WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hottrix LLC v. PrivacyP, Private Registration Case No. D2009-1304 1. The Parties
The Complainant is Hottrix LLC, Las Vegas, Nevada, United States of America, represented by Buchalter Nemer, United States of America.
The Respondents are PrivacyP, Moergestel, Netherlands and Private Registration, Panama City, Panama. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Directi Internet Solutions Pvt Ltd of Mumbai, India, doing business as PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2009. On the same day the Center transmitted a request for registrar verification in connection with the Disputed Domain Name. The registrar's response was to the effect that the Second Respondent was the actual registrant of the Disputed Domain Name and that the First Respondent “is only a service that the Respondant [sic] has enabled for this domain name”.
The Center sent an email communication to the Complainant on October 8, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amendment to the Complaint on October 10, 2009 which added the Second Respondent to the proceedings and modified the language of nine paragraphs of the Complaint to accommodate that change and add some consequential submissions. The Complainant noted expressly that “Throughout the Complaint and the Amended Complaint, the term ‘Respondent' means the [first] Respondent and the [second] Respondent, unless otherwise specified or indicated to mean only one of them”. The Panel adopts the same approach. No Amended Complaint as such was filed but the Panel takes (and below uses) that term to refer to the Complaint as modified by the Complainant's “Amendment to the Complaint” document.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 2, 2009. The Respondent did not submit any response or otherwise participate in the proceedings. The Center formally notified the Respondent's default on November 3, 2009.
The Center appointed Philip N. Argy as the sole panelist in this matter on November 9, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The following salient facts are taken from the Complaint and, in the absence of a Response, stand uncontested.
The Complainant and its “predecessor in interest” have “for many years” been creating, developing, manufacturing and selling unique and innovative magic tricks and illusions for use by professional and amateur magicians and entertainers as well as general consumers.
As mobile technology developed, versions of the Complainant's products were developed for use on portable devices and the associated facility for downloading products was enhanced for this purpose.
The Complainant first began offering its products under the HOTTRIX trademark in early 2000. It registered the domain name on June 28, 1999 and since that time has heavily promoted its products via that website. On December 29, 2007 it also registered the domain name which resolves to a website at which downloads of the Complainant's HOTTRIX branded products can be downloaded.
HOTTRIX was first registered as a trademark in the United States on May 26, 2009 based on an application by the Complainant filed in January 2008.
The Disputed Domain Name was registered on September 12, 2008. It resolves to a landing page that features automatically generated click-through advertising links, many of which resolve to sites that mention the Complainant's products.
On August 24, 2009 the Complainant's representatives contacted the First Respondent drawing to its attention the alleged trademark infringement arising from the use of the Disputed Domain Name. The apparently automated response was to the effect that the Complainant should file a UDRP complaint if it wished to obtain control over the Disputed Domain Name and this proceeding is the consequence of the Complainant's acceptance of the First Respondent's suggestion.
The First Respondent is also the registrant of 38 other domain names, 37 of which have been the subject of adverse decisions under the Policy. 5. Parties' Contentions A. Complainant
Based on the foregoing facts the Complainant contends that the Disputed Domain Name is confusingly similar to its HOTTRIX trademark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. The Complainant bears the onus of making good each of these contentions to the Panel's satisfaction on the balance of probabilities.
In support of these grounds, the Complainant's submissions can be summarised in the following way:
The Complainant has rights in its registered trademark HOTTRIX. The Disputed Domain Name incorporates the whole of that trademark and the additional characters comprise the plain English word “downloads” which enhances rather than detracts from the likelihood of confusion caused by the use of the whole trademark because it precisely describes the commercial activity conducted by the Complainant in respect of its Hottrix products at . To the extent to which that domain name has acquired any trademark status, the Complainant also argues that the Disputed Domain Name, differing only by its addition of the letter “s” to form “downloads” rather than “download”, is also confusingly similar to that trademark.
The Respondent has no relationship with the Complainant and the Complainant has not authorised the Respondent to register or use the Disputed Domain Name. To the best of the Complainant's knowledge, the Respondent has never been known as Hottrix or any similar name.
