without the Complainant's authority;
(xi) the domain names incorporate the Complainant's famous brands and the related sites offered for sale HP goods. This may, contrary to the fact, mislead or confuse members of the public into believing the Respondent is affiliated or endorsed or sponsored by Complainant. The potential for disruption or detriment to the Complainant's business is real.
Respondent
The Respondents contentions are set out in the Response:
(i) the domain name "ukhp.co.uk" was registered because the initials "hp" stand for "Hire Purchase";
(ii) the domain name "ukhp.co.uk" was offered for sale at a premium of £1,000 which is not expensive;
(iii) the domain "ukhp.co.uk" has never been used in connection with any Hewlett Packard products;
(iv) the domain names "ukhpink.co.uk" and "ukhewlettpackardink.co.uk" were registered in May 2003 for use as section headings for the sale of ink for Hewlett Packard printers;
(v) the Respondent does not agree that the Respondent's use of the domain name would infer that it was part of Hewlett Packard. Rather it submits the primary use of the domain name was to steer the Respondent's customers to the right place to choose Hewlett Packard or compatible products and to promote Hewlett Packard or compatible products to their customers; and
(vi) in summary the domain names were registered in good faith.
7 Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy, on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark, identical or similar to the Domain Name in dispute and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
A. Complainant's Rights
(i) ukhewlettpackardink.co.uk
The Expert finds that the Complainant has registered trade marks for the mark "HEWLETT PACKARD". The Expert accepts the evidence of the registrations for the mark "HEWLETT PACKARD" set out at annex 2 to the Complaint. This evidence is not challenged by the Respondent. The Expert considers that the prefix "uk" is a geographical descriptive and that the suffix "ink" is descriptive of a product and which moreover is a product dealt in by the Complainant. The Expert accepts the Complainant's argument that the mark "HEWLETT PACKARD" as used in the domain name will be recognised by third parties as the Complainants well known brand.
(ii) ukhpink.co.uk
The Expert accepts the Complainant's evidence of the existence of trade mark registrations for the marks "HP" and "hp". The existence of these trade mark rights is not disputed by the Respondent. The Complainant argues that the prefix "uk" is simply descriptive of a geographical area whilst the suffix "ink" is descriptive of types of product i.e. ink or inkjets supplied by the Complainant.
(iii) ukhp.co.uk
The Expert finds that the Complainant has trade mark rights for the mark "hp" and in particular, Community Trade Mark registration number 1232487 registered on 7 July 1999 (i.e. before the date of registration of the domain name). The prefix "uk" is purely descriptive and as is contended by the Complainant associates the Complainant with the United Kingdom.
The Expert finds that the Complainant has rights in respect of marks which are similar to the above three domain names in dispute.
B. Abusive Registration
The Expert is required to consider the second limb of the Policy. Is the Domain Name in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:
"a Domain Name which either:-
(i) was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
(ii) has been used in a manner, which took unfair advantage of or was unfairly
detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in paragraph 3(a) of the Policy.
(i) ukhewlettpackardink.co.uk
The Complainant submits:-
(a) that the registration of the domain name is part of a pattern of making abusive registrations within paragraph 3(a)(iii) of the Policy;
(b) that the Complainant has not authorised the Respondent to use any of its trademarks in domain names;
(c) the registration and use of the domain name amount to an unjustified commercial advantage;
(d) the registration and use of the domain name misleads and confuses members of the public into believing the Respondent is affiliated with or endorsed or sponsored by the Complainant.
The Expert finds from the correspondence exhibited at annex 12 to the Complaint that four domain names which are similar to the Complainant's trade mark rights were registered and offered for sale for profit. The domain names are the three domain names in dispute in this Complaint as well as the domain name "ukhp.com" which falls outside the Nominet jurisdiction. The Respondent submits that the domain names were registered but that they were worthless and that they only derive their value from "their most logical connection" which the Respondent submits is hire purchase (see, for example, Mr Rainbird's email of 19 March 2004). In the Expert's view, there is no doubt that the four domain names were registered as part of a pattern of making "Abusive Registrations". In the case of "ukhewlettpackardink.co.uk", the Respondent gives no real reason in its Response justifying registration of a domain name incorporating the mark "HEWLETT PACKARD". In the Expert's view it follows that the Complainant has shown in accordance with paragraph 3(a)(iii) of the Policy that the Complainant has successfully demonstrated that the Respondent is engaged in a pattern of making abusive Registrations.
In the event that the Expert is wrong in this finding, the Expert proceeds to consider that the domain name was registered primarily for the purpose of unfairly disrupting the Complainant's business within paragraph 3(a)(i)(C) of the Policy. In summary, the Complainant submits that consumers may be confused into believing that the wide range of products on the "ukhewlettpackardink.co.uk" websites are manufactured or in someway endorsed by the Complainant when this is not the case. The Respondent admits that the domain name was registered and made in 2003 for use as section headings for the sale of ink for Hewlett Packard printers but disagrees that use of the domain name would infer that the Respondent is part of Hewlett Packard. Having considered the submissions and also having looked at the printouts of the Respondent's website and offer of products set out at Annex 14, the Expert is satisfied that there is a strong likelihood of confusion by the public into believing that the products on the website are manufactured or in someway endorsed by the Complainant when this is not the case.
The Expert therefore finds that the Respondent has registered or otherwise acquired the domain name "ukhewlettpackardink.co.uk" primarily for the purpose of unfairly disrupting the business of the Complainant within paragraph 3(a)(C) of the Policy.
(ii) ukhpink.co.uk
The Complainant submits:-
(a) that the registration of the domain name is part of a pattern of making abusive registrations within paragraph 3(a)(iii) of the Policy;
(b) that the Complainant has not authorised the Respondent to use any of its trademarks in domain names;
(c) the registration and use of the domain name amount to an unjustified commercial advantage;
(d) the registration and use of the domain name misleads and confuses members of the public into believing the Respondent is affiliated with or endorsed or sponsored by the Complainant.
The Expert finds from the correspondence exhibited at annex 12 to the Complaint that four domain names which are similar to the Complainant's trade mark rights were registered and offered for sale for profit. The domain names are the three domain names in dispute in this Complaint as well as the domain name "ukhp.com" which falls outside the Nominet jurisdiction. The Respondent submits that the domain names were registered but that they were worthless and that they only derive their value from "their most logical connection" which the Respondent submits is hire purchase (see, for example, Mr Rainbird's email of 19 March 2004). In the Expert's view, there is no doubt that the four domain names were registered as part of a pattern of making "Abusive Registrations". In the case of "ukhpink.co.uk", the Respondent gives no real reason in its Response justifying registration of domain name incorporating the mark "HEWLETT PACKARD". In the Expert's view it follows that the Complainant has shown in accordance with paragraph 3(a)(iii) of the Policy that the Complainant has successfully demonstrated that the Respondent is engaged in a pattern of making abusive Registrations.
In the event that the Expert is wrong in this finding, the Expert proceeds to consider the domain name was registered primarily for the purpose of unfairly disrupting the Complainant's business. In summary, the Complainant submits that consumers may be confused into believing that the wide range of products on the "ukhpink.co.uk" websites are manufactured or in someway endorsed by the Complainant when this is not the case. The Respondent admits that the domain name was registered and made in 2003 for use as section headings for the sale online of ink for Hewlett Packard printers and disagrees that use of the domain name would infer that the Respondent is part of Hewlett Packard. Having considered the submissions and also having looked at the printouts of the Respondent's website and offer of products set out at Annex 14, the Expert is satisfied that there is a strong likelihood of confusion by the public into believing that the products on the website are manufactured or in someway endorsed by the Complainant when this is not the case.
The Expert therefore finds that the Respondent has registered or otherwise acquired the domain name "ukhpink.co.uk" primarily for the purpose of unfairly disrupting the business of the Complainant within paragraph 3(a)(C) of the Policy.
(iii) ukhp.co.uk
The Complainant submits that this domain name was registered primarily for the purpose of subsequent transfer to the Complainant at a profit within paragraph 3(a)(i)A of the Policy. In order to succeed in its submission the Complainant has to show that the Respondent's claim that the domain name was registered for hire purchase services is without basis and that there was as is submitted by the Complainant no good faith use since its registration on 11 October 1999. The Complainant points out that the domain name has been offered for sale for £1,000 which it submits is in excess of the Respondent's out of pocket registration costs which it puts at a maximum £80.00.
The Expert having considered the Respondent's submissions takes into account particularly the submission that the 11 domain names which were registered on 11 October 1999 were part of establishing a family of domain names. However, it is unconvinced by the assertion that the domain name was registered for a hire purchase site. In particular, the Expert considers as is submitted by the Complainant in its Reply that it was "more likely" that had the Respondent's intention truly been to obtain a domain name relating to hire purchase services it would have registered "ukhirepurchase.co.uk" rather than rely upon the letters "hp".
The Expert also takes into account that the Respondent's core business as can be seen from annex 2 to the Reply is computer and video games and related peripherals including printers and print cartridges i.e. the types of product dealt in by the Complainant. Moreover, the fact that the Respondent was aware of Hewlett Packard and its products is clearly shown by the registration of the other two domain names and its offer for sale of Hewlett Packard products on-line.
Taking these factors into account the Expert finds that there is no real basis for the Respondent's claim that the domain name "ukhp.co.uk" was registered for hire purchase services.
The evidence adduced by the Complainant is clear that the domain name has been offered for sale for £1,000 which is in excess of out of pocket costs directly associated with acquiring or using the Domain Name. It follows that the Domain Name was registered in circumstances set out within paragraph 3(a)(i)(A) of the Policy.
In summary, the Expert finds that the three domain names referred to above constitute Abusive Registrations.
8 Decision
In the light of the foregoing findings, namely the Complainant has rights in respect of a name or mark which is similar to the domain names in dispute and that the domain names in the hands of the Respondent are Abusive Registrations, the Expert directs that the domain names in dispute; "ukhewlettpackardink.co.uk", "ukhpink.co.uk", and "ukhp.co.uk" be transferred to the Complainant.
CLIVE D THORNE
Date: 7 July 2004