Compaq Trademark BV v Balata.com LLc [2005] DRS 02455 (9 May 2005)

Nominet UK Dispute Resolution Service

DRS 02455

Compaq Trademark BV -v- Balata.com LLc

Decision of Independent Expert

a.	Parties

Complainant:		Compaq Trademark B.V.
Country:		NL

Respondent:		Balata.com LLC
Country:		IL

b.	Domain Name

ipaqchoice.co.uk (“the Domain Name”)

c.	Procedural Background

The Complaint was lodged with Nominet on 11 March 2005.  Nominet notified the Respondent of the validated Complaint on 16 March 2005.  The Respondent failed to respond to the Complaint within the required time period of 15 days and Nominet so informed the Complainant on 13 April 2005.  Mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 27 April 2005.

Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 20 April 2005, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and 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.

d.	Procedural Issues

There are two procedural issues to deal with.

First, there is no evidence before the Expert to indicate the presence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period.  Thus, the Expert will proceed to a decision on the Complaint in accordance with §15b of the Procedure.

Second, who is the Complainant?  The Complainant asserts in its Complaint that the term “Complainant” includes Compaq Trademark BV, its licensees (including the Hewlett-Packard Company), its subsidiaries and affiliated companies, and their predecessors in interest.  Under §3b of the Procedure it is possible for more than one person or entity to jointly make a complaint but in so doing they must:

1.	all sign a hard copy of the complaint, or have it signed on their behalf;
2.	specify one of the complainants, or a single representative, as the lead complainant; and
3.	specify which of the complainants wish to become the sole registrant of each domain name if the complaint is successful.

It is not apparent from the Complaint that the representative who has signed on behalf of the Complainant, Compaq Trademark BV, has also signed on behalf of the Complainant's licensees etc and that they in turn have nominated the Complainant as the lead complainant.  This places the Expert in a difficult position.  A bald acceptance that the term Complainant includes more than one entity, some of which are not defined, could result in an inequitable transfer of the Domain Name.  The alternative is to accept the Complaint as it is presented in which case the Complainant can only mean Compaq Trademark BV, but this is equally problematic since the evidence that the Complainant presents in support of its assertion of Abusive Registration relates to Hewlett Packard's (HP) use of the Complainant's mark, and no evidence is presented to show that the mark is licensed to HP and the terms of that licence insofar as they have a bearing on this Complaint.

However, the Expert is prepared to infer that an agreement exists between the Complainant and HP under which HP has developed products that are branded with the Complainant's trademark.  It is difficult to envisage a situation where the Complainant would have allowed HP to market such products if HP were not a legitimate licensee of the Complainant's mark.

The Expert is not prepared to accept that the Complaint is a joint complaint on behalf of Compaq Trademark BV, its licensees and affiliated companies but is prepared to accept that the Complainant, in acting to protect its trademark, is entitled to assert an Abusive Registration based on evidence of HP's legitimate use of the mark, and if a transfer of the Domain Name is ordered to the Complainant that this would be to the benefit of the agreement between the Complainant and HP and, therefore, in the interests of HP.

Therefore, the term Complainant as used herein means only Compaq Trademark BV.  

e.	The Facts

Complainant

The Complainant owns 110 trade mark registrations world-wide of the mark “iPAQ” which cover a wide variety of goods and services, including computers and personal digital assistants ("PDAs").  Two such registrations are in the UK (registered 8 March 2000) and Israel (registered 3 April 2001). 

The Complainant has licensed HP, one of the world’s leading providers of information technology products, to use its iPAQ trademarks.  HP has been using the iPAQ mark for almost five years.  HP promotes its iPAQ PDA products worldwide including sales by its dedicated iPAQ website at www.ipaqchoice.com through which it provides customer support and sells accessories for the iPAQ.  The ipaqchoice.com domain was registered on 8 February 2002.

Respondent

The Respondent registered the Domain Name on 30 August 2004.

f.	The Parties’ Contentions

Complainant

The Complainant’s assertions in its submissions are:

1.	That the Domain Name is identical or similar to a name or mark in which the Complainant has rights because:

a.	It owns 110 trademark registrations worldwide in the name iPAQ including the UK and the Respondent’s country.
b.	iPAQ is a "made-up" word created by the Complainant and is distinctive of the line of products it is used with and is not in any way descriptive.
c.	HP has used the iPAQ trademark in association with a product line of PDAs and has acquired a very substantial global reputation with this well-known mark.
d.	HP has established unregistered common law rights in the name "ipaqchoice" which is identical to the Domain Name.  The .co.uk suffix merely suggests to internet users that the Domain Name leads to the UK equivalent of HP's well-known ipaqchoice.com site, or is otherwise associated with it.  HP uses the iPAQ mark and "ipaqchoice" name throughout its website which is advertised extensively.  The possession of unregistered rights in a name is sufficient to establish Rights for the purposes of a complaint: Dell v Lamont, DRS1805 p12.
e.	The Domain Name incorporates the iPAQ mark which is the distinctive element of the Domain Name.  The generic suffix "choice" does not detract from the emphasis on the mark.  "iPAQ” will be recognised by internet users as a well-known brand distinctive of the iPAQ products: Nokia v LiquidSMS DRS00328 p5.

2.	That the Respondent’s registration and use of the Domain Name constitute an Abusive Registration because:

a.	The Respondent uses the Domain Name to link to sites relating to the sale of a variety of non-iPAQ products from a variety of manufacturers which are available for sale from various sources none of whom have any apparent connection with Complainant or HP’s iPAQ products.  The homepage lists generic computer-related product headings, there are no references to any of HP’s iPAQ products.  Using the "Back" button to return to the Respondent's homepage takes users to the Respondent's default page.  This is a portal, also using the Domain Name, to a variety of further non-iPAQ related products such as insurance, finance and health and beauty products.  The Respondent's site is no more than a portal to sites relating to computer and non-computer related products: ICI v Dunn DRS01975 p.4.  This may mislead or confuse members of the public into believing the Respondent and/or the third party websites are affiliated with or endorsed or sponsored by the Complainant, when this is not necessarily the case.  Consumers may be confused into believing the wide range of product links on the Respondent's site are in some way endorsed by Complainant when this is not the case.  This will likely tarnish Complainant’s reputation to its detriment.  Such conduct, even if anticipated, amounts to passing off: Nokia v Just Phones DRS0058 p9 and is capable of amounting to an Abusive Registration even in the absence of evidence of actual confusion: PDG case DRS00526 p9.
b.	The Respondent is not authorised by the Complainant to use its iPAQ mark or the "ipaqchoice" name in domain names or otherwise.
c.	The Respondent is based in Israel, does not have a UK presence and does not itself offer for sale or otherwise deal in iPAQ-related products.  Thus, its primary intention for registering the Domain Name was as a blocking registration against the Complainant's iPAQ mark and to prevent HP from making a .co.uk registration incorporating its well-known "ipaqchoice" name in a region in which HP enjoys a significant commercial presence (§3(a)(i)(B) of the Policy).  .co.uk domains are the commercial names of choice in the UK: Google v LWD DRS01443 p17.  
d.	The Respondent registered the Domain Name almost 2½ years after HP launched www.ipaqchoice.com and some years after the iPAQ products themselves were launched in Israel.  In light of the Complainant’s substantial global reputation in the iPAQ products and "ipaqchoice.com" name, including in Israel and the UK, the Respondent cannot maintain that it was unaware of the Complainant’s existence and rights at the time of registration: compare Parma Ham appeal DRS00359 p9.
e.	The Respondent registered the Domain Name at a time when the Complainant had already built up a substantial reputation in its iPAQ mark and HP in its "ipaqchoice" name.  The Respondent had no legitimate reason for doing so and made the registration in a manner which took unfair advantage of and was unfairly detrimental to the Complainant’s Rights: Nokia v Just PhonesDRS0058 p9.
f.	Neither the Complainant's iPAQ mark nor its "ipaqchoice" name are in any way descriptive of the products with which they are associated.  The Respondent therefore has no cause whatsoever to use the iPAQ mark or the "ipaqchoice" name.
g.	The Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business: ICI v Dunn DRS01975 p4 (§3(a)(i)(C) of the Policy).
h.	Users (including potential and actual iPAQ customers) employing a search engine to look for HP's "ipaqchoice" site will find the Respondent's site prominently listed as one of the first few search results.  It is not uncommon for global organisations operating in the UK to have a .co.uk site in addition to their .com site, UK.  Thus, users will think they have found the UK equivalent of HP’s www.ipaqchoice.com site.  Clicking on the search result link diverts Users to the Respondent's site which on further searching under the word "ipaq", displays links to various sites not connected with the Complainant selling purported iPAQ products or sites which themselves incorporate links selling competitors' PDAs.
i.	It can be seen from the Google search that there is evidence of actual confusion as to a connection between the Respondent's site and Complainant's www.ipaqchoice.com site.  On the balance of probabilities, confusion has occurred: Carphone Warehouse v Wilkes DRS02086 p5.  In addition, the likelihood of confusion combined with the potential for disruption or detriment is capable of amounting to an abusive registration: PDG case DRS00526 p9.
j.	The Respondent's use of the Domain Name confuses people or businesses into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant: Hitachi v Logic Europe DRS01771 p4 (§3(a)(ii) Policy).
k.	The Domain Name has been carefully chosen to take the most effective advantage of the famous iPAQ brand: Nokia v Just PhonesDRS0058 p10; Carphone Warehouse DRS02086 p5.  The Respondent's primary purpose in registering the Domain Name was to target actual and potential iPAQ customers in an effort to unfairly draw them away from HP’s www.ipaqchoice.com site to its benefit and Complainant’s commercial detriment: Nokia v LiquidSMS DRS00328 p8.  This conduct was calculated to promote the Respondent's business by increasing the traffic to its site by unfairly exploiting the Complainant's Rights in the iPAQ mark and the "ipaqchoice" name (Hitachi v Logic Europe DRS01771 p4). 
l.	Permitting the Domain Name to remain in the hands of the Respondent will encourage other traders to engage in similarly unfair behaviour.  To that end, the Respondent has a link on its homepage offering Users the opportunity to advertise on the site to further unfairly exploit Complainant's Rights.  This will erode the distinctiveness of the IPAQ brand and the "ipaqchoice" name to Complainant's further detriment.
m.	The Respondent offers the Domain Name for sale on its homepage, seeking to profit from the iPAQ mark and "ipaqchoice" name.