The Respondent is not making a bona fide or fair use of the trademark in connection with a supply of goods or services. On the contrary, the Respondent registered the Disputed Domain Name with a view to exploiting the Complainant's reputation and goodwill to promote its own commercial interests by using them to drive traffic to a commercial website. Under no circumstances can this intentionally obstructive behaviour be considered bona fide in nature and completely undermines a claim of legitimate interest. Resolving the Disputed Domain Name to a pay-per-click website also undermines a claim of legitimate interest.
The Complainant, relying on paragraph 4(b) of the Policy, and especially subparagraph (iv), says that the use of parking pages is not a legitimate non commercial use. The Respondent is plainly diverting Internet users looking for the Complainant or its products to another website user activity at which generates revenue for the Respondent.
The Complainant being owner of the HOTTRIX trademark, and there being no plausible explanation for the Respondents' conduct, the onus is on the Respondent to make good its defence, if any, under the Policy. B. Respondent
The Respondent did not file a Response nor otherwise contest the allegations made in the Complaint or in the Complainant's pre-proceeding correspondence. 6. Discussion and Findings
The Complainant has the onus of proving that all of the grounds set out in paragraph 4(a) of the Policy are made out. A. Identical or Confusingly Similar
The Panel is satisfied from the evidence that the Complainant is the proprietor of the registered trademark HOTTRIX in the United States. That registration, whilst relatively recent, follows almost a decade of substantive use in trade by the Complainant or its predecessors in interest. Whilst the Panel would have preferred to see more detail of the Complainant's “predecessors in interest”, in the circumstances of no Response having been filed, that does not give rise to any issue in the proceedings. The Disputed Domain Name starts with the Complainant's trademark and follows it with the plain English word “downloads”, which describe exactly what occurs at the Complainant's website to which its domain name resolves.
Whilst the Panel is not prepared to find that the Complainant's domain name has achieved trademark status, it has no hesitation in finding that the Disputed Domain Name is confusingly similar to the Complainant's HOTTRIX trademark. The Panel further notes that the word “downloads” appended to the Complainant's trademark is incapable of conveying to an Internet user that the Disputed Domain Name has no connection with the Complainant; on the contrary, it strengthens any such confusion. B. Rights or Legitimate Interests
The trademark HOTTRIX is not an English word, although it is homonymic for the two English words “hot tricks”, which on one view are descriptive of the Complainant's products. Nevertheless in almost 10 years of continual and prominent use, including in the branding of the highest rating iTunes download offering, the Complainant has established a reputation which underpins its trademark. For almost the entire decade since the Policy commenced, panels have taken the view that to embody such a trademark in a domain name without permission from the owner of the trademark creates a strong prima facie case that a respondent has to meet. As this Panel has previously noted in numerous decisions, the lack of a response to a complaint involving well known trademarks makes it difficult for a panel not to find in a complainant's favour on this element of the Policy. Where, as here, the Disputed Domain Name comprises a complainant's mark with descriptive text that does nothing to dispel the apparent association, the legitimacy of a respondent's interests is correspondingly more difficult to demonstrate and, in this Panel's view, virtually impossible to demonstrate without filing a response.
For the reasons advanced by the Complainant, the Panel comfortably concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and so finds. C. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name long after the Complainant's mark achieved commercial success. The fact that it differs from the Complainant's domain name by the single letter “s” is corroborative of the Respondent's knowledge of the Complainant, its trademark and its business. The Respondent is flagrantly monetising the Complainant's HOTTRIX trademark by typosquatting on the Complainant's domain name.
The use of a privacy protection service by a respondent does not by itself constitute conduct which could, without more, be found to comprise use in bad faith. However, the surrounding circumstances may quickly lead a panel to infer that the privacy protection service is being used for ulterior purposes and not for any bona fide concern about its privacy on the part of the Respondent. Where, as here, the lifting of the privacy shield reveals yet another, second level, privacy shield, the inference is quite compelling that the Respondent is using the Disputed Domain Name in bad faith. Indeed one would have to question such conduct being allowed by an ICANN accredited registrar in this particular case.
It is open to the Panel to infer that both the First Respondent and the Second Respondent are masks for the owner of the website to which the Disputed Domain Name resolves, whose identity has not been revealed in these proceedings.
The Respondent is engaged in classic cybersquatting and evinces total bad faith in every aspect of its registration and use of the Disputed Domain Name. The Panel finds paragraph 4(a)(iii) of the Policy made out. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Dated: November 20, 2009
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