Hotwire, Inc. v. Cierra Burke
Claim Number: FA0606000741895
Complainant is Hotwire, Inc. (“Complainant”), represented by Sanjiv D. Sarwate of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is Cierra Burke (“Respondent”), 108 Church Avenue, Cedar Rapids, IA, 39858.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotwiew.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint July 3, 2006.
On July 4, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hotwiew.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has 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 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 25, 2006, 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@hotwiew.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <hotwiew.com>, is confusingly similar to Complainant’s HOTWIRE mark.
2. Respondent has no rights to or legitimate interests in the <hotwiew.com> domain name.
3. Respondent registered and used the <hotwiew.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., provides Internet users with travel agency services, such as airline ticket reservations, hotel accommodations, car rentals, vacation packages, and cruise bookings. Complainant registered the HOTWIRE and HOTWIRE.COM marks with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,681,692 and 2,916,626; issued Jan. 28, 2003 and Jan. 4, 2005, respectively) for use in connection with travel agency services. Complainant has invested substantial sums of money advertising and promoting their marks through various forms of media, including the development of an affiliate program in which participants obtain a limited license to Complainant’s marks for use in a hyperlink to Complainant’s website. For each Internet user directed from the participants website to Complainant’s website, Complainant pays a commission to the participant.
Respondent registered the disputed <hotwiew.com> domain name August 13, 2003. Upon registration of the disputed domain name, Respondent enrolled in Complainant’s affiliate program, which has since been terminated. Respondent’s <hotwiew.com> domain name currently resolves to a website that features a search engine and links to both Complainant’s website and websites unrelated to Complainant.
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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this proceeding that it has legal rights in the HOTWIRE mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that Respondent’s <hotwiew.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name retains the dominant features of Complainant’s HOTWIRE mark but omits the letter “r” and adds the letter “w” on the end. The errors introduced by Respondent into the disputed domain name represent similar keystrokes on the keyboard as does the letter combination of letters “re” only shifted one key to the left. As a result, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s domain name as the deliberate introduction of errors is insufficient to properly distinguish a domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal rights in the mark included in the disputed domain name but for misspelling. Complainant urges that Respondent lacks such rights or legitimate interests in the <hotwiew.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant asserts that at one time
Respondent was using the <hotwiew.com> domain name in connection
with Complainant’s affiliate program in which Respondent would collect
commissions for each Internet user that connected to Complainant’s official
website via Respondent’s website. The
Panel finds that Respondent’s use of a confusingly similar domain name to
generate commissions from Complainant is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(a)(i) nor a legitimate non-commercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Sports Auth. Mich., Inc. v. Jablome, FA 124861 (Nat. Arb. Forum Nov. 4, 2002) (by signing up for the complainant’s
affiliate program upon registering the domain name, which was a misspelling of
the complainant’s mark, the respondent intended to use the domain name to
generate profit at the complainant’s expense, thereby evidencing a lack of
rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and
(iii)); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the
respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name
<deluxeform.com> to redirect users to the complainant’s
<deluxeforms.com> domain name and to receive a commission from the
complainant through its affiliate program).
Moreover,
Complainant contends that Respondent is currently using the disputed domain
name to operate a website that features a search engine as well as links to
both Complainant’s website and the websites of other unrelated parties. The Panel infers that Respondent’s use
generates revenues through referral fees from third-party websites. As a result, Respondent’s current use of the
disputed domain name is not in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum
Mar. 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use of the disputed domain names); see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register names featuring Complainant’s mark or any variation of it. Although Respondent at one point was part of Complainant’s affiliate program, only limited rights were granted to Respondent and those rights did not include the rights to register domain names featuring Complainant’s mark in any significant manner. The Panel finds that Respondent has not shown that it has rights to or legitimate interests in the <hotwiew.com> domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the <hotwiew.com> domain name in combination with its participation in Complainant’s affiliate program is evidence of bad faith registration and use. Respondent is presumably using the confusingly similar domain name for its own commercial benefit through the collection of referral fees as a result of Internet user’s inadvertent connection to Respondent’s domain name. In Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002), the panel held that “[r]edirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.” Similarly in Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002), the panel found that the respondent registered and used the <deluxeform.com> domain name in bad faith by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program. This Panel holds that Respondent’s registration of the disputed domain name and subsequent participation in Complainant’s affiliate program is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent is currently using the <hotwiew.com> domain name to resolve to a website that features links to third-party websites unrelated to Complainant’s business for the purpose of collecting referral-fees for each misdirected user. Such use is likely to cause confusion as to Complainant’s sponsorship of or affiliation with the disputed domain name and result links. The Panel finds that Respondent has continued to use the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) despite Complainant’s termination of Respondent from its affiliate program. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotwiew.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 15, 2006.
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