Hot Topic, Inc. v. Hot Topic Inc.
Claim Number: FA1001001301532
Complainant is Hot Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Hot Topic Inc. (“Respondent”), California USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com>, registered with Nameview, Inc..
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 5, 2010.
On January 8, 2010, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com> domain names are registered with Nameview, Inc. and that Respondent is the current registrant of the names. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. 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 January 19, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 8, 2010 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@hotropic.com, postmaster@hottopiccom.com, postmaster@hottoplc.com, and postmaster@hottupic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark.
2. Respondent does not have any rights or legitimate interests in the <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com> domain names.
3. Respondent registered and used the <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hot Topic, Inc., is a
mall and web based specialty retailer that operates 681 stores in the
Respondent registered the <hotropic.com> (August 29, 2005), <hottopiccom.com> (June 23,
2005), <hottoplc.com> (February 27, 2006), and <hottupic.com>
(February 27, 2006) domain names on the
above dates. Respondent’s disputed
domain names resove to a website with third-party links to websites offering
similar products in competition with Complainant.
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
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 obtained multiple trademark registrations for the HOT TOPIC mark with the USPTO (e.g., Reg. No. 2,771,871 issued October 7, 2003). The Panel finds that Complainant has established rights in the HOT TOPIC mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant argues
that the disputed domain name <hottopiccom.com>
is not a simple misspelling but is
identical to the HOT TOPIC mark with the only differences being (1) the space
between the words is taken out, (2) the addition of the word “com” and (3) the
addition of a gTLD of “.com”. Complainant
contends that the use of the entire mark for which Complainant is registered is
in violation of policy ¶ 4(a)(i). The
Panel finds that a disputed domain name that takes out the space between the
words, and contains the additional letters “com” do not distinguish the
disputed domain name from the registered mark of Complainant. See Bond &
Co. Jewelers, Inc. v.
Complainant argues that Respondents <hotropic.com>, <hottopiccom.com>,
<hottoplc.com>, and <hottupic.com> domain names are confusingly similar to the
Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names all
contain common misspellings of the Complainant’s mark. The Panel finds that a disputed domain name
that contains a misspelling of the Complainant’s mark is not enough to
distinguish it from the mark and thereby creates a confusing similarity between
the disputed domain name and the Complainant’s mark. See
Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive);
see also Hallelujah
Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15,
2006) (holding that the respondent’s <hacrs.com> domain name was
confusingly similar to the complainant’s HACRES mark because it omitted the
letter “e” from the mark and added the generic top-level domain “.com”).
Each of the disputed domain names also adds the generic
top-level domain “.com.” The Panel finds
that the addition of a gTLD is not relevant in distinguishing the disputed
domain name with the Complainant’s mark.
See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation
of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry
Damson, Inc. v.
The panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show that they do have a right or legitimate interest in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant asserts that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain name lists the registrant as “Hot Topic, Inc.” Although Respondent appears to be commonly known by the disputed domain name from the WHOIS information, the Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent’s disputed domain names resolve to a website that offers click-through links and advertisements for Complainant’s competitors in the specialty retail field. The Panel finds that Respondent’s use of the disputed names to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute 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 Gen. Mills, Inc. v. Zuccarini, FA 97050 (Nat. Arb. Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using common misspellings of the
Complainant’s HOT TOPIC mark. The Panel
finds that Respondent’s engagement in what is commonly referred to as
typosquatting is evidence that the Respondent lacks any rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the disputed domain names to
intentionally divert Internet users to the above referenced websites, which
display third-party links to competing websites and businesses. In these cases
the Panel presumes that Respondent is collecting click-through fees and is
attempting to profit by creating a likelihood of confusion between the
Complainant’s HOT TOPIC mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net>
domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract
Internet traffic to the respondent’s website offering competing travel services
violated Policy ¶ 4(b)(iv)); see also
Complainant contends that Respondent is using the disputed domain names to divert Internet customers attempting to get to Complainant’s website to competitive websites that resolve from the disputed domain names. Complainant contends that Respondent’s typosquatting is evidence of bad faith registration under Policy ¶ 4(a)(iii). The Panel finds that Respondent’s use of typosquatting does constitute bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <hotropic.com>, <hottopiccom.com>, <hottoplc.com>, and <hottupic.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 3, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum