Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hewlett-Packard Company, Palo Alto, CA, USA ("Complainant") represented by Jane A. O'Connell, Strasburger & Price LLP. The Respondent is Cupcake Patrol, Andalusia, PA, USA ("Respondent").

The domain names at issue are "hewlettpacker.com", "hewittpackard.com", and "hewettpackard.com" registered with CORE-11.

On November 20,2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist. The Panelist certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 18, 2000.

On October 24, 2000, CORE-11 confirmed by e-mail to the Forum that the domain names "hewlettpacker.com", "hewittpackard.com", and "hewettpackard.com" are registered with CORE-11 and that the Respondent is the current registrant of the name. CORE-11 has verified that Respondent is bound by the CORE-11 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@hewlettpacker.com, postmaster@hewittpackard.com, and postmaster@hewettpackard.com by e-mail.

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.

Having reviewed the communications records, 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

The Complainant asserts that each domain name is confusingly similar to its trademark, that the Respondent has no rights or legitimate interest in these domain names, and that the domain name was registered and used in bad faith.

The Complainant contends that the activities of the Respondent as complained have caused and will continue to cause substantial and irreparable harm to Hewlett-Packard and its business reputation and goodwill.

B. Respondent

The Respondent did not submit a response in this ICANN proceeding. As the Respondent has failed to submit a response to the complaint, the Panel accepts as true all of the allegations of the complaint. See Talk City, Inc. v. Michael Robertson, D2000-0009 (WIPO Feb. 29, 2000).

Complainantís business was founded in 1938. The Complainant is the owner of the seventeen registered trademarks and service marks registered on the principal register of the United States Patent and Trademark Office, which incorporates the term "Hewlett Packard" (the "Hewlett Packard Marks").

The Complainant uses its marks, inter alia, in connection with computer software, computer hardware, computer printers and cartridges, printed materials, internet services, business services, computer peripherals and other related goods.

The Respondent registered the domain name "hewittpackard.com" on January 22, 2000 and the domain names "hewettpackard.com" and "hewlettpacker.com" on April 6, 2000. The first domain name links to Hewlett-Packardís home page, and the latter two domain names link to the domain name "usgoverment.com", which is owned by the Respondent and highly critical of Cuban Leader Fidel Castro and the Clinton administrationís handling of the Elian Gonzalez case with such headlines as "GUN WIELDING FEDERAL AGENS TERRORIZE ELIAN & GONZALEZ HOUSEHOLD," "CUBAN DIPLS. ATTACK DEMOSTRS.IN WASH." and "CASTRO IS A MURDER!!! (sic)"

The Complainantís mark was in use for over fifty years before Respondent registered the domain names in dispute. Respondent has no affiliation or relationship with Hewlett-Packard and therefore has no legitimate reason for using a phonetic equivalent of the Complainantís famous trademark as its domain name.

The Respondent registered the domain names "hewettpackard.com" and "hewlettpacker.com" after ICANN had decided that Respondent should transfer the other two domain names "hewlittpackard.com" and "hewlitpackard.com" to the Complainant. Moreover, the Respondent has registered the domain names through a number of different entities. "Hewlittpackard.com" was registered in the name of Cupcake City, "hewlitpackard.com" and "hewlettpacker.com" were registered in the name of Cupcake Patrol. The Respondent has registered other infringing domain names such as "sportillistrated.com" under the name Cupcake Shows.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order 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.

The domain names are merely phonetic equivalents or misspellings of the Complainantís world famous Hewlett Packard marks, and the most common commercial URL suffix, com. Consumers seeking information on Hewlett-Packardís products and services could easily misspell Complainantís name and add the most common commercial url suffix, ". com." Therefore, the Panel concludes that the domain names in question are confusingly similar with the Complainantís marks, and Policy  4.a.(i) is satisfied. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name "venesign.com" and the Complainantís mark, VeriSign, are so close that confusion can arise in the mind of the consumer); State Farm v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name "statfarm.com" is confusingly similar to the Complainantís mark "State Farm").

The Complainant contends that Complainantís mark was in use for over fifty years before registration of domain name in dispute, and the Respondent has no affiliation or relationship with Hewlett-Packard and therefore has no legitimate reason for using a phonetic equivalent of Complainantís famous trademark as its domain name.

The Respondent has not offered any evidence that it is using the domain name in connection with a commercial use under Policy  4.c.(i) or it has been commonly known by the domain name under Policy  4.c.(ii). Even if the Respondent could be considered as making a legitimate noncommercial use of the domain name with a link to a webpage which expresses his political opinion, such use misleadingly diverts consumers or tarnishes the Complainantís marks by creating a likelihood of confusion with the complainantís marks as to the source, sponsorship, affiliation, or endorsement of the Respondentís own website. Policy  4.c.(iii), 4.b.(iv).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name based on Policy  4.a.(ii). See Woolworths plc. v. David Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainantís prior rights in the domain name precede Respondentís registration; (3) Respondent is not commonly known by the domain name in question).

The domain names in dispute were registered in bad faith due to the fact that Respondentís registration of the domain names appears to be a part of a pattern of behavior. Policy  4.b.(ii). See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding that the Respondentís registration and use of multiple domain names infringe upon the Complainantís marks); Budget Rent a Car Corporation v. Cupcake City, D2000-1020 (WIPO Oct. 19, 2000) (finding a pattern of conduct in registering domain names that infringe upon othersí marks where the Respondent has registered over 1,300 domain names); Cabelaís Incorporated v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum July 29, 2000) (finding that the Complainant was entitled to relief under UDRP against Respondent for the bad faith registration and use of the domain name).

Moreover, the Respondent registered and used the domain names in bad faith because he intentionally attempted to attract Internet users to his own web site by linking the domain names in dispute to "usgoverment.com". Policy  4.b.(iv). See Daniel C. Marino, Jr. v. Video Images Productions, D2000-0598 (WIPO Aug. 2, 2000) (finding bad faith where the Respondent linked the domain name "danmarino.com" to a site administered and operated by Respondents which provides a variety of sports, entertainment, trivia and other special programs and includes links to vendors of Dan Marino related products).

The Panel concludes that the elements of Policy  4.a.(iii) have been satisfied.

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 "hewittpackard.com", "hewettpackard.com" and "hewlettpacker.com" be transferred from the Respondent to the Complainant.