Hotwire, Inc. v. Jen Rogers
Claim Number: FA0606000743453
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 Jen Rogers (“Respondent”), 21 Postal Street, Dallas, TX 75226.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hotywire.com> and <hoitwire.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 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 <hotywire.com> and <hoitwire.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@hotywire.com and postmaster@hoitwire.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 Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a well-known provider of online travel agency services.
Since June 2000 Complainant has used the HOTWIRE and HOTWIRE.COM marks in connection with offering airline tickets, hotel reservations, car rental reservations, vacation packages and cruise bookings to Internet consumers.
Complainant holds service mark registrations with the United States Patent and Trademark office for the HOTWIRE (Reg. No. 2,681,692 issued January 28, 2003, filed October 23, 2000) and HOTWIRE.COM (Reg. No. 2,916,626 issued January 4, 2005, filed March 11, 2003) marks.
Complainant has used both of its marks in extensive advertising on television, radio and the Internet.
In order to expand its ability to provide online travel agency services, Complainant operates an affiliate marketing program.
Enrollees in the affiliate marketing program are allowed to use Complainant’s marks in specific, limited ways on their third-party websites.
Enrollees may use Complainant’s mark on the third-party website to advertise for Complainant and to provide a hyperlink to Complainant’s website.
If Internet users reach Complainant’s website through a hyperlink on a third-party affiliate’s website, the affiliate receives a commission from any services thereafter provided by Complainant.
The terms of participation in the affiliate marketing program explicitly prohibit any further use of Complainant’s marks, including any misspelling or substantially similar version thereof, without its express written permission, so that Affiliates are not authorized to use Complainant’s marks in a domain name.
Respondent registered the <hoitwire.com> domain name on July 30, 2003 and registered the <hotywire.com> August 6, 2003.
On August 13, 2003 Respondent enrolled in Complainant’s affiliate marketing program.
Respondent’s participation in the affiliate marketing program has since been terminated and Respondent is no longer enrolled in the program.
Respondent is not currently using the disputed domain names, and neither domain name resolves to any content.
Instead, both domain names resolve to messages stating that “We can’t find ‘www.hotywire.com,’” and “We can’t find ‘www.hoitwire.com.’”
Respondent’s <hotywire.com> and <hoitwire.com> domain names are confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM marks.
Respondent does not have any rights or legitimate interests in the <hotywire.com> and <hoitwire.com> domain names.
Respondent registered and uses the <hotywire.com> and <hoitwire.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the same domain names have been registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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. Respondent registered the disputed domain names after Complainant filed for registration of the marks. Previous panels have held, and this panel affirms, that when a mark is registered, rights are established as of the filing date. Thus, the Panel finds that Complainant has established rights in both marks sufficient 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 a complainant’s trademark rights date back to the application’s filing date).
Respondent’s <hotywire.com> and <hoitwire.com>
domain names are confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM
marks. The <hotywire.com> domain
name merely adds the letter “y” to Complainant’s mark and the <hoitwire.com>
domain name merely adds the letter “i” to Complainant’s mark. The addition of an extra letter to
Complainant’s marks mimics a common misspelling or typing error that might be
expected of Internet users. The
introduction of such misspellings does not create distinctive domain
names. Rather the disputed domain names
are thus made confusingly similar to Complainant’s marks. See
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 renders the domain name
confusingly similar to a complainant’s marks); 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 avoid a respondent’s infringement
on a core trademark held by a complainant).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names makes out a prima facie case. Once a prima facie case has been established, the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ (a)(ii). Lacking a Response from Respondent, the Panel has no evidence refuting Complainant’s assertions. Thus, the Panel may view Respondent’s failure to respond as evidence that Respondent does not have rights 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 light of the state of the record in this proceeding, there is no need for the Panel to inquire as to whether Respondent might have been able to establish rights to or legitimate interests in the subject domain names pursuant to Policy ¶ 4(c). It suffices to note that, as appears from Complainant’s allegations, Respondent may once have had rights to or interests in the names in issue, but has since forfeited them, and that Respondent does not deny these assertions.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It appears from the Complaint herein that the circumstances
of this dispute do not fall squarely within the parameters of Policy ¶ 4(b),
the provision customarily consulted to explore the question of a respondent’s
alleged bad faith registration and use of a disputed domain name. However, the
Panel is not constrained by the circumstances outlined in ¶ 4(b) when considering evidence of bad
faith registration and use. This is
because the considerations detailed in ¶ 4(b) are merely illustrative of bad
faith registration and use, and are not intended to limit the scope of an
inquiry into those situations that may constitute bad faith under the
Policy. Thus, the Panel may exercise
discretion to determine whether other circumstances provide evidence of bad
faith registration and use. 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.”
Here it appears that Respondent was aware when it registered the disputed domain names that its agreement with Complainant did not authorize it to employ Complainant’s marks, or any misspelling or substantially similar version thereof, in a domain name, without Complainant’s express written permission, which was never obtained. Respondent does not deny this. Accordingly, we conclude that Respondent both registered and thereafter used Complainant’s marks in its domain names in bad faith.
Our conclusion in this regard is bolstered by the fact that both of Respondent’s domain names incorporate obviously deliberate misspellings of the competing marks. This phenomenon, called typo-squatting, occurs when a respondent has, in creating and using its domain name, deliberately slightly misspelled a complainant’s familiar mark in hopes of diverting unsuspecting Internet users to its website by anticipating their inadvertent typographical errors in entering key words or URL’s in their web browsers. Typo-squatting has been widely held to constitute bad faith registration and use under the Policy. For recent examples, see Amazon.com v. Newman, D2006-0517 (WIPO June 28, 2006), and cases cited therein.
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <hotywire.com> and <hoitwire.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 16, 2006
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