WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compaq Computer Corporation v. Boris Beric

Case No. D2000-0042

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.

David Perkins
Sole Panelist

March 28, 2000

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