Hotwire, Inc. v. Joe White
Claim Number: FA0606000741904
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 White (“Respondent”), 12 Postal Road, Las Vegas, NV 89101.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotwirte.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.
Honorable Paul A. Dorf (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 <hotwirte.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 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@hotwirte.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <hotwirte.com> domain name is confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <hotwirte.com> domain name.
3. Respondent registered and used the <hotwirte.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., is a provider of online travel agency services, including the ability to reserve airline tickets, hotel rooms, car rental reservations and whole vacation packages from their website accessed from their registered domain name <hotwire.com>. Complainant holds registrations with the United States Patent and Trademark Office for its HOTWIRE (Reg. No. 2,681,692 issued January 28 2003) and HOTWIRE.COM (Reg. No. 1,916,626 issued January 4, 2005) marks and uses its marks in connection with its online travel agency services. In order to provide its travel agency services, Complainant runs an affiliate marketing program that allows third parties to have limited use of Complainant’s marks on their websites and to provide a hyperlink to Complainant’s website. This allows third-party affiliates to receive a commission fee if someone books a reservation with Complainant after finding Complainant through the hyperlink. Complainant’s Affiliate Terms of Agreement explicitly limits the use of Complainant’s mark to the limited use agreed upon and requires Complainant’s written signature for any additional use. Use of Complainant’s mark in a domain name is specifically prohibited.
Respondent registered the <hotwirte.com> domain name on August 6, 2003. The disputed domain name does not resolve to any content, it appears that Respondent has not developed a website in connection with the domain name. Respondent was a part of Complainant’s affiliate marketing program, signing the program agreement on August 13, 2003, shortly after registering the disputed domain name. Respondent is no longer participating in the affiliate marketing program and is not affiliated with or licensed by Complainant in any way. Respondent never had authorization from Complainant to use its marks in a domain name.
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 right in its HOTWIRE and HOTWIRE.COM marks through registration with the USPTO. Complainant registered its HOTWIRE mark well before Respondent registered the disputed domain name. While Complainant had not been issued its registration for its HOTWIRE.COM mark until after Respondent registered the disputed domain name, Complainant filed its application with the USPTO for the mark on March 11, 2003, before Respondent registered the disputed domain name. The Panel finds that registration with the USPTO is sufficient to establish right in the HOTWIRE mark pursuant to Policy ¶ 4(a)(i). Further, the Panel finds that Complainant’s rights in its HOTWIRE.COM mark began with the filing of the issued mark, and thus Complainant’s rights in the mark were established before Respondent registered the disputed domain name, meeting 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 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 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 <hotwirte.com> domain name is confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM marks. The disputed domain name would be identical to Complainant’s marks but for the addition of the letter “t.” This additional letter creates a common misspelling or typo of Complainant’s marks. The Panel finds that the addition of one letter mimicking a common misspelling of Complainant’s mark does not create a distinctive domain name and thus, the disputed domain name is confusingly similar to Complainant’s marks as contemplated by Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or
legitimate interests in the <hotwirte.com> domain name. Complainant’s assertion constitutes a prima
facie case, shifting the burden to Respondent to demonstrate that it does
have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). In the course of evaluating the available
evidence to ascertain whether or not Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c), the Panel may find that Respondent’s
failure to submit a Response is evidence that Respondent lacks rights of
legitimate interests in the disputed domain name. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent’s <hotwirte.com> domain name does not resolve to any content. Respondent has failed to show any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate and noncommercial use pursuant to Policy ¶ 4(c)(iii). Thus, the Panel finds that in light of Respondent’s lack of demonstrable preparations to use the disputed domain name, Respondent lacks rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(a)(ii). 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 Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); 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).
Complainant asserts, and is not contradicted, that
Respondent is not commonly known by the disputed domain name. Respondent’s WHOIS information identifies
Respondent as “Joe White,” which bears no relationship to the disputed domain
name. Complainant further asserts that
while Respondent was once part of Complainant’s affiliated marketing program,
that relationship has been terminated and currently Respondent is in no way
affiliated with or licensed by Complainant.
Further, even when Respondent was part of the affiliated marketing
program it lacked permission to use Complainant’s mark in a domain name. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name and lacks rights of legitimate
interests 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Further, Respondent registered the disputed domain name
right before joining Complainant’s affiliate marketing program. Despite Respondent’s current passive holding
of the disputed domain name, it is nonetheless possible to impute that
Respondent may have registered the disputed domain name with the intention of
taking advantage of Complainant’s affiliate marketing program by using the
confusingly similar domain name to redirect Internet users through Respondent’s
website to Complainant’s website, generating referral fees for Respondent. Thus, the Panel finds that the timing of
Respondent’s registration of the disputed domain name coinciding with Respondent’s
joining the affiliated marketing program is further evidence that Respondent
lacks rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). 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 Sports
Auth. Mich., Inc. v. Domhold Co., FA 135011 (Nat. Arb. Forum Jan. 9, 2003)
(finding that registering a domain name which differs by one letter from the
complainant’s commercial website, and using that domain name to redirect
Internet consumers to the complainant’s website as a part of the complainant’s
affiliate program is not a bona fide offering of goods or services nor a
noncommercial use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel is not limited to the circumstances outlined in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith. The circumstance of Policy ¶ 4(b) are meant to illustrative, but they are set forth without explicit limitation allowing the Panel the discretion to find other evidence of bad faith registration and use. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); 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 using the <hotwirte.com> domain name in connection with an operational website. The domain name does not currently resolve to a website. The Panel finds that Respondent’s failure to use the disputed domain name, which is confusingly similar to Complainant’s mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) the respondent failed to use the domain name and (2) it is clear that the respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the complainant); 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).
In addition to Complainant’s mark being quite famous due to
extensive television, radio and Internet advertising, Respondent was a member
of Complainant’s affiliated marketing program and thus, had actual knowledge of
Complainant’s rights in its HOTWIRE mark.
While Respondent did register the disputed domain name a few days prior
to joining the affiliated marketing program, it is nonetheless difficult to
believe that Respondent was unaware of Complainant’s rights in its famous mark,
especially after joining the affiliated program. The Panel finds that Respondent’s registration and holding of the
disputed domain name despite actual knowledge of Complainant’s rights in the
mark is evidence of bad faith registration and use 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 <hotwirte.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 9, 2006
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