Hotwire, Inc. v. Kevin Hinman c/o Hotwire Inc.
Claim Number: FA0703000930343
Complainant is Hotwire, Inc. (“Complainant”), represented by Deborah
J. Peckham, of Kirkpatrick & Lockhart Preston Gates
Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hotwire.tv>, registered with eNom.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2007.
On March 1, 2007, eNom confirmed by e-mail to the National Arbitration Forum that the <hotwire.tv> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 March 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 29, 2007 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@hotwire.tv by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <hotwire.tv> domain name is identical to Complainant’s HOTWIRE mark.
2. Respondent does not have any rights or legitimate interests in the <hotwire.tv> domain name.
3. Respondent registered and used the <hotwire.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc.,
provides various travel services through its Internet website, located at the
<hotwire.com> domain name.
Complainant has provided travel services, including airline tickets,
hotel accommodations, car rentals, vacation packages, and cruise bookings, via
this website since at least June 2000.
Additionally, Complainant has several trademark registrations with the
United States Patent and Trademark Office (“USPTO”), including a registration for
the HOTWIRE mark (Reg. No. 2,672,740 issued January 7, 2003, filed June 8,
2000).
Respondent registered the <hotwire.tv> domain name on October 5, 2002. Respondent’s disputed domain name resolves to a website that displays various hyperlinks, including websites in direct competition with Complainant, as well as Complainant’s own 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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the HOTWIRE mark. See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); 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).”).
Moreover, the Panel finds that as Complainant’s application was approved by the USPTO, Complainant’s rights in the HOTWIRE mark extend back to the filing date of the application with the USPTO, which in this case is June 8, 2000. See 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); see also 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).
Respondent’s <hotwire.tv>
domain name is identical to Complainant’s HOTWIRE mark under Policy
¶ 4(a)(i) as it contains Complainant’s mark in its entirety and adds only the
country-code top-level domain (“ccTLD”) “.tv.”
Such an addition does not render the disputed domain name sufficiently
distinct from Complainant’s mark as a top-level domain is a requirement of all
domain names. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23,
2001) (“The addition of the country
code top level domain (ccTLD) designation <.tv> does not serve to
distinguish [the disputed domain] names from the complainant’s marks since
‘.tv’ is a common Internet address identifier that is not specifically
associated with Respondent.”); see also Clairol Inc. v. Fux,
DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name
<clairol.tv> is identical to the complainant’s CLAIROL marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially must establish that Respondent lacks rights or legitimate interests with respect to the <hotwire.tv> domain name. However, once Complainant makes a prima facie case, the burden of proof shifts and Respondent must prove that it has 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 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).”).
Respondent is using the disputed domain name to display hyperlinks to various websites, including some in direct competition with Complainant as well as Complainant’s own website. The Panel infers that such use is for Respondent’s own commercial gain by earning click-through fees for the hyperlinks displayed on the <hotwire.tv> domain name. Such use is 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 Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website, which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
With regard to Policy ¶ 4(c)(ii),
while Respondent has listed its WHOIS information as “Kevin Hinman c/o Hotwire Inc.,” there is no other indication in the record
that Respondent is commonly known by the <hotwire.tv> domain
name. Additionally,
Complainant asserts that Respondent is not authorized to use Complainant’s
HOTWIRE mark and that Respondent is not associated with Complainant in any
way. Accordingly, the Panel finds that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the uncontested evidence presented by Complainant,
the Panel infers that Respondent receives click-through fees for the hyperlinks
displayed on the website that resolves from the <hotwire.tv> domain name.
The Panel also finds that Respondent’s disputed domain name is capable
of creating a likelihood of confusion as to the source and affiliation of
Complainant with the disputed domain name and corresponding website. Such commercial benefit from the unauthorized
use of Complainant’s HOTWIRE mark constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding
that the respondent engaged in bad faith registration and use by using a domain
name that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat.
Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
Additionally, the Panel
finds that Respondent registered and is using the disputed domain name in bad
faith under Policy ¶ 4(b)(iii), as the disputed domain
name resolves to a website that contains hyperlinks to various websites,
including some in direct competition with Complainant. Such use constitutes a disruption of
Complainant’s business under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum
July 24, 2006) (finding that the respondent engaged in bad faith registration
and use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
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 <hotwire.tv> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 12, 2007
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