Hotwire, Inc. v. Nick Smith
Claim Number: FA0606000743603
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 Nick Smith (“Respondent”), 42 Spring St., Phoenix, AZ 85042.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hoptwire.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.
Honorable Karl V. Fink (Ret.), 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 <hoptwire.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@hoptwire.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 Honorable Karl V. Fink (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 <hoptwire.com> domain name is confusingly similar to Complainant’s HOTWIRE mark.
2. Respondent does not have any rights or legitimate interests in the <hoptwire.com> domain name.
3. Respondent registered and used the <hoptwire.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. Complainant has been using its HOTWIRE mark in connection with its business since at least as early as 2000. 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). Complainant has also established an affiliate marketing program as a means of promoting its HOTWIRE mark, whereby 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, Nick Smith, registered the <hoptwire.com> domain name on August 6, 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 has provided evidence of a federal trademark registration with the USPTO for the HOTWIRE mark. The Panel finds that Complainant’s registration of the mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Furthermore, the Panel concludes that Respondent’s <hoptwire.com> domain name is confusingly similar to Complainant’s HOTWIRE mark for purposes of Policy ¶ 4(a)(i). The disputed domain name consists of a misspelling of Complainant’s registered mark, namely the addition of the letter “p” to Complainant’s mark, with the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels have held that a domain name featuring 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 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. Moreover, 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” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Therefore, the Panel in the present case finds that Respondent’s <hoptwire.com> domain name is confusingly similar to Complainant’s HOTWIRE mark pursuant to 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests with regard to the disputed domain name. However, once Complainant sufficiently 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 shows that Respondent’s <hoptwire.com>
domain name resolves to a holding website featuring a search engine. Consequently, the Panel finds 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 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 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).
The Panel also finds that Respondent is not commonly known by the <hoptwire.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts 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. Furthermore, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <hoptwire.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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of Respondent’s prior participation in
Complainant’s affiliate marketing program and Respondent’s subsequent
registration of the disputed domain name, which features a common misspelling
of Complainant’s mark, the Panel finds that Respondent has engaged in
typosquatting. As a result, the Panel
concludes that Respondent’s typosquatting activity indicates bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See 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.”); see also 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).
Moreover, Respondent
has failed to make any use of the <hoptwire.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 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).
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 <hoptwire.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 11, 2006
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