national arbitration forum

 

DECISION

 

Hot Topic, Inc. v. Transure Enterprise Ltd c/o Host Master

Claim Number: FA1001001301619

 

PARTIES

 

Complainant is Hot Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Transure Enterprise Ltd c/o Host Master (“Respondent”), Virgin Islands (British).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, <hottppic.com>, and <torriid.com>, registered with Above, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

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 6, 2010.

 

On January 6, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, <hottppic.com>, and <torriid.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names.  Above, Inc. has verified that Respondent is bound by the Above, 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 12, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 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@hhottopic.com, postmaster@hottopiv.com, postmaster@hottopyc.com, postmaster@hottotpic.com, postmaster@hottppic.com, postmaster@torriid.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 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, and <hottppic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark.  Respondent’s <torriid.com> domain name is confusingly similar to Complainant’s TORRID mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, <hottppic.com>, and <torriid.com> domain names.

 

3.      Respondent registered and used the <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, <hottppic.com>, and <torriid.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

Complainant, Hot Topic, Inc., is a mall-based specialty retailer with over 681 stores in the United States and Puerto Rico.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HOT TOPIC mark (e.g., Reg. No. 2,771,871 issued October 7, 2003) and the TORRID mark (e.g., Reg. No. 2,589,762 issued July 2, 2002).

 

Respondent registered the disputed domain names on or after September 14, 2007.  Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering specialty retail products in competition with Complainant.

 

Complainant offers evidence that Respondent has a history of registering domain names infringing upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.  E.g., Academy Ltd.  v. Transure Enter. Ltd, FA 1283916 (Nat. Arb. Forum Oct. 27, 2009);  Aeropostale, Inc. v. Transure Enter. Ltd, FA 1292041 (Nat. Arb. Forum Dec. 15, 2009); Cabela’s, Inc. v. Transure Enter. Ltd, FA 1292036 (Nat. Arb. Forum Dec. 15, 2009).

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has obtained multiple trademark registrations for the HOT TOPIC (e.g., Reg. No. 2,771,871 issued October 7, 2003) and TORRID (e.g., U.S. Reg. No. 2,589,762 issued July 2, 2002) marks with the USPTO.  The Panel finds that Complainant has established rights in the HOT TOPIC and TORRID marks for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO.  See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also 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).

 

Complainant argues that Respondent’s <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, and <hottppic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain names contain a misspelled version of Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a misspelled version of a complainant’s mark in a disputed domain name fails to create a distinguishable characteristic within the disputed domain name.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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).  In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from an established 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).  Therefore, the Panel finds that Respondent’s <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, and <hottppic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i).

 

In addition, Complainant contends that Respondent’s <torriid.com> domain name is confusingly similar to Complainant’s TORRID mark pursuant to Policy ¶ 4(a)(i).  Respondent’s <torriid.com> domain name contains Complainants’ TORRID mark while adding the letter “i” and the generic top-level domain “.com.”  Neither of these alterations constitute substantive changes which distinguish the disputed domain name from Complainant’s mark under a Policy ¶ 4(a)(i) analysis.  See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  The Panel thus finds that the <torriid.com> domain name is confusingly similar to Complainant’s TORRID mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain names.  Once a prima facie case has been established by Complainant, the burden then shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).  The Panel finds that Complainant has adequately established a prima facie case in these proceedings.  Because Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain names.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts that Respondent is neither commonly known by the disputed domain names, nor licensed to register a domain name using the HOT TOPIC or TORRID marks.  Respondent’s WHOIS information identifies the registrant as “Transure Enterprise Ltd c/o Host Master” and therefore lacks any defining characteristics relating it to the disputed domain names.  The Panel finds that without affirmative evidence Respondent is commonly known by the disputed domain names, Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent’s disputed domain names resolve to websites featuring advertisements and links relating to Complainant’s competitors in the specialty retail industry.  The Panel may infer that Respondent profits through the generation of click-through fees from the links to Complainant’s competitors.  Therefore, the Panel finds that Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).

 

Typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain names to divert Internet users who commit those typographical errors.  The disputed domain names take advantage of Internet users who mistype Complainant’s HOT TOPIC and TORRID marks.  Complainant contends that Respondent has engaged in typosquatting by misspelling Complainant’s marks in the disputed domain names.  The Panel agrees and concludes that Respondent’s engagement in typosquatting is further evidence that Respondent does not have rights or legitimate interests in the disputed domain names pursuant to 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 the complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases.   Academy Ltd.  v. Transure Enter. Ltd, FA 1283916 (Nat. Arb. Forum Oct. 27, 2009); Aeropostale, Inc. v. Transure Enter. Ltd, FA 1292041 (Nat. Arb. Forum Dec. 15, 2009);  Cabela’s, Inc. v. Transure Enter. Ltd, FA 1292036 (Nat. Arb. Forum Dec. 15, 2009).  The Panel finds that Respondent has therefore engaged in a pattern of bad faith registration and use under the parameters of Policy ¶ 4(b)(ii).  See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

Respondent’s disputed domain names resolve to websites that promote Complainant’s competitors in the specialty retail industry through click-through links.  Such an activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be redirected to Complainant’s competitors.  This qualifies as bad faith registration and use under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Texas 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); see also American Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).

 

The Panel infers that Respondent receives click-through fees from the use of the aforementioned hyperlinks.  Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and the resolving websites.  Therefore, the Panel finds that Respondent’s use of the disputed domain names constitutes bad faith registration and use under 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 University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel further finds that Respondent’s disputed domain names are merely typosquatted versions of Complainant’s HOT TOPIC and TORRID marks, and that such typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii).  See 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)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’  This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain.  ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hhottopic.com>, <hottopiv.com>, <hottopyc.com>, <hottotpic.com>, <hottppic.com>, and <torriid.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  February 22, 2010

 

 

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