Hot Topic, Inc. v. Navigation Catalyst Systems, Inc
Claim Number: FA1001001302587
Complainant is Hot Topic, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com>, <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.com>, registered with Basic Fusion, Inc.
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.
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 January 21, 2010, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com>, <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.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 21, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 10, 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@hottopit.com, postmaster@hottoptic.com, postmaster@hotytopic.com, postmaster@nottopic.com, postmaster@torbid.com, postmaster@torrad.com, postmaster@torraid.com, postmaster@torrib.com, postmaster@torrig.com, postmaster@torriq.com, postmaster@tprrid.com, postmaster@trorrid.com and postmaster@ttorrid.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 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." 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 <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com> domain names are confusingly similar to Complainant’s HOT TOPIC mark. Respondent’s <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.com> domain names are confusingly similar to Complainant’s TORRID mark.
2. Respondent does not have any rights or legitimate interests in the <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com>, <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.com> domain names.
3. Respondent registered and used the <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com>, <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hot Topic, Inc.,
holds multiple trademark registrationswith the United States Patent and
Trademark Office (“USPTO”) for the HOT TOPIC mark (e.g., Reg. No. 2,771,871 issued October 7, 2003) in connection with
clothing and accessories. Complainant
also holds multiple trademark registrations with the USPTO for the TORRID mark
(e.g., Reg. No. 2,830,392 issued
April 6, 2004) in connection with retail and online clothing and accessories
services.
Respondent, Navigation
Catalyst Systems, Inc, registered the disputed domain name <hottopit.com>
on September 10, 2008, <hottoptic.com>
on January 30, 2006, <hotytopic.com> on December 18, 2007, <nottopic.com>
on January 27, 2006, <torbid.com> on August 8, 2008, <torrad.com>
on October 11, 2004, <torraid.com> on January 30, 2008, <torrib.com>
on November 11, 2008, <torrig.com> on December 24, 2006, <torriq.com>
on February 2, 2008, <tprrid.com> on January 20, 2006, and <ttorrid.com>
on August 12, 2007. The disputed
domain names resolve to websites featuring generic links to third-party
websites, some of which directly compete with Complainant’s 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 asserts rights in its HOT TOPIC and TORRID marks through its holding of multiple trademark registrations with the 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. 2,830,392 issued April 6, 2004). The Panel finds that Complainant has established rights in the HOT TOPIC and TORRID marks under Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that Respondent’s <hottopit.com>, <nottopic.com>, <hottoptic.com> and
<hotytopic.com> disputed domain names are confusingly similar to
Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i). Respondent’s <hottopit.com> and <nottopic.com>
disputed domain names merely replace a letter in Complainant’s mark with
another and add the generic top-level domain (“gTLD”) “.com.” Respondent’s <hottoptic.com> and
<hotytopic.com> disputed domain names merely add a letter to the
entirety of Complainant’s mark and add the gTLD “.com.” The Panel finds that the replacing a letter
in Complainant’s mark creates a confusing similarity between the disputed
domain names and Complainant’s mark. See
Complainant
argues that Respondent’s <torbid.com>, <torrad.com>, <torrib.com>,
<torrig.com>, <torriq.com>, <tprrid.com>,
<torraid.com>, <trorrid.com> and <ttorrid.com>
domain names are confusingly similar to Complainant’s TORRID mark pursuant
to Policy ¶ 4(a)(i). Respondent’s <torbid.com>,
<torrad.com>, <torrib.com>, <torrig.com>,
<torriq.com> and <tprrid.com> merely replace a letter
in Complainant’s mark with another and add the generic top-level domain
(“gTLD”) “.com.” Respondent’s, <torraid.com>,
<trorrid.com> and <ttorrid.com> merely add a letter
to the entirety of Complainant’s mark and add the gTLD “.com.” The Panel finds that the replacing a letter in Complainant’s
mark creates a confusing similarity between the disputed domain names and
Complainant’s mark. See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also 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.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information lists the registrant as “Navigation Catalyst Systems, Inc.” Complainant alleges that Respondent is not sponsored or legitimately affiliated with Complainant in any way and Complainant has not given Respondent permission to use Complainant’s marks in a domain name. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names were registered between October 11, 2004 and November 11, 2008. The disputed domain names resolve to websites featuring generic links to third-party websites, some of which compete with Complainant’s business. Respondent presumably receives click-through fees from these linked websites. The Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain names pursuant to 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 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)).
Complainant alleges that Respondent is using a typographical
error in the confusingly similar disputed domain names to redirect Internet
users to Respondent’s websites and profiting through the collection of
click-through fees. The Panel agrees and
finds that Respondent has no rights or legitimate interests pursuant to Policy
¶ 4(a)(ii). See Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the disputed domain names to link Internet users to websites featuring
third-party links which are in competition with Complainant constitutes a
disruption of Complainant’s business and 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 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).
The Panel finds that
Respondent is using the disputed domain names to intentionally attract Internet
users and profit through the receipt of click-through fees. Respondent’s use of the disputed domain names
attempts to capitalize on the confusing similarity between Respondent’s
disputed domain names and Complainant’s marks, which is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv). See
As established previously, Respondent has engaged in the practice of typosquatting by intentionally misspelling Complainant’s HOT TOPIC and TORRID marks to take advantage of Internet users seeking Complainant’s goods and services. The Panel finds that typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds that 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 <hottopit.com>, <hottoptic.com>, <hotytopic.com>, <nottopic.com>, <torbid.com>, <torrad.com>, <torraid.com>, <torrib.com>, <torrig.com>, <torriq.com>, <tprrid.com>, <trorrid.com> and <ttorrid.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 4, 2010
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