national arbitration forum

 

DECISION

 

Hot Topic, Inc. v. A Kiansu

Claim Number: FA1005001323039

 

PARTIES

Complainant is Hot Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is A Kiansu (“Respondent”), Vietnam.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hottopc.com>, <hottopci.com>, and <htotopic.com>, registered with DOTREGISTRAR.

 

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2010.

 

On May 5, 2010, DOTREGISTRAR confirmed by e-mail to the National Arbitration Forum that the <hottopc.com>, <hottopci.com>, and <htotopic.com> domain names are registered with DOTREGISTRAR and that Respondent is the current registrant of the names.  DOTREGISTRAR has verified that Respondent is bound by the DOTREGISTRAR 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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hottopc.com, postmaster@hottopci.com, and postmaster@htotopic.com.  Also on May 7, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of a Written Notice, as defined in Rule 1.  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 <hottopc.com>, <hottopci.com>, and <htotopic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark.

 

2.      Respondent does not have any rights or legitimate interests in the <hottopc.com>, <hottopci.com>, and <htotopic.com> domain names.

 

3.      Respondent registered and used the <hottopc.com>, <hottopci.com>, and <htotopic.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 retailer specializing in apparel, cosmetics, hair accessories, wallets, and handbags.  Complainant owns multiple trademark registrations for the HOT TOPIC marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,606,042 issued July 10, 1990).

 

Respondent, A Kiansu, registered the <hottopc.com>, <hottopci.com>, and <htotopic.com> domain names on April 2, 2010.  None of the disputed domain names resolves to an active website.

 

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 holds registrations for the HOT TOPIC mark with the USPTO (e.g., Reg. No. 1,606,042 issued July 10, 1990).  The Panel finds that Complainant sufficiently proves its rights in the HOT TOPIC mark with this evidence of a federal USPTO trademark registration, regardless of the location of Respondent’s residence or business.  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Complainant alleges that Respondent’s <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names are confusingly similar to Complainant’s HOT TOPIC mark because each one is only a minor misspelling of Complainant’s mark that either transposes two letters or deletes one letter and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds that misspellings of Complainant’s mark that result from changes made to only one letter fail to prevent confusing similarity for the purposes of Policy ¶ 4(a)(i).  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).  The Panel also finds that the addition of a gTLD is not considered when evaluating confusing similarity under Policy ¶ 4(a)(i) because gTLDs are required elements of domain names.  See 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.”).  Therefore, the Panel finds Respondent’s <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names are confusingly similar to Complainant’s HOT TOPIC mark according to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

In accordance with Policy ¶ 4(a)(ii), Complainant’s assertion and supporting evidence that Respondent lacks rights and legitimate interests satisfies Complainant’s burden to present a prima facie case against Respondent.  Respondent now bears the burden to demonstrate its rights and legitimate interests but has failed to carry this burden as it has not responded to the complaint.  Due to Respondent’s failure to respond, the Panel may infer that Complainant’s allegations are true as stated and that Respondent lacks rights and legitimate interests in the disputed domain names.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also 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).  In the interest of making a full determination on Respondent’s rights and legitimate interests, however, the Panel elects to consider the evidence in the record in light of Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names.  The Panel finds that the WHOIS information for the disputed domain names identifies the registrant as “A Kiansu,” which indicates that Respondent is not commonly known by the disputed domain names and therefore lacks rights and legitimate interests under 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Complainant contends that Respondent’s <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names all resolve to blank webpages with no active content.  The Panel finds Respondent’s failure to make an active use of the disputed domain names indicates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant argues that Respondent’s <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names each vary by only one letter from Complainant’s mark, thereby taking advantage of common mistakes Internet users make when typing Complainant’s mark.  The Panel finds such domain name registration constitutes typosquatting and evidences a lack of rights and legitimate interests according 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 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 Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy     ¶ 4(b).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Complainant alleges that Respondent’s <hottopc.com>, <hottopci.com>, and <htotopic.com> disputed domain names all resolve to blank websites empty of any active content.  The Panel finds that such failure to make active use of the disputed domain names indicates bad faith registration and use on the part of Respondent according to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel has previously concluded that Respondent’s registration of the <hottopc.com>, <hottopci.com>, and <htotopic.com> confusingly similar disputed domain names is typosquatting.  The Panel finds that such typosquatting reveals Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to 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).”).

 

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 <hottopc.com>, <hottopci.com>, and <htotopic.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 8, 2010

 

 

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