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Hewlett-Packard Company v. Cupcake City (Hewlittpackard - Dom)
[Indexed as: Hewlett-Packard v. Cupcake City]
[Indexed as: hewlittpackard.com]
National Arbitrator Decision
Arbitrator Decision
Case No. FA0002000093562
Commenced: 23 February 2000
Judgement: 7 April 2000
Presiding Arbitrator: Judge Carolyn Marks Johnson

Domain Name - Domain name dispute resolution policy - 17 U.S. Trademarks - U.S. Service Mark - Famous names - Distinctive names - Nearly identical names - Confusingly similar - Unauthorized use - Bad faith Registration
Complainant is owner of the service mark, trade name and 17 registered trademarks, "Hewlett-Packard". Complainant's "Hewlett-Packard" mark is famous and distinctive. The Respondent has adopted the nearly identical name "Hewlittpackard.com" as a domain name. Complainant alleges that the Respondent has no legitimate rights in the domain. Complainant alleges bad faith on the part of the Respondent. Complainant alleges that the Respondent engaged in unauthorized use of Hewlett-Packard Company web site materials.
Held, Name Transferred
Complainant must establish both bad faith registration and bad faith use
The Respondent registered and acquired that domain name "Hewlittpackard.com" to sell for a premium in excess of costs related to the domain name. It is clear that the domain name is nearly identical and confusingly similar to the trademark and service mark registered and used by the Complainant, "Hewlett-Packard". The Respondent acted as if he had authorization when he in fact did not. This is bad faith registration.
The Respondent used the domain name "Hewlittpackard.com" as part of a pattern of conduct involving multiple registration of undeveloped domain names. This is bad faith use.
Policies Referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
National Arbitration Forum's Supplemental Rules
Decision
The above entitled matter came on for an administrative hearing on March 31, 2000 before the undersigned on the Complaint of HEWLETT-PACKARD COMPANY, hereafter "Complainant," against CUPCAKE CITY/HEWLITTPACKARD - DOM), hereafter "Respondent." Elizabeth A. Sheets represents Complainant. Respondent had no representation and filed no response. Upon Complainant's undisputed written submitted record, the following decision is made:
Procedural Findings
Domain Name: HEWLITTPACKARD.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Cupcake City (HEWLITTPACKARD-DOM)
957 Bristol Pike, Suite D-6
Andalusia, PA 19020
USA
Date of Domain Name Registration: May 19, 1999.
Date Complaint filed: February 2, 2000.
Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a)[1] and Rule 4(c): February 23, 2000.
Due date for a Response: March 17, 2000.
Respondent did not submit a Response to the Complaint.
After reviewing the Complaint and determining it to be in administrative compliance, the NATIONAL ARBITRATION FORUM (THE FORUM) forwarded the Complaint to the Respondent on February 4, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), THE FORUM immediately notified the Domain Name Registrar NETWORK SOLUTIONS, INC., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and the Respondent that the administrative proceeding had commenced. Respondent did not submit a response to THE FORUM within twenty (20) days pursuant to Rule 5(a).
On May 19, 1999, Respondent registered the domain name "HEWLITTPACKARD.COM" with Domain Name Registrar NETWORK SOLUTIONS, INC., the entity that is the Registrar of the domain name. On February 8, 2000, NETWORK SOLUTIONS, INC., verified that Respondent is the Registrant for the domain name "HEWLITTPACKARD.COM," and that by registering its domain name with NETWORK SOLUTIONS, INC., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the Uniform Domain Name Dispute Resolution Policy.
Findings of Fact
1. That Complainant is the owner of a phonetically identical trademark, service mark, and trade name, HEWLETT PACKARD, which it has used in commerce since January 1, 1946.
2. That Respondent has adopted the nearly identical name HEWLITTPACKARD.COM as a domain name.
3. That the Complainant is the owner of seventeen (17) U.S. registrations for HEWLETT PACKARD and that Complainant Hewlett-Packard Company uses the mark HEWLETT PACKARD in connection with computer software, computer hardware, computer printers and cartridges, printed material, internet services, business services, computer peripherals and various computer-related services.
4. That the undisputed record contains Complainant's specific listing of goods and services with which the mark is used through registration certificates.
5. That the undisputed record allows the inference that Respondent has no legitimate rights in the domain name and has registered it in bad faith under the guidelines specified in the ICANN UDSRP Policy.
