HotCam, Ltd. v. RNIS Telecommunication inc.
Claim Number: FA0907001273417
PARTIES
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”).
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@hotcam.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
Clearing
FINDINGS
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.
DISCUSSION
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).
DECISION
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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