Hotwire, Inc v. Joe Spencer
Claim Number: FA0606000741902
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 Spencer (“Respondent”), 72 Washington Ave., Dallas, TX 75226.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hotwirew.com> and <hotwiere.com>, registered with Enom, Inc.
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.
James A. Carmody, Esq., 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 <hotwirew.com> and <hotwiere.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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@hotwirew.com and postmaster@hotwiere.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, 20006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hotwirew.com> and <hotwiere.com> domain names are confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM marks.
2. Respondent does not have any rights or legitimate interests in the <hotwirew.com> and <hotwiere.com> domain names.
3. Respondent registered and used the <hotwirew.com> and <hotwiere.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., is a popular online travel agency. Complainant holds registrations with the United States Patent and Trademark Office for the HOTWIRE (Reg. No. 2,681,692 issued January 28, 2003) and HOTWIRE.COM (Reg. No. 2,916,626 issued January 4, 2005) marks. Complainant uses the registered marks in connection with offering airline tickets, hotel reservations, car rental reservations, vacation packages and cruise bookings to Internet users. Complainant has registered the <hotwire.com> domain name in order to provide its online travel agency services. Complainant operates an affiliate marketing program which allows individuals operating third-party websites to become affiliated with Complainant. Affiliates place advertisements for Complainant on their websites, along with links to Complainant’s website. If Internet users reach Complainant’s website and make reservations via visiting an affiliate’s website, the affiliate receives a commission. Affiliates may not use Complainant’s mark in any other way without written permission from Complainant.
Respondent registered the <hotwiere.com> domain name on July 30, 2003 and registered the <hotwirew.com> domain name on August 6, 2003. On August 13, 2003 Respondent enrolled in Complainant’s affiliate marketing program. Respondent’s involvement in the affiliated marketing program has been terminated and Respondent no longer has an affiliation with or sponsorship from Complainant. Respondent is not actively using either of the disputed domain names. Neither domain name currently resolves to any content, instead both domain names resolve to a holding page with a generic Internet search engine with the messages, “We can’t find ‘www.hotwirew.com’” and “We can’t find ‘www.hotwiere.com’.”
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 through registration with the USPTO. While Respondent registered the <hotwirew.com> domain name on July 10, 2003, before the HOTWIRE.COM mark’s
registration was issued on January 4, 2005, the Panel finds that the filing date of March 11, 2003 is the significant date for the establishment of rights in the mark. Thus, the Panel finds that Complainant has established sufficient rights in both marks to meet the requirements of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <hotwirew.com> and <hotwiere.com>
domain names are confusingly similar to Complainant’s HOTWIRE and
HOTWIRE.COM marks. The disputed domain
names differ from Complainant’s marks by only one letter, an additional letter
“w” and an additional letter “e” respectively.
By adding letters to Complainant’s marks, Respondent has created domain
names that mimic common typos or misspellings of Complainant’s mark. The Panel finds that the addition of an
extra letter to Complainant’s marks does not overcome the confusing similarity
between the disputed domain names and Complainant’s marks 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names constitutes a prima facie case. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to policy ¶ 4(a)(ii). Respondent’s failure to submit a response may be taken as evidence that Respondent lacks right or legitimate interests in the disputed domain names. See 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).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). In the absence of a Response from Respondent, the Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent is not using the <hotwirew.com> and <hotwiere.com> domain names. Neither disputed domain name has any original content. Instead, both disputed domain names resolve to generic Internet search engine webpages with the messages: “We can’t find ‘www.hotwirew.com’” and “We can’t find ‘www.hotwiere.com’.” There is no available evidence to show that Respondent is engaged in any demonstrable preparations to use the disputed domain names. The Panel finds that Respondent’s nonuse of the disputed domain names does not constitute a bona fide offering of goods and services as outlined in Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as outlined in Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
There is no available evidence to show that Respondent is
commonly known by either the <hotwirew.com> or the <hotwiere.com>
domain names. Respondent’s WHOIS
information identifies Respondent as “Joe Spencer,” a name with no obvious
relationship to the disputed domain names.
Complainant asserts that while Respondent was once enrolled in
Complainant’s affiliate marketing program, that relationship has been
terminated and presently Respondent is not affiliated with Complainant in any
way and does not have authorization from Complainant to use Complainant’s mark
in a domain name. Further, it is
difficult to believe that Respondent is commonly known by a misspelled phrase,
which both disputed domain names are.
The Panel finds that Respondent is not commonly known by the disputed
domain names and thus does not have rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding,
LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name “girls gon
wild” or <girlsgonwild.com>).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶¶ 4(b)(i)-(iv) outlines specific circumstances that
may be evidence of bad faith registration and use. However, these circumstances are not all-inclusive and are not
intended to limit the Panel to finding bad faith registration and use only in
these circumstances. Thus, the Panel
may, at its discretion, find that other circumstances also constitute bad faith
registration and use as contemplated by Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home
Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s
conduct does not fall within the ‘particular’ circumstances set out in [¶
4(b)], does not mean that the domain names at issue were not registered in and
are not being used in bad faith.”).
Respondent is not currently using the <hotwirew.com>
or <hotwiere.com> domain names in any way. Both disputed domain names resolve to
generic Internet search engines informing Internet users that neither domain
name can be found. There is no
available evidence indicating that Respondent has made any demonstrable
preparations to use either disputed domain name since registering the names
almost three years ago. In Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May
14, 2001), the panel found that the respondent’s registration of a confusingly
similar domain name combined with the respondent’s failure to use, or prepare
to use, the disputed domain name was evidence of bad faith registration since
the potential for bad faith use of the disputed domain name was a threat
hanging over the head of the complainants.
The Panel finds that similar circumstances exist in this case. Respondent’s failure to use or prepare to
use the confusingly similar disputed domain names makes it difficult to impute
any potential good faith use in the future.
Thus, the Panel finds that Respondent’s failure to use or prepare to use
the disputed domain names is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Mondich v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to
develop its website in a two year period raises the inference of registration
in bad faith).
Further evidence of Respondent’s bad faith registration and use is found in Respondent’s actual knowledge of Complainant’s rights in the HOTWIRE and HOTWIRE.COM marks. Respondent registered the <hotwiere.com> domain name on July 30, 2003 and the <hotwirew.com> domain name on August 6, 2003, and then enrolled in Complainant’s affiliate marketing program on August 13, 2003. Even if Complainant was unaware of Complainant’s rights in the marks before August 13, 2003, despite Complainant’s extensive advertising using the marks, after enrolling in the affiliate marketing program and agreeing specifically to not use Complainant’s marks in any way other than what was intended by the program, Respondent had actual knowledge of Complainant’s rights in the marks. The Panel finds that Respondent’s actual knowledge of Complainant’s rights in the marks is evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotwirew.com> and <hotwiere.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 11, 2006
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