HotCam, Ltd. v. RNIS Telecommunication inc.
Claim Number: FA0907001273417
Complainant is HotCam, Ltd. (“Complainant”), represented by Arthur R. Lehman, of Arthur R. Lehman, L.L.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotcam.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com (“Directi”).
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2009.
On July 14, 2009, Directi confirmed by e-mail to the National Arbitration Forum that the <hotcam.com> domain name is registered with Directi and that the Respondent is the current registrant of the name. Directi has verified that Respondent is bound by the Directi 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 7, 2009.
An Additional Submission was received from Complainant on August 11, 2009, and an Additional Submission was received from Respondent on August 14, 2009.
On August 12, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the owner of
Complainant states that it has registered various domain names incorporating its HOTCAM mark, but has been unable to register the disputed domain name <hotcam.com> because Respondent registered the name first. Complainant asserts, based upon WHOIS registration data, that Respondent registered the domain name on April 12, 1998, but that Respondent has not actively used the name. In early 2009, shortly after Respondent learned of Complainant’s intention to pursue a claim against Respondent under the Policy, Complainant contends that Respondent began linking the domain name to an instant message service for singles. Complainant asserts that Respondent undertook this use primarily for the purpose of defending its registration of the disputed domain name, rather than as a bona fide offering of goods or services. Complainant contends, based upon these grounds, that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Complainant further states that it contacted Respondent in 2006 to inquire about a possible transfer of the domain name, in response to which Respondent offered to sell the name for approximately $50,000. Complainant also alleges that Respondent has engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names and to attract Internet users for commercial gain by creating a likelihood of confusion with such marks. By way of example, Complainant asserts that in addition to the domain name that is the subject of this proceeding, Respondent registered two domain names in 2006 that falsely suggest an affiliation with a popular German website and trademark. On these grounds Complainant contends that Respondent registered and is using the disputed domain name in bad faith.
Respondent submits that it registered the disputed domain name more than one year before Complainant was incorporated and nearly two years before Complainant registered its HOTCAM mark. Respondent claims it had no knowledge of the existence of Complainant when it registered the domain name, and notes that Complainant has neither identified the “unknown date in 1998” on which it commenced its activities nor offered any evidence of its use of the HOTCAM mark or name prior to April 12, 1998, and has not offered any proof or reason why Respondent could or should have known of Complainant at that time. Respondent further states that the disputed domain name is “so evocative in the Internet world” that Respondent has rebuffed numerous purchase inquiries over the years, and accuses the Complainant of attempted reverse domain name hijacking.
C. Additional Submissions
As a general rule, a Panel should consider additional submissions only
in exceptional circumstances, such as where they reflect newly discovered
evidence not reasonably available to the submitting party at the time of its
original submission, or rebut arguments by the opposing party that the
submitting party could not reasonably have anticipated. Am.
Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006); see also Bar Products.com, Inc. v.
RegisterFly.com - Ref-R# 44488698, FA 829161 (Nat. Arb. Forum Jan. 9,
2007). Where an additional submission is
justified by newly discovered evidence or the need to rebut arguments not
reasonably anticipated, the Panel should consider the additional submission
only to the extent it addresses those issues, and should disregard extraneous
material in the submission.
In its Additional Submission, Complainant states that it acquired rights in the HOTCAM mark through its trademark registration, based on “usage of the mark dating back to 1998.” Complainant further states that Respondent renewed its registration of the disputed domain name well after Complainant had acquired its trademark rights and developed substantial goodwill in the mark. Complainant cites Domain Name
The Panel finds that Complainant has not proved that the disputed domain name was registered and used in bad faith. The Panel further finds that the Complaint in this proceeding was brought in bad faith, in an attempt at reverse domain name hijacking.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Because the Panel’s conclusions with respect to the third element are dispositive, the Panel declines to consider the first two elements. A finding of bad faith registration requires proof that Respondent was aware of Complainant or its mark when it registered the domain name, and that the registration was in some way targeted at Complainant or its mark. Carboni v. Domain Admin, eSources Comm’ns, D2008-0970 (WIPO Sept. 2, 2008). The evidence in this case indicates that the disputed domain name was registered on April 12, 1998. Complainant asserts that it began using the term HOTCAM at some time in 1998, but fails (both in its Complaint and its Additional Submission) to identify the precise date. The Panel infers that Complainant’s use of the term commenced subsequent to Respondent’s registration of the disputed domain name, and therefore concludes that the domain name could not have been registered in bad faith. See, e.g., Datalyst LLC v. Estes, FA 954109 (Nat. Arb. Forum May 9, 2007); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.1, http://www.wipo.int/amc/en/domains/search/overview/ (characterizing this position as the consensus view of WIPO UDRP panelists).
Paragraph 4(a)(iii) of the Policy requires
that both the registration and use of a domain name be in bad faith. The relevant date for assessing bad faith
registration is the date upon which the domain name was initially registered or
acquired by the respondent; mere renewal in bad faith is insufficient. E.g., NetLearning,
Inc. v. Parisi, FA 95471 (Nat. Arb. Forum Oct. 16, 2000) (Panelist David
Sorkin dissenting); see also WIPO
Overview, supra, § 3.7 (describing this as the consensus view). The authority cited by Complainant for a
contrary proposition is a
For the reasons set forth above, the Panel concludes that the disputed domain name was not registered in bad faith.
Furthermore, Complainant knew or should have known, based upon the facts known to it when it filed the Complaint in this proceeding, that it could not prove bad faith registration. Upon being called on this point in the Response, Complainant shifted to an alternative and obviously unsound argument for bad faith, one that it knew (or should have known) could not prevail. The Panel considers these circumstances sufficient to support a finding that the Complaint was brought in bad faith, in an attempt at reverse domain name hijacking. See Datalyst LLC v. Estes, FA 954109 (Nat. Arb. Forum May 9, 2007).
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: August 24, 2009
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