Hot Topic, Inc. v. Whois Watchdog c/o Domain Administrator
Claim Number: FA0907001273898
Complainant is Hot
Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotopic.com>, registered with Rebel.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 15, 2009.
On July 17, 2009, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <hotopic.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 2009 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 Respondent's registration as technical, administrative and billing contacts, and to postmaster@hotopic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hotopic.com> domain name is confusingly similar to Complainant’s HOT TOPIC mark.
2. Respondent does not have any rights or legitimate interests in the <hotopic.com> domain name.
3. Respondent registered and used the <hotopic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hot Topic, Inc., is the owner of the HOT TOPIC mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,771,871 issued October 7, 2003, filed December 13, 2002). Complainant asserts that the HOT TOPIC mark was first used in commerce on July 16, 1997. Since then, Complainant has continuously used the HOT TOPIC mark to operate over 681 mall-based retail stores in the United States that sell music, clothing, hats, posters, and other novelty accessories. Based on its retail sales, Complainant reported over $700 million in revenue for the 2009 year.
Respondent registered the <hotopic.com> domain name on October 14, 2001. The disputed domain name resolves to a website featuring click-through links that further resolve to third-party websites, including those of Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has established rights in the HOT TOPIC mark
under Policy ¶ 4(a)(i) based on Complainant’s
registration of the mark with the USPTO (Reg. No. 2,771,871 issued October 7,
2003, filed December 13, 2002).
Additionally, the Panel finds that it is not necessary for Complainant
to have registered its HOT TOPIC mark in the country of Respondent’s
residence. See Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction); see
also
Prior to Respondent’s registration of the disputed domain name on October 14, 2001, Complainant did not possess a trademark registration for its HOT TOPIC mark. However, Complainant argues that it has common law rights in the mark predating Respondent’s registration of the disputed domain name dating back to July 16, 1997.
Complainant asserts that the HOT TOPIC mark was first used
in commerce on July 16, 1997. As of
January 2009, Complainant operated over 681 stores in the
Complainant contends that Respondent’s <hotopic.com> domain name is confusingly similar to Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i). The disputed domain name incorporates the distinctive portion of Complainant’s HOT TOPIC mark with the only alterations being the omission of spaces between the terms, the omission of the letter “t,” and the affixation of the generic top-level domain “.com.” The Panel concludes that these modifications are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <hotopic.com> domain name is confusingly similar to Complainant’s HOT TOPIC mark under Policy ¶ 4(a)(i). See CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has satisfied Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). Respondent has failed to respond to the allegations against it. Consequently, the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will however, examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The disputed domain name resolves to a website displaying click-through links that further resolve to the websites of Complainant’s competitors. Complainant contends, and the Panel agrees, that Respondent’s use of a confusingly similar domain name to redirect Internet users to a website displaying links to competing businesses does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Moreover, Complainant contends that Respondent is not commonly known by the <hotopic.com> domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant of the disputed domain name as “Whois Watchdog c/o Domain Administrator.” As Respondent did not submit a response to Complainant’s allegations, there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <hotopic.com> domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Finally, the Panel finds that Respondent is taking advantage of a common misspelling of Complainant’s HOT TOPIC mark. Respondent is using this common misspelling in the disputed domain name to divert Internet users to Respondent’s website; this practice is commonly referred to as “typosquatting.” Thus, the Panel concludes that Respondent’s engagement in typosquatting is further evidence that Respondent lacks rights and legitimate interests in the <hotopic.com> domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a website containing sponsored links that further resolve to the websites of Complainant’s competitors. The Panel finds that such use of the confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors likely disrupts Complainant’s business. Thus, the Panel concludes that Respondent has engaged in bad faith registration and use of the <hotopic.com> domain name pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends that Respondent is likely generating
click-through revenue as a result of the sponsored links that appear at the
disputed domain name. The Panel finds
that Respondent is intentionally attempting to attract Internet users for
financial gain to its domain name by creating a likelihood of confusion with
Complainant and its HOT TOPIC mark.
Therefore, the Panel concludes that Respondent has engaged in bad faith
registration and use of the <hotopic.com> domain name pursuant to
Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum
July 18, 2006) (finding that the respondent engaged in bad faith registration
and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA
536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent
receives click-through fees for diverting Internet users to a competing
website. Because Respondent’s domain
name is identical to Complainant’s
Lastly, the Panel concludes that Respondent has engaged in typosquatting based on Respondent’s incorporation of a common misspelling of Complainant’s HOT TOPIC mark in the <hotopic.com> domain name. Respondent is attempting to take advantage of this misspelling to divert Internet users to the disputed domain name’s resolving website. The Panel therefore finds that Respondent’s engagement in the practice of typosquatting is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotopic.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 31, 2009
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