Hotwire, Inc. v. hotwore.com c/o Leila Mohtaseb
Claim Number: FA0606000741906
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 hotwore.com c/o Leila Mohtaseb (“Respondent”), PO Box 221, Broummana 1204.2020, Lebanon.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotwore.com>, registered with Gandi.
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.
John J. Upchurch 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 3, 2006, Gandi confirmed by e-mail to the National Arbitration Forum that the <hotwore.com> domain name is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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@hotwore.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 John J. Upchurch 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 <hotwore.com> domain name is confusingly similar to Complainant’s HOTWIRE mark.
2. Respondent does not have any rights or legitimate interests in the <hotwore.com> domain name.
3. Respondent registered and used the <hotwore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., is an online provider of travel-related services through its <hotwire.com> domain name and has done so since June of 2000. In association with the provision of these services, Complainant has registered the HOTWIRE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,681,692 issued January 28, 2006; filed October 23, 2000).
Respondent registered the <hotwore.com> domain name on February 26, 2002. Respondent’s disputed domain name does not currently resolve to an active website.
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 asserts rights in the HOTWIRE mark through its registration with the USPTO. Although the USPTO did not approve the registration until January 23, 2003, Complainant filed the trademark registration on October 23, 2000 and panels have long held that rights in a USPTO registered mark date back to the time of filing. As a result, the Panel finds that Complainant has established rights in the HOTWIRE mark pursuant to Policy ¶ 4(a)(i). See 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); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
Complainant contends that Respondent’s <hotwore.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name retains the dominant features of Complainant’s mark but replaces the letter “i” with the letter “o.” The Panel finds that such minor differences fail to properly distinguish a disputed domain name pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <hotwore.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 Respondent’s <hotwore.com>
domain name does not currently resolve to an active website. Moreover, Respondent has failed to set forth
evidence showing that it is in the process of developing a website for use in
connection with 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). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and the respondent is not commonly
known by the domain name); 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).
Moreover, Complainant contends that Respondent is neither
commonly known by the <hotwore.com> domain name nor authorized to
register domain names featuring Complainant’s HOTWIRE mark in any way. In the absence of evidence suggesting
otherwise, the Panel finds that Respondent has not established rights or legitimate
interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has failed to make use
of the <hotwore.com> domain name since its registration in
February of 2002. As a result, the
Panel finds that Respondent has registered the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
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); see also 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).
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 <hotwore.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 15, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page