Hot Topic, Inc. v. Telecom Tech Corp.
Claim Number: FA1001001301529
Complainant is Hot Topic, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hototpic.com>, registered with Bargin Register, Inc.
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 5, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 6, 2010.
On January 18, 2010, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <hototpic.com> domain name is registered with Bargin Register, Inc. and that Respondent is the current registrant of the name. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, 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 20, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 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@hototpic.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 18, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hototpic.com> domain name is confusingly similar to Complainant’s HOT TOPIC mark.
2. Respondent does not have any rights or legitimate interests in the <hototpic.com> domain name.
3. Respondent registered and used the <hototpic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hot Topic, Inc., is a mall and web based
specialty retailer that operates 681 stores in the
Respondent registered the <hototpic.com>
domain name
on April 17, 2002. Respondent’s disputed
domain name resolves to a website displaying third-party links to websites
offering similar products in competition with Complainant’s business.
Complainant offers evidence that Respondent has a history of registering domain names infringing upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. . See Allen Tate Co. Inc. v. Telecom Tech Corp., FA 1278777 (Nat. Arb. Forum Sept. 29, 2009); see also American Airlines, Inc. v. Telecom Tech Corp., FA 1224015 (Nat. Arb. Forum Oct. 29, 2008).
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 has obtained multiple trademark 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 has established rights in the HOT TOPIC
mark for purposes of Policy ¶ 4(a)(i) through its trademark 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 Morgan Stanley v. Fitz-James, FA
571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the
evidence that the complainant had registered its mark with national trademark
authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”). Complainant also argues that the trademark
registration need not be within the same country as the Respondent. The Panel finds that the trademark
registration does not need to be registered in the same country as of the
Respondent under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding
that it is irrelevant whether the complainant has registered its trademark in
the country of the respondent’s residence).
Complainant argues that the disputed domain name <hototpic.com> is confusingly similar to
the HOT TOPIC mark and is only different in the following ways:
(1)
deletes the space between the words; (2) is a common misspelling, switching the
letters ‘t’ and ‘o’; and (3) contains a generic top level domain name (“gTLD”). Respondent’s disputed domain name is a common
misspelling of Complainant’s mark. The
Panel finds that a disputed domain name that contains a misspelling by
transposing letters of the Complainant’s mark is not enough to distinguish it
from the mark and thereby creates a confusing similarity between the disputed
domain name and Complainant’s mark. See 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”); see also Delta Corporate
Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005)
(concluding that the <dleta.com> domain name was confusingly similar to
the complainant’s DELTA mark). The Panel
also finds that omitting the space between words of the mark does not make the
disputed domain name distinguishable from the mark. 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.”); see
also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb.
Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant
in determining the similarity of a domain name and a mark because punctuation
and spaces are not reproducible in a domain name.”). The Panel also finds that
the addition of a gTLD is not relevant in distinguishing the disputed domain
name with the Complainant’s mark for purposes of Policy ¶ 4(a)(i). See
Trip Network Inc. v. Alvieara, FA 914943 (Nat. Arb. Forum March 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Jerry
Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these
allegations. Once the Complainant has
produced a prima facie case the
burden shifts to the Respondent to show that they do have a right or legitimate
interest in the disputed domain name. 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 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)). The Panel finds that Complainant
has established a prima facie
case. Due to Respondent’s failure to
respond to these proceedings, the Panel may assume Respondent does not have any
right or legitimate interests in the disputed domain name. See 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); see also Bank of
Am. Corp. v. McCall, FA 135012 (Nat. Arb.
Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”).
Complainant further contends that Respondent is neither
commonly known by the disputed domain name, nor has Complainant given
Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain
name is Telecom Tech Corp., and does not indicate that Respondent is commonly
known by the disputed domain name and there is no further evidence on record to
show that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative
evidence of Respondent being commonly known by the disputed domain name,
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name); see also 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).
Respondent’s
disputed domain name resolves to a website that offers click-through links and
advertisements for Complainant’s competitors in the specialty retail
field. The Panel finds that Respondent’s
use of the disputed name to redirect Internet users to Complainant’s competitors,
presumably for financial gain, 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).
See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain
name in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using a common misspelling of the
Complainant’s HOT TOPIC mark. The Panel
finds that Respondent’s engagement in what is commonly referred to as
typosquatting is evidence that the Respondent lacks any rights or legitimate
interest in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has been respondent in other UDRP proceedings, wherein the disputed domain
names were ordered to be transferred from Respondent to the respective
complainants in those cases. See Allen Tate Co. Inc. v. Telecom Tech
Corp., FA 1278777 (Nat. Arb. Forum Sept. 29, 2009); see also American Airlines, Inc. v. Telecom Tech Corp., FA 1224015
(Nat. Arb. Forum Oct. 29, 2008). The
Panel finds that Respondent has therefore engaged in a pattern of bad faith
registration and use pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark,
D2004-1028 (WIPO Jan. 22, 2005 (finding that
“Respondent has registered the disputed domain name, <aria.com>, to
prevent Complainant from registering it” and taking notice of another Policy
proceeding against the respondent to find that “this is part of a pattern of
such registrations”); see also Armstrong
Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names that infringe upon others’ famous and registered trademarks).
Complainant argues that Respondent’s use of the disputed
domain name creates a disruption in Complainant’s business pursuant to Policy ¶
4(b)(iii). Complainant claims that by
displaying links to competitors of Complainant on its website, Respondent is
effectively disrupting the business of Complainant and that this use is
evidence of bad faith registration and use according to Policy ¶
4(a)(iii). The Panel finds that Respondent’s
use of the disputed domain name is disruption of Complainant’s business
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 St. Lawrence Univ. v. Nextnet Tech,
FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by
redirecting Internet users seeking information on Complainant’s educational
institution to competing websites, Respondent has engaged in bad faith
registration and use pursuant to Policy ¶
4(b)(iii).”).
Complainant contends that Respondent is using the disputed
domain name to intentionally divert Internet users to Respondent’s website and
that the website displays third-party links to competing websites and
businesses. In this case the Panel
presumes that Respondent is collecting click-through fees and is attempting to
profit by creating a likelihood of confusion between the Complainant’s HOT
TOPIC mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Allianz
of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also Bank
of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding
that the respondent’s previous use of the <bankofamericanfork.com> domain
name to maintain a web directory was evidence of bad faith because the
respondent presumably commercially benefited by receiving click-through fees
for diverting Internet users to unrelated third-party websites).
Complainant further contends that Respondent’s use of typosquatting to divert Internet users attempting to get to Complainant’s website to competitive websites that resolve from the disputed domain name is further evidence of registration and use in bad faith under Policy ¶ 4(a)(iii). The Panel finds that Respondent’s use of typosquatting does constitute bad faith 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent did register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <hototpic.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 3, 2010
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