6. That Complainant's HEWLETT PACKARD mark is famous and distinctive.
7. That Respondent can have no rights in the phonetically identical domain name HEWLITTPACKARD.COM because the trademark HEWLETT PACKARD is already owned worldwide by HEWLETT-PACKARD COMPANY.
8. That the undisputed record allows the inference that Respondent has no affiliation or relationship with HEWLETT-PACKARD COMPANY and has no legitimate reason for using the famous HEWLETT PACKARD trademark as its domain name.
9. That the undisputed record allows the inference that Respondent has used the domain name HEWLITTPACKARD.COM for the purpose of attempting to attract for commercial gain various visitors to its web site and by creating a likelihood of confusion as to sponsorship by HEWLETT-PACKARD COMPANY, in violation of UDRP Policy Section 4(b)(iii).
10. That the undisputed record allows the finding that Respondent has engaged in unauthorized copying of HEWLETT-PACKARD COMPANY web site materials and that Respondent has routinely copied and downloaded HEWLETT-PACKARD COMPANY'S own site (hp.com) without the permission or authorization of HEWLETT-PACKARD COMPANY and that Respondent has placed the illegally copied material on Respondent's unauthorized site.
11. That the undisputed record allows the finding that Respondent attempted to deceive customers into believing that HEWLITTPACKARD.COM was owned, operated and maintained by HEWLETT-PACKARD COMPANY.
12. That the record allows an inference that Complainant has invested substantial sums of money in developing and marketing its products and services under the HEWLETT PACKARD name.
13. That the following is evidence of Respondent's bad faith:
a. That Respondent has failed to establish any legitimate purpose for
registering the domain name "HEWLITTPACKARD.COM" some
forty-two (42) years after Complainant's adoption and first use of the mark "HEWLETT PACKARD" and long after Complainant began using its trade names internationally.
b. That Respondent has failed to show any legitimate use of the domain
name �HEWLITTPACKARD.COM."
c. That Respondent engaged in false and misleading practices to profit
from its registration of said domain name by trading upon the goodwill associated with the Complainant's "HEWLETT PACKARD" mark.
Complainant's prayer for relief requests that the domain name "HEWLITTPACKARD.COM" be cancelled and that the domain name be transferred to Complainant HEWLETT-PACKARD COMPANY.
Conclusions
The undersigned certifies that she has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:
1. That contrary to ICANN's Uniform Domain Name Dispute Resolution Policy Paragraph 4(b)(i) Respondent wrongfully registered and acquired the domain name "HEWLITTPACKARD.COM" for profit, for the purpose of selling or otherwise transferring the said domain name registration to the Complainant, who is the owner of the trade mark or service mark, or to a competitor of the Complainant for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name.
2. That contrary to ICANN'S UDNRP Paragraph 4(b)(ii) that Respondent wrongfully registered the domain name "HEWLITTPACKARD.COM" on May 19, 1999, with Network Solutions, Inc., in bad faith, knowing that it was phonetically identical to and confusingly similar to Complainant's "HEWLETT PACKARD," Mark, which is a Mark in which Complainant has had rights and to which Respondent has no right or legitimate interests.
3. That contrary to ICANN's UDNRP Paragraph 4(b)(ii) Respondent used the domain name in bad faith as part of a pattern of conduct involving multiple registration of undeveloped domain names.
4. That contrary to ICANN's UDNRP Paragraph 4(b)(iii) Respondent registered the domain name in bad faith when Respondent knew or should have know that it was more likely than not calculated to disrupt the business of Complainant and that Respondent attempted to use the domain name in a manner that suggested that he had Complainant's authorization when he did not.
Decision
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "HEWLITTPACKARD.COM" REGISTERED BY RESPONDENT CUPCAKE CITY (HEWLITTPACKARD - DOM) BE CANCELLED AND TRANSFERRED TO COMPLAINANT HEWLETT-PACKARD COMPANY.
DATED: March 31, 2000 by Judge Carolyn Marks Johnson (Ret.),
Honorable Carolyn Marks Johnson
[1] Any reference to "Rule" or "Rules are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.
Amendment to Decision
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "HEWLITTPACKARD.COM" REGISTERED BY RESPONDENT CUPCAKE CITY (HEWLITTPACKARD - DOM) BE TRANSFERRED TO COMPLAINANT HEWLETT-PACKARD COMPANY.
Dated: April 7, 2000
Honorable Carolyn Marks Johnson
Retired District Judge
Arbitrator

Held, Domain Name Transferred