Hot Topic, Inc. v. Domain Name Proxy, LLC
Claim Number: FA1001001302615
Complainant is Hot
Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com>, registered with Basic Fusion, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2010.
On Jan 21, 2010, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names are registered with Basic Fusion, Inc. and that Respondent is the current registrant of the names. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, 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 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@hottopicc.com, postmaster@hottoxic.com, postmaster@hottpopic.com, postmaster@hotyopic.com, postmaster@tirrid.com, postmaster@torridd.com, postmaster@torriod.com, postmaster@torryd.com, and postmaster@tottopic.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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, and <tottopic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark.
Respondent’s <tirrid.com>, <torridd.com>, <torriod.com>, and <torryd.com> domain names are confusingly similar to Complainant’s TORRID mark.
2. Respondent does not have any rights or legitimate interests in the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names.
3. Respondent registered and used the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hot Topic, Inc., is a mall-based specialty retailer. Complainant operates stores under the HOT TOPIC and TORRID marks. Complainant sells music and pop-culture related clothing, hats, posters, stickers, patches, postcards, books, novelty accessories, CDs, and DVDs under its HOT TOPIC marks. Complainant offers apparel, lingerie, shoes, and accessories for plus-size women under its TORRID mark. Complainant began offering these products in 1998 and now owns and operates 681 HOT TOPIC stores and 156 TORRID stores. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its HOT TOPIC (e.g., Reg. No. 2,771,871 issued October 7, 2003) and its TORRID mark (e.g., Reg. No. 2,589,762 issued July 2, 2002).
Respondent registered the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names no earlier than July 9, 2004. The disputed domain names resolve to parked websites that contain commercial search engines and hyperlinks associated with Complainant’s competitors in the retail store industry.
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.
The Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in its HOT TOPIC and TORRID marks through its trademark registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <hottopicc.com>, <hottoxic.com>, <hottpopic.com>,
<hotyopic.com>, and <tottopic.com> domain names are
confusingly similar to Complainant’s HOT TOPIC mark. The disputed domain names contain common
misspellings of Complainant’s mark and add the generic top-level domain
(“gTLD”) “.com” to the mark. The Panel
finds that these changes are insufficient to adequately distinguish the
disputed domain names from Complainant’s mark.
See Neiman Marcus Group, Inc. v.
Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July
23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec.
31, 2007) (finding that “spaces are impermissible and a generic top-level
domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain
names. Therefore, the panel finds that
the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”);
see also Jerry Damson, Inc. v.
Respondent’s <tirrid.com>,
<torridd.com>, <torriod.com>, and <torryd.com>
domain names are confusingly similar to Complainant’s TORRID mark. These disputed domain names also feature
common misspellings of Complainant’s mark and add the gTLD “.com”, failing to distinguish
the disputed domain names from Complainant’s mark. See
suora Neiman Marcus Group, Inc. v.
Party Night, Inc.; see also supra Jerry
Damson, Inc. v.
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information, provided by Complainant, lists the
registrant of the domain names as “Domain Name Proxy, LLC.” There
is no other evidence on the record showing Respondent is commonly known by the
disputed domain names. Complainant
states that Respondent is not authorized to use the HOT TOPIC or TORRID
marks. Therefore the Panel finds that
Respondent is not commonly known by the disputed domain names pursuant
to Policy ¶ 4(c)(ii).
See 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); see
also Educ. Broad. Corp. v. DomainWorks Inc., FA
882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the
respondent was not commonly known by the <thirteen.com> domain name based
on all evidence in the record, and the respondent did not counter this argument
in its response).
Respondent’s <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names resolve to a website featuring a commercial search engine and hyperlinks to Complainant’s competitors in the mall-based retail store business. Complainant alleges Respondent profits from the search engines and hyperlinks through the receipt of click-through fees. The Panel finds Respondent’s use of the confusingly similar disputed domain names is not 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
In addition, Respondent’s use of the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>,
<hotyopic.com>, <tirrid.com>, <torridd.com>,
<torriod.com>, <torryd.com>, and <tottopic.com>
domain names, common misspellings of Complainant’s HOT TOPIC and TORRID marks,
constitutes typosquatting. The Panel
finds that Respondent’s use of the misspelled disputed domain names to redirect
Internet users seeking Complainant, is further evidence that Respondent fails
to establish rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds
Complainant has satisfied Policy ¶ 4(c)(ii).
The Panel finds
Respondent’s use of the disputed domain names disrupts Complainant’s retail
store business and constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb.
Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names). Respondent’s <hottopicc.com>, <hottoxic.com>, <hottpopic.com>,
<hotyopic.com>, <tirrid.com>, <torridd.com>,
<torriod.com>, <torryd.com>, and <tottopic.com>
domain names feature search engines and
hyperlinks to Complainant’s competitors in the mall-based retail store
industry.
The Panel infers that Respondent profits from its receipt of click-through fees from its commercial search engines and competing hyperlinks. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and resolving websites. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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).
Furthermore, the Panel finds Respondent’s engagement in the practice of typosquatting constitutes bad faith registration and use pursuant to 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 under Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hottopicc.com>, <hottoxic.com>, <hottpopic.com>, <hotyopic.com>, <tirrid.com>, <torridd.com>, <torriod.com>, <torryd.com>, and <tottopic.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 10, 2010
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