Respondent

The Respondent has not responded.

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights (as defined in §1 of the Policy) in respect of a name or mark identical or similar to the Domain Name; and
2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in §1 of the Policy).

Complainant’s Rights

The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has rights in a name or mark which is identical or similar the Domain Name.

HP has established a website at ipaqchoice.com which is identical to the Domain Name, discounting the suffix “.com”.  HP has established goodwill in the name ipaqchoice to the benefit of the Complainant and HP.  However, this does not establish that the Complainant has rights in the name "ipaqchoice".

The Complainant has rights in the name “iPAQ” as evidenced by registered trademarks and global branding of a range of PDA products marketed by its licensee HP.  It is a distinctive and unique name created by the Complainant.  

The Domain Name includes the word “ipaq” together with a generic term that is descriptive of the service provided by HP through its ipaqchoice.com website.  The distinctive component of the Domain Name is the word “ipaq” and the unique nature of this word together with the generic term “choice” does not detract nor sufficiently distinguish the Domain Name from the Complainant’s mark.

The Expert finds therefore that the Complainant has rights in respect of a name or mark that is identical or similar to the Domain Name.

Abusive Registration

The Complainant has set out in its Complaint an extensive argument, as summarised in section f above, and provides evidence with its submission that clearly shows that the Respondent's registration and use of the Domain Name is an Abusive Registration as follows:

1.	The Respondent's website may mislead or confuse members of the public or businesses that it is operated or authorised by or otherwise connected with the Complainant, or alternatively that it links to websites that are so authorised or connected with the Complainant and/or HP contrary to §3a ii of the Policy.
2.	On the balance of probabilities it is likely that actual confusion has occurred and that it has therefore unfairly disrupted the Complainant’s business, and that of its licensee HP, contrary to §3a i C of the Policy.  Even if actual confusion had not been shown, the likelihood of confusion and the potential for disrupting the Complainant's business is capable of amounting to an Abusive registration.
3.	It is likely, on the balance of probabilities, that the Respondent was aware of the existence of the mark iPAQ, and therefore the Complainant's rights, at the time of registration of the Domain Name and most likely selected the Domain Name to take advantage of the iPAQ name and draw customers away from the Complainant and its licensee HP.  Thus, the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business contrary to §3a i C of the Policy.

The Complainant has not shown that the Respondent registered or acquired the Domain Name primarily as a blocking registration (§3a i B of the Policy).

Accordingly, the Expert finds that on the balance of probabilities the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant’s business and it has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights in contravention of §1 (i) and (ii) of the Policy and is therefore an Abusive Registration.

h.	Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, ipaqchoice.co.uk, be transferred to the Complainant.

Signed:							Date: 	9 May 2005	
		Steve Ormand