Hotwire, Inc. v. Dave Spencer
Claim Number: FA0606000743606
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 Dave Spencer (“Respondent”), 42 Grove St., Boston, MA 02129.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <hotwsire.com> and <hotweire.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.
Sandra J. Franklin 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 <hotwsire.com> and <hotweire.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 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@hotwsire.com and postmaster@hotweire.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 Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hotwsire.com> and <hotweire.com> domain names are confusingly similar to Complainant’s HOTWIRE and HOTWIRE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <hotwsire.com> and <hotweire.com> domain names.
3. Respondent registered and used the <hotwsire.com> and <hotweire.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., operates an online travel agency service. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the HOTWIRE (Reg. No. 2,681,692 issued January 28, 2003) and HOTWIRE.COM (Reg. No. 2,916,629 issued January 4, 2005) marks. Complainant uses the marks in connection with providing Internet users the ability to purchase airline tickets, make hotel and car rental reservations and book vacation packages through its website. Complainant has registered the <hotwire.com> domain in order to operate its website in connection with providing travel agency services online. Complainant has invested significant amounts of money and effort into advertising under its marks on television, radio and the Internet. Complainant operates an affiliate marketing program in which its affiliates are allowed to use its marks on their websites under certain, limited, conditions provided in the Affiliate Programs Terms of Agreement. Under the Agreement, an affiliate may use Complainant’s marks on their website and may provide a hyperlink to Complainant’s website, from which they receive referral fees whenever Internet users click from the affiliate’s website to Complainant’s website and use Complainant’s travel agency services.
Respondent registered the <hotweire.com> domain name on July 20, 2003 and registered the <hotwsire.com> domain name on December 30, 2003. Currently, the disputed domain names resolve to a holding page featuring a generic Internet search engine. Neither domain name resolves to any actual content. On August 13, 2003, after registering the <hotweire.com> domain name but before registering the <hotwsire.com> domain name, Respondent enrolled in Complainant’s affiliate marketing program. At this time, Respondent’s enrollment in the program has been terminated and Respondent is not affiliated with or sponsored by Complainant.
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 rights in the HOTWIRE and
HOTWIRE.COM marks through registration with the USPTO. The Panel finds that such registration is
sufficient to establish rights as required by Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); 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.”).
Respondent’s <hotwsire.com>
and <hotweire.com> domain names are confusingly similar to
Complainant’s HOTWIRE and HOTWIRE.COM marks.
The disputed domain names are common misspellings or typos of
Complainant’s marks. The disputed
domain names insert the letters “s” and “e” into Complainant’s marks. Internet users attempting to type
Complainant’s genuine domain name into a web browser, or trying to type
Complainant’s mark into an Internet search engine could easily misspell
Complainant’s marks in the ways mimicked by the disputed domain names. The Panel finds that inserting additional
letters into Complainant’s marks in order to create a common misspelling of
Complainant’s marks does not overcome the confusing similarity between the
disputed domain names and Complainant’s marks 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); see also 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
nevertheless renders the domain name confusingly similar to the complainant’s
marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion establishes a prima facie case, thus shifting the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names as outlined in Policy ¶ 4(a)(ii). Respondent has the opportunity to submit a Response presenting evidence that it has rights or legitimate interests through using the domain names for a bona fide offering of goods and services, or a legitimate noncommercial or fair use or by being commonly known by the disputed domain names, as outlined in Policy ¶ 4(c). By failing to submit a Response, Respondent has not given the Panel any additional evidence with which to evaluate Respondent’s position, thus the Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks right or legitimate interests. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Respondent’s failure to respond notwithstanding, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
The disputed domain names do not currently resolve to any
content. Complainant’s un-contradicted
assertion is that Respondent has shown no demonstrable preparations to use the
disputed domain names for a bona fide offering of goods or services as
contemplated by Policy ¶ 4(c)(i) since registering them three years ago. Since the disputed domain names do not
resolve to any content, then Respondent is not putting the disputed domain
names to a legitimate noncommercial or fair use as contemplated by Policy ¶
4(c)(iii). Thus, the Panel finds that
Respondent’s nonuse of the disputed domain names is evidence that Respondent
lacks rights or legitimate interests in the disputed domain names. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or develop the site
demonstrates that the respondent had not established any rights or legitimate
interests in the domain name); see
also 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).
Respondent registered the <hotweire.com> domain
name right before joining Complainant’s affiliate marketing program, and
registered the <hotwsire.com> domain name shortly after joining
the program. The timing of Respondent’s
registration makes it 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. While Respondent has not yet acted on this
intention, and the disputed domain names currently do not resolve to any
content, the Panel in Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), held that despite the
respondent’s failure to develop a website in connection with a confusingly
similar domain name, the respondent’s holding of the confusingly similar domain
name constituted a threat hanging over the head of the complainant that
respondent eventually would use the domain name in a way that could be harmful
to the complainant. Thus, even though
Respondent has not yet used the disputed domain names, the Panel finds that the
timing of Respondent’s registration of the disputed domain names coinciding
with Respondent’s joining the affiliate marketing program is further evidence
that Respondent lacks rights or legitimate interests in the disputed domain
names 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).
Furthermore, there is no
evidence that Respondent is commonly known by the <hotwsire.com> or
<hotweire.com> domain names.
Respondent’s WHOIS information identifies Respondent as “Dave
Spencer.” Complainant asserts that
while Respondent was once a member of Complainant’s affiliate marketing
program, Respondent is no longer affiliated or sponsored by Complainant and
Respondent does not now, nor did it ever, have permission to use Complainant’s
marks in a domain name. Furthermore,
the disputed domain names do not spell proper words, making it unlikely that
Respondent would be commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not
commonly known by the disputed domain names and lacks rights or 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
Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb.
6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
While Policy ¶¶ 4(b)(i)-(iv) outline circumstances which shall be evidence of bad faith registration and use of a domain name, those circumstances listed are not exhaustive and are intended to illustrate examples of bad faith registration and use, not to limit bad faith registration and use to that set of circumstances. The Panel may find that other circumstances also serve as evidence of bad faith registration and use pursuant to Policy ¶ 4(b). See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); 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.”).
Currently, the disputed domain names do not resolve to any content. Instead, they resolve to a holding page featuring a generic Internet search engine. There is no available evidence indicating that Respondent has made any demonstrable preparations to use the disputed domain names despite having registered the domain names almost three years ago. The Panel finds that Respondent’s failure to demonstrate any preparations to use the disputed domain names, which are confusingly similar to Complainant’s marks, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); 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).
Complainant has engaged in extensive advertising under the
HOTWIRE and HOTWIRE.COM marks, making those marks quite popular and commonly
known. However, even if Respondent was
unaware of Complainant’s marks, once Respondent enrolled in Complainant’s
affiliate marketing program on August 13, 2003, after registering the <hotweire.com>
domain name, but before registering <hotwsire.com> domain
name, Respondent had actual knowledge of Complainant’s rights in the
marks. The Panel finds that
Respondent’s registration of the disputed domain names, despite knowledge of
Complainant’s rights in the marks, 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 <hotwsire.com> and <hotweire.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 11, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum