Hot Topic, Inc. v. Comdot Internet Services Private Limited
Claim Number: FA1001001303837
Complainant is Hot
Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hototopic.com> and <hpttopic.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2010.
On January 20, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <hototopic.com> and <hpttopic.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@hototopic.com and postmaster@hpttopic.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 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <hototopic.com> and <hpttopic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark.
2. Respondent does not have any rights or legitimate interests in the <hototopic.com> and <hpttopic.com> domain names.
3. Respondent registered and used the <hototopic.com> and <hpttopic.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 sells women’s and
men’s apparel, hats, posters, stickers, patches, postcards, books, novelty
accessories, CDs, and DVDs. Complainant
offers these products under its HOT TOPIC mark.
Complainant began operation in 1988 and currently operates 681 stores
throughout the
Respondent registered the <hototopic.com> and <hpttopic.com> domain names no earlier than August 13, 2005. The disputed domain names resolve to websites containing hyperlink directories of third party websites, some of which compete with Complainant’s retail business.
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.
Complainant registered its HOT TOPIC mark with the USPTO (e.g., Reg. No. 2,771,871 issued October
7, 2003). While Respondent resides in
Complainant alleges that Respondent’s <hototopic.com> and <hpttopic.com>
domain names are confusingly similar to Complainant’s HOT TOPIC mark. The disputed domain names remove the space in
Complainant’s mark and contain common misspellings of the mark. Previous panels have held that the removal of
a space and the use of a common misspelling of a complainant’s mark do not
adequately distinguish a respondent’s disputed domain name from a complainant’s
mark. See Bond & Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <hototopic.com> and <hpttopic.com> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) after Complainant makes a prima facie case in support of its allegations. 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 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 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)); see also 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.”).
Respondent offers no evidence to suggest Respondent is commonly known by the <hototopic.com> and <hpttopic.com> domain names. Furthermore, the Panel fails to find evidence in the record that Respondent is commonly known by disputed domain names. Complainant asserts that Respondent has never been authorized to use the HOT TOPIC mark. The WHOIS information lists the domain name registrant as “Comdot Internet Services Private Limited.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain names and has failed to establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent uses the <hototopic.com> and <hpttopic.com> domain names to resolve to websites featuring hyperlinks to third-party companies, including competitors of Complainant’s retail business. Respondent likely profits from these hyperlinks. The Panel finds that this use 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
In addition, Respondent’s use of the <hototopic.com> and <hpttopic.com>
domain names constitutes typosquatting.
The Panel finds that Respondent’s use of domain names that are common
misspellings of the HOT TOPIC mark to redirect Internet users seeking
Complainant’s website to Respondent’s website is further evidence that
Respondent lacks rights or interests pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges Respondent’s use of the <hototopic.com> and <hpttopic.com> domain names is a part of a
pattern of bad faith use and registration.
Respondent has been the respondent in other UDRP proceedings in
which disputed domain names were transferred from Respondent to the respective
complainants in those cases. See Asbury Auto. Group Inc. v. Comdot
Internet Servs. Private Ltd., FA 1178538 (Nat. Arb. Forum June 4, 2008); see also Manpower Inc. v. Comdot Internet
Servs. Private Ltd., FA 1221627 (Nat. Arb. Forum Oct. 13, 2008). The Panel finds this constitutes a pattern of
bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Respondent uses the <hototopic.com> and <hpttopic.com> domain names to resolve to websites featuring hyperlinks to Complainant’s competitors in the retail business. Internet users intending to purchase products from Complainant’s retail stores may instead purchase the same products from a competing retail store because of Respondent’s use of the confusingly similar disputed domain names. The Panel finds Respondent’s use of confusingly similar disputed domain names for this purpose constitutes disruption, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. 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).
The Panel infers Respondent receives click-through fees from
the aforementioned hyperlinks and advertisements. Respondent is using the confusingly similar
disputed domain names to profit from Internet user’s confusion as to
Complainant’s affiliation with the resolving websites and disputed domain
names. The Panel finds Respondent’s use
of the disputed domain names constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See
Furthermore, Respondent has engaged in typosquatting through its use of the <hototopic.com> and <hpttopic.com>, which are common misspellings of Complainant’s HOT TOPIC mark. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes 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).”); Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hototopic.com> and <hpttopic.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 5, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum