Hot Topic, Inc. and Hot Topic Merchandising, Inc. v. Shavana McGowan / Hot Topic Fashions
Claim Number: FA2212002023897
Complainant is Hot Topic, Inc. and Hot Topic Merchandising, Inc. (“Complainant”), represented by Mikaela Grumbach of 18305 E. San Jose Ave., California. Respondent is Shavana McGowan / Hot Topic Fashions (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hottopicfashions.com>, registered with IONOS SE.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on December 13, 2022; Forum received payment on December 13, 2022.
On December 15, 2022, IONOS SE confirmed by e-mail to Forum that the <hottopicfashions.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 16, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2023 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@hottopicfashions.com. Also on December 16, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Hot Topic, Inc. and Hot Topic Merchandising, Inc. is in the retail apparel business.
Complainant asserts rights in the HOT TOPIC mark based upon registration with multiple trademark agencies, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <hottopicfashions.com> is confusingly similar to Complainant’s HOT TOPIC trademark because it incorporates the mark in its entirety and adds the generic or descriptive word “FASHIONS”, as well as the generic top-level domain name (“gTLD”) “.com” to form.
Respondent does not have rights or legitimate interests in the <hottopicfashions.com> domain name. Respondent is not licensed or authorized to use Complainant’s HOT TOPIC mark and is not commonly known by the at-issue domain name. Respondent also does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers competing apparel products for sale.
Respondent registered and uses the <hottopicfashions.com> domain name in bad faith. Respondent had actual or constructive knowledge of Complainant’s rights in the HOT TOPIC mark.
Complainant shows by way of an Additional Submission that Complainant’s trademark was the subject of a recent UDRP decision where Complainant prevailed.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in HOT TOPIC.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the HOT TOPIC trademark.
Respondent’s uses the at-issue domain name to offer competing apparel products for sale.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration, as well as multiple registrations with government trademark registrars worldwide, for the HOT TOPIC mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <hottopicfashions.com> domain name contains Complainant’s HOT TOPIC trademark less its domain name impermissible space, followed the descriptive term “fashions” and with all followed by the “.com” top-level domain name. The differences between Respondent’s domain name and Complainant’s trademark fail to distinguish <hottopicfashions.com> from Complainant’s HOT TOPIC mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <hottopicfashions.com> domain name is confusingly similar to Complainant’s HOT TOPIC trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <hottopicfashions.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or legitimate interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately reveals that the domain name’s registrant is “Shavana McGowan / Hot Topic Fashions” and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <hottopicfashions.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information).
Respondent uses the at-issue domain name to address a website offering apparel for sale that competes with Complainant’s merchandise. Such use of <hottopicfashions.com> indicates neither a bona fide offering of goods or services, nor any legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) or (c)(iii) respectively. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <hottopicfashions.com> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent had actual knowledge of Complainant’s rights in the HOT TOPIC mark at the time it registered <hottopicfashions.com>as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s HOT TOPIC trademark and from Respondent’s use of the confusingly similar <hottopicfashions.com> domain name to address a website offering products that compete with Complainant’s offering. Respondent’s registration and use of <hottopicfashions.com> with knowledge of Complainant’s rights in HOT TOPIC shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hottopicfashions.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 11, 2023
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