Hotwire, Inc. v. Joe Williams
Claim Number: FA0606000741896
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 Joe Williams (“Respondent”), 75 West Main Avenue, Boston, MA 02129.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <hortwire.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On July 4, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hortwire.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 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@hortwire.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 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <hortwire.com> domain name is confusingly similar to Complainant’s HOTWIRE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <hortwire.com> domain name.
3. Respondent registered and used the <hortwire.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., has continuously used the HOTWIRE and HOTWIRE.COM marks in connection with online travel reservation services since June 2000. Complainant, through its website at the <hotwire.com> domain name, offers Internet users the opportunity to reserve airline tickets, hotel rooms, car rentals and many other travel-related goods and services online.
Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for variations of the HOTWIRE mark (HOTWIRE: Reg. No. 2,681,692 issued January 28, 2003; HOTWIRE.COM: Reg. No. 2,916,626 issued January 4, 2005).
Respondent registered the <hortwire.com> domain name on July 30, 2003. Respondent is not currently using the disputed domain name.
According to Complainant, Respondent was at one time a member of its affiliate marketing program, in which Internet users may display a link to Complainant’s <hotwire.com> domain name on their own website and earn a commission each time someone clicks on this link and uses Complainant’s website. One of the terms of the affiliate agreement prohibits parties from registering domain names containing variations of Complainant’s HOTWIRE mark without first obtaining Complainant’s permission.
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 draw such inferences it 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 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.
Complainant has established rights in the HOTWIRE and HOTWIRE.COM marks by registering the marks with the USPTO. See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
Because Respondent’s <hortwire.com> domain name differs from Complainant’s HOTWIRE.COM mark by one letter, the disputed domain name is confusingly similar to the mark. In Google, Inc. v. Goog LR, FA 98462 (Nat. Arb. Forum Sept. 28, 2001), the panel found the respondent’s <googlr.com> domain name confusingly similar to Complainant’s GOOGLE mark because the only difference between the domain name and the mark was the last letter. Likewise, the addition of the letter “r” to Complainant’s HOTWIRE.COM mark in the <hortwire.com> domain name does not sufficiently distinguish the domain name from the mark but instead renders it confusingly similar pursuant to Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum Jun. 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <hortwire.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <hortwire.com> domain name. See
Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By
its default, Respondent has not contested the allegation . . . that the
Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no
other reason for the Respondent having registered <bancodobrasil.com> but
the presumably known existence of the Complainant's mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Joe Williams,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <hortwire.com> domain name. Consequently, Respondent has not established rights or legitimate interests in the <hortwire.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Furthermore, Respondent is not using and has not made
demonstrable preparations to use the <hortwire.com>
domain name for any purpose. In VICORP Rests., Inc. v. Paradigm Techs. Inc.,
FA 702527 (Nat. Arb. Forum Jun. 21,
2006), where the respondent registered the <bakerssquare.com> domain
name, the panel found that the respondent’s failure to use the disputed domain
name for several years was not 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). Because Respondent has also not used the
disputed domain name for several years, Respondent is not using the <hortwire.com> domain name in
connection with 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). See LFP, Inc. v. B & J Props., FA
109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing
and effectively “sit on his rights” for an extended period of time when that
the respondent might be capable of doing otherwise).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <hortwire.com>
domain name does not resolve to any content.
The Panel finds that Respondent’s non-use of the disputed domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Disney Enters. Inc. v Meyers, FA 697818 (Nat. Arb. Forum Jun. 26, 2006)
(holding that the non-use of a disputed domain name for several years
constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use
of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith).
The Panel concludes that Complainant has 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 <hortwire.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 16, 2006
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