Holdtopic.com

The timeline behind holdtopic.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Hot Topic, Inc. and Hot Topic Merchandising, Inc. v. Alex Song Claim Number: FA2501002136629 PARTIES Complainant is Hot Topic, Inc. and Hot Topic Merchandising, Inc. ("Complainant"), represented by Bryan Fradin, California, USA. Respondent is Alex Song ("Respondent"), China. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <holdtopic.com>, registered with Cloudflare, Inc. 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. Paul M. DeCicco, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on January 23, 2025; Forum received payment on January 23, 2025. On January 24, 2025, Cloudflare, Inc. confirmed by e-mail to Forum that the <holdtopic.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, Inc. 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 January 27, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2025 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@holdtopic.com. Also on January 27, 2025, 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 February 19, 2025, 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS In this proceeding there are two Complainants, Hot Topic, Inc. and Hot Topic Merchandising, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint." The Panel infers from the record that Complainant Hot Topic Merchandising, Inc. is a subsidiary of Hot Topic, Inc. Together they own or licensed the right to use all trademarks relevant to the instant dispute. Additionally, there is no objection to the named Complainants proceeding together as if one. The Panel therefore finds that the two nominal complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they can be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark). PARTIES' CONTENTIONS A. Complainant Complainant contends in part as follows: Complainant is in the retail apparel business. Complainant asserts rights in the HOT TOPIC mark based upon registration of such mark with multiple trademark agencies, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <holdtopic.com> is confusingly similar to Complainant's HOT TOPIC trademark because the core component of the at-issue domain name is the phrase "HOLD TOPIC", which is nearly identical to Complainants' well-known HOT TOPIC trademark, except that the word "HOT" has been replaced with the word "HOLD", which is merely a two-letter difference. Respondent does not have rights or legitimate interests in the <holdtopic.com> domain name. Respondent 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 Registrant is operating an online retail store at the at-issue domain name to sell t-shirts, pants, skirts, and other apparel goods. As such, Respondent provides a service that directly competes with Complainants' online retail store located at www.hottopic.com and is using the domain name to divert internet users to Respondent's own online store. Complainant has never authorized Respondent to register or use Complainant's HOT TOPIC mark as part of any domain name. Nor is there any affiliation, connection or association between Respondent and Complainant. Respondent registered and uses the <holdtopic.com> domain name in bad faith. Given the notoriety of Complainants' HOT TOPIC mark, coupled with the fact that such mark has been registered with trademark offices in both the U.S. and other countries for many years, Respondent had either actual or constructive knowledge of Complainants' mark at the time of registration of the <holdtopic.com> domain name. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 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 <holdtopic.com> to offer apparel for sale online that competes with Complainant's commercial offering. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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"). Identical and/or Confusingly Similar 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 <holdtopic.com> domain name contains a recognizable misspelling of Complainant's HOT TOPIC trademark less its domain name impermissible space, followed by the ".com" top-level domain name. Respondent's overt misspelling of Complainant's trademark in forming the at-issue domain name fails to distinguish the domain name from Complainant's trademark for the purposes of the Policy. Respondent's intention to have its domain name infringe Complainant's trademark is corroborated by Respondent's use of the domain name to direct internet users to a website offering products for sale that directly compete with Complainant's offering. Therefore, the Panel concludes that Respondent's <holdtopic.com> domain name is confusingly similar to Complainant's HOT TOPIC trademark pursuant to Policy ¶ 4(a)(i). See DIRECTV, Inc v. Digi Real Estate Foundation v. Guaranteed Direct Marketing, Inc. / James O'Brien, FA 1439237 (Forum May 14, 2012) (finding "Respondent's <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant's DIRECTV mark pursuant to Policy ¶ 4(a)(i), because Respondent's domain names each contain Complainant's mark in its entirety or are simply a misspelled variation of the DIRECTV mark)." Rights or Legitimate Interests 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 <holdtopic.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 <holdtopic.com>. The WHOIS information for the at-issue domain name ultimately reveals that the domain name's registrant is "Alex Song" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by the <holdtopic.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, FA 1602721 (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 <holdtopic.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, Respondent's lacks rights and lacks legitimate interests in respect of <holdtopic.com>. Registration and Use 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 <holdtopic.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 <holdtopic.com> domain name to address a website offering products that compete with Complainant's offering. Respondent's registration and use of <holdtopic.com> with knowledge of Complainant's rights in HOT TOPIC shows Respondent's bad faith pursuant to Policy ¶4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, 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). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <holdtopic.com> domain name be TRANSFERRED from Respondent to Complainant. Paul M. DeCicco, Panelist Dated: February 20, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.