Hotwire, Inc. v. Joe Jackson
Claim Number: FA0606000741932
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 Jackson (“Respondent”), 67 Oak Ave, Omaha, NE 68127.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <hotwiure.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 <hotwiure.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 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 26, 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@hotwiure.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 31, 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 <hotwiure.com> domain name is confusingly similar to Complainant’s HOTWIRE mark.
2. Respondent does not have any rights or legitimate interests in the <hotwiure.com> domain name.
3. Respondent registered and used the <hotwiure.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., offers travel agency services through its website, located at the <hotwire.com> domain name. Since at least as early as 2000, Complainant has been using its HOTWIRE mark in connection with its business. Complainant holds a federal trademark registration for the HOTWIRE mark with the United States Patent and Trademark Office (“USPTO”). Complainant first registered its mark with the USPTO on January 28, 2003 (Reg. No. 2,681,692). As a part of its business, Complainant has established an affiliate marketing program in order to promote its HOTWIRE mark. Under the affiliate marketing program, third parties can obtain a limited license to use the HOTWIRE mark on their own websites to provide a hyperlink to Complainant’s website. A third party participating in the affiliate marketing program receives a commission if an Internet user visits the third-party site, clicks on the licensed hyperlink, and then reserves travel services through Complainant’s website.
Respondent, Joe Jackson, registered the <hotwiure.com> domain name on July 30, 2003. Respondent was previously enrolled in Complainant’s affiliate marketing program, but Respondent’s participation in the program has since been terminated. Respondent is no longer affiliated or related to Complainant in any way, and is not licensed by Complainant or otherwise authorized to use Complainant’s HOTWIRE mark. Respondent’s disputed domain name resolves to a website holding page featuring a search engine.
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 alleges and submits evidence of a federal trademark registration with the USPTO for the HOTWIRE mark. The Panel finds that Complainant’s registration of the HOTWIRE mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Moreover, the Panel finds that Respondent’s <hotwiure.com> domain name is confusingly similar to Complainant’s HOTWIRE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of a misspelling of Complainant’s registered mark, namely the addition of the letter “u” to Complainant’s mark, with the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels have found that a domain name consisting of similar alterations to a complainant’s mark does not avoid the creation of confusing similarity between the domain name and the complainant’s mark. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found 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. Similarly, in Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000), the panel found that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling. Additionally, in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the panel found that the top level of the domain name such as “.net” or “.com” did not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Thus, in the instant case, the Panel finds that Respondent’s <hotwiure.com> domain name is confusingly similar to Complainant’s HOTWIRE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant bears the initial burden of establishing that Respondent lacks rights or legitimate interests with regard to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden then shifts to Respondent to demonstrate that it has rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The evidence on record does not indicate that Respondent is commonly known by the <hotwiure.com> domain name under Policy ¶ 4(c)(ii). Complainant avers that Respondent is no longer affiliated with Complainant, and is not authorized by Complainant to use the HOTWIRE mark or to register domain names incorporating Complainant’s mark. Moreover, the record is devoid of any evidence suggesting that Respondent remains associated with Complainant in any way. Furthermore, Respondent’s WHOIS information fails to demonstrate that Respondent is commonly known by the <hotwiure.com> domain name. Therefore, the Panel finds that the evidence on record does not sufficiently demonstrate that Respondent is commonly known by the <hotwiure.com> domain name pursuant to 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 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).
Furthermore, the Panel finds that Respondent’s <hotwiure.com> domain name resolves to a holding website featuring a search engine. As a result, the Panel concludes that Respondent’s failure to use its website located at the confusingly similar disputed domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names); see also 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).
Additionally, the Panel finds that Respondent’s registration and use of the <hotwiure.com> domain name constitutes typosquatting, as Internet users could easily be diverted to Respondent’s website merely by making a common typing error. Therefore, the Panel finds that Respondent’s typosquatting activity serves as further evidence that Respondent lacks rights or legitimate interests in the <hotwiure.com> domain name pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As previously mentioned, the Panel finds that Respondent has
engaged in typosquatting, registering and using the disputed domain name in
order to divert Internet users to Respondent’s website through a common typing
error. Consequently, the Panel finds
that Respondent’s typosquatting activity of registering and using the <hotwiure.com> domain name serves
as evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Nextel
Commc'ns Inc. v. Geer, FA
477183 (Nat. Arb. Forum Jul. 15, 2005) (finding that the respondent's
registration and use of the <nextell.com> domain name was in bad faith
because the domain name epitomized typosquatting in its purest form); see also Myspace, Inc. v. Kang, FA
672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with
intent to intercept internet users from Complainant's web site, given the fact
that Complainant's website is a popular website and the Disputed Domain Name is
a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad
faith.”).
Moreover, the Panel
finds that Respondent has failed to make any use of the <hotwiure.com> domain name, as
the disputed domain name resolves to a holding page website. Therefore, the Panel finds that Respondent’s
lack of use of the disputed domain name evinces bad faith registration and use
under 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 <hotwiure.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 10, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum