WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotdot, LLC v. o9o+ Corporation
Case No. DBIZ2002-00205
1. The Parties
The Complainant is Hotdot LLC & Hotdot.com, 121 Acorn Court, Scotts Valley, CA 95066, United States of America.
The Respondent is o9o+Corporation, whose address is recorded as 32+Hollywood+Road Central, Hong Kong, Hong Kong, SAR of China. The Respondent’s authorized representative is Dr. James K. Maitland-Smith, Hotdot S.r.l., via Donegal, 3 Cessalto 31040 (TV), Italy.
2. The Domain Name and Registrar
The disputed domain name is <hotdot.biz>. The Registrar with which the disputed domain name is registered is Intercosmos Media Group, Inc., 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America ("Registrar").
3. Procedural History
The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").
The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") on April 28, 2002.
On May 15, 2002, the Center requested the Complainant to amend its Complaint on the basis of several technical deficiencies. An amendment to the Complaint was received on May 16, 2002.
On May 28, 2002, the Center sent a Notification of STOP Complaint and Commencement of Administrative Proceeding to the Respondent advising that any Response must be filed by June 17, 2002.
On June 17, 2002, the Center received a request from the Respondent for extra time in which to file its Response on the basis that there had been a delay in receiving some of the communications. The Center advised that the new deadline for a Response was June 26, 2002.
The Response was received on June 27, 2002.
On July 25, 2002, the Center notified the parties that a single member Panel had been appointed.
In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Center’s assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
The Complainant has been in business for over 10 years. The legal entity Hotdot, LLC was formed in the state of California.
The Complainant does not provide any real information regarding its business activities, although it does state that it licenses the right to use "hotdot" domain names, such as <hotdot.de>, to "other Hotdot partners" in exchange for valuable services.
The Complainant provided evidence that it is the registered proprietor of the trade mark "HOTDOT" in the United States of America in International Class 42 in respect of:
"Computer services, namely consultation in the field of web site design and web application development"
It has also registered the trademark "HOTDOT.COM" in International Class 35, in respect of:
"Providing business marketing consultation service, advertising agency services, namely promoting the goods and services of others through the on-line distribution of promotional materials.."
The Respondent registered the disputed domain name <hotdot.biz> on March 27, 2002. It is a domain name registration company, which registered the disputed domain name on behalf of an Italian company, Hotdot S.r.l. The Response of Hotdot S.r.l. states that the named Respondent is a domain name registration company which administers and is the contact for all Hotdot S.r.l.’s domains. As the domain name was registered by 090 Corporation as agent for the Hotdot S.r.l., the Panel proposes to treat Hotdot S.r.l. as the real and proper Respondent.
5. The Parties’ Contentions
A. The Complainant
On April 5, 2002, the Complainant sent the following email to the Administrative Contact as listed in the "Whois" database:
>> Congratulations on registering the domain hotdot.biz.
>> Please quote us a price to buy this domain if you will
> sell this!
>> We have immediate buyer waiting.
>> Thank you,
>> Media Made Easy
>> Do You Yahoo!?
>> Yahoo! Tax Center - online filing with TurboTax
The reply, dated April 8, 2002, was as follows:
>" From:Admin Office <firstname.lastname@example.org>
>Date: Monday, April 8, 2002 6:52 AM
>Subject: RE: hotdot.biz
>We would be very happy to listen to any offer that you may have.
>Regards, Jim Smith
The reply came not from the email address recorded in the Whois database but rather a different email address. The Complainant took this to mean that the information in the Whois database was inaccurate or incomplete at best or misleading and fraudulent.
The Complainant also notes that the reply was sent to <hotdot.com>, not the yahoo email address used in the original email. The Complainant states that this proves that the Respondent was aware of the use and ownership of the mark "HOTDOT" by someone other than themselves. The Respondent would have had to do a "Whois" search on <hotdot.com> to obtain this email address.
The Complainant states that the Respondent has also registered the domain name <hotdot.it>. It alleges that this demonstrates that the Respondent has engaged in a pattern of conduct of preventing the owners of trademarks from reflecting their marks in corresponding domain names.
B. The Respondent
Hotdot S.r.l. states that it has been trading since August 29, 2000, - long before the registration of the disputed domain name. It states that at the time of registration of the disputed domain name, it was unaware of the existence of the Complainant. This was brought to its attention by o9o+Corporation when the Respondent was asked to fill in a report form in response to the notification of .BIZ Intellectual Property Claim Conflict.
Hotdot S.r.l. states that Hotdot LLC and Hotdot S.r.l. operate on opposite sides of the world – in Venice, Italy and Santa Cruz, United States of America, respectively, Hotdot S.r.l.’s website at <hotdot.it>, is in Italian – its customer base consists solely of Italians who live or work in or around Venice, Italy. The Respondent states that the disputed domain name will be pointed to its website at www.hotdot.it. Hotdot S.r.l.’s main line of business is the maintenance and management of an Internet portal on Venice, Italy (<veniceexplorer.net>) and has nothing to do with the line of services offered by the Complainant (which appear to be computer-related services).
The Respondent states that its logo and style of website are completely different from those of the Complainant. Anybody looking for the Complainant’s website at <hotdot.com> who inadvertently found <hotdot.biz> would immediately realise that the site was in Italian and had nothing to do with the Complainant’s site, services or company.
Hotdot S.r.l. states that it is well-known in Venice, Italy as it manages one of the most successful Internet portals on the city.
Hotdot S.r.l. also notes that the disputed domain name is made up of two very common English words "hot" and "dot", which are regularly used as one word in the daily press. It cites as examples the "Hotdot Internet Awards 2000" featured in the San Francisco Times on October 20, 2000, and in the laser industry. Several articles were annexed to the Response as evidence of this use.
Hotdot S.r.l. acknowledges that it sent an email to the Complainant stating (in relation to the possible sale of the disputed domain name):
"We would be very happy to listen to any offer that you may have."
Hotdot S.r.l. explained this as followings:
"The Respondent replied – as would be expected from anyone acting in the best interest of his business or investors – stating that he would be happy to listen to any offer that the Complainant may have. As with all business assets, domain names have their own intrinsic value, and I am sure that if the Complainant was offered USD$100 million for hotdot.com he may think twice about retiring.
The line ‘we have immediate buyer waiting’ begs enquiry."
Hotdot S.r.l. emphasizes that it did not contact the Complainant to enquire whether the Complainant wished to buy or rent the disputed domain name, but merely replied to an inquiry from the Complainant.
Hotdot S.r.l. also states that there was a further email from the Complainant to Hotdot S.r.l., which was not included in the Complaint. This email read as follows:
We can offer $1,000 for hotdot.biz.
Please use this email, the other account does not allow sending emails due to a relay problem with my ISP.
Media Made Easy"
Hotdot S.r.l. did not reply to this email.
6. Discussion and Panel Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "decide a complaint on the basis of the statements and documents submitted in accordance with the STOP, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical 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 or is being used in bad faith.
Domain name is identical to a trademark or service mark in which the Complainant has rights
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
It is plain from its trademark registration in the United States in class 42 that the Complainant has rights in the trademark HOTDOT. The Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
No rights or legitimate interests in respect of the domain name
Paragraph 4(c) of the STOP sets out certain circumstances that in particular, but without limitation, demonstrate the Respondent’s rights or legitimate interest in the disputed domain names:
(i) that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name; or
(ii) before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(iii) that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has not acquired any trademark or service mark rights.
Hotdot S.r.l., has produced evidence that it has been trading under its name since August 29, 2000. It also operates a portal website at <hotdot.it>.
The Panel therefore finds that the Respondent has established that it has a right or legitimate interest in the disputed domain name pursuant to paragraph 4(c)(iii) above.
Domain name was registered or is being used in bad faith
Under the STOP, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:
i. Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. You have registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
iii.You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
This is not an exhaustive list but provides illustrations of what may amount to bad faith. Again the onus is on the Complainant.
The only evidence which could potentially demonstrate bad faith registration in these circumstances is that Hotdot S.r.l. wrote to the Complainant (in response to an email from the Complainant) stating:
"We would be very happy to listen to any offer that you may have."
The could be construed as indicating that the Respondent intended to sell the disputed domain name to the Complainant. However, the Panel is satisfied that the Respondent’s primary motivation for the registration of the disputed domain name was to point this site to Hotdot S.r.l.’s website at <hotdot.it>. Given the Complainant’s existing use of the domain name <hotdot.it>, it seems clear that the registration of the <.biz> equivalent was genuine. The primary purpose of registering the disputed domain name was not to sell, rent or otherwise transfer the domain name to the Complainant or a competitor of the Complainant.
The Panel therefore finds that the Complainant has failed to establish the disputed domain name was registered in bad faith.
The Panel finds that:
(a) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has demonstrated that it has rights or legitimate interests in respect of the disputed domain name; and
(c) The Complainant has failed to establish the disputed domain name was registered in bad faith.
The Panel therefore finds that the Complainant’s request must be refused.
A H Brown QC
Dated: August 6, 2002