HotelEngine, Inc. v. Bo Wu
Claim Number: FA2302002032003
Complainant is HotelEngine, Inc. (“Complainant”), USA, represented by Evan P. Everist of Dorsey & Whitney LLP, Minnesota. Respondent is Bo Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hotelengine-member.com> and <hotelengine-agency.com>, registered with Cosmotown, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on February 15, 2023; Forum received payment on February 15, 2023.
On February 15, 2023, Cosmotown, Inc. confirmed by e-mail to Forum that the <hotelengine-member.com> and <hotelengine-agency.com> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hotelengine-member.com, postmaster@hotelengine-agency.com. Also on February 20, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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
i) Complainant is a Colorado-based hospitality services company. Complainant has rights in the HOTEL ENGINE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,545,476 registered June 3, 2014). The disputed domain names are confusingly similar because they wholly incorporate the HOTEL ENGINE mark differing only with the addition of generic terms and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the HOTEL ENGINE mark in any way. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme.
iii) Respondent
registered and uses the disputed domain names in bad faith. Respondent uses the
disputed domain names to disrupt Complainant’s business by passing off as
Complainant in furtherance of a phishing scheme. Furthermore, Respondent had
actual knowledge of Complainant’s rights in the HOTEL ENGINE mark prior to
registration of the disputed domain names.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names <hotelengine-member.com> and <hotelengine-agency.com> were registered on November 20, 2022 and December 24, 2022 respectively.
2. Complainant has established rights in the HOTEL ENGINE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,545,476 registered June 3, 2014).
3. The disputed domain names’ resolving websites feature Complainant’s registered HE stylized mark, identical font stylization and coloration, and general look and feel (including an identical background graphic).
4. The disputed domain names’ resolving websites indicate a false copyright notice implying that the site is operated by Complainant.
5. Complainant has received multiple reports from customers that the disputed domain names are being used to pose as an employment recruiter for Complainant and to request payment from unwitting victims.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the HOTEL ENGINE mark through its registration with the USPTO (e.g., Reg. No. 4,545,476 registered June 3, 2014). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has established rights in the HOTEL ENGINE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names <hotelengine-member.com> and <hotelengine-agency.com> are confusingly similar to Complainant’s HOTEL ENGINE mark because they incorporate wholly Complainant’s mark and are merely followed by the term “member” in the name <hotelengine-member.com> and the term “agency” in the name <hotelengine-agency.com> also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the HOTEL ENGINE mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The unmasked WHOIS information associated with the disputed domain names lists the registrant as “Bo Wu.” Nothing in the records suggests that Respondent was given rights to use the HOTEL ENGINE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names and was not granted use rights in Complainant’s mark per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Respondent uses the disputed domain names to pass off as Complainant in furtherance of a phishing scheme. Using a disputed domain name to pass off as a Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the disputed domains’ resolving websites as compared to Complainant’s legitimate website. Complainant also provides evidence of complaints made by users who have been victims of attempted phishing. The Panel therefore finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent uses the disputed domain names to pass itself off as Complainant and conduct a phishing scheme to Internet users. The disputed domain names direct users to websites that clearly impersonate and attempt to pass off on Complainant’ rights. The sites even feature a blatant false copyright notice strongly implying that the site is operated by Complainant. Complainant has received multiple reports from customers that the disputed domain names are being used to pose as an employment recruiter for Complainant and to request payment from unwitting victims. Using an infringing domain name to pass off as a trademark holder in furtherance of a phishing scheme may demonstrate bad faith disruption of Complainant’s business, as well as attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides screenshots of the disputed domain names’ resolving websites which feature Complainant’s registered HE stylized mark, identical font stylization and coloration, and general look and feel (including an identical background graphic). The sites also conclude with the following false copyright notice: “Copyright © 2022 Hotelengine. All Rights Reserved.” Complainant also provides evidence of complaints made by users who have been victims of attempted phishing. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the HOTEL ENGINE mark at the time of registering the disputed domain names. To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant through the disputed domain names and through use of its logo on the resolving websites. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant’s rights in the HOTEL ENGINE mark at the time of its registering the disputed domain names, and finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotelengine-member.com>, <hotelengine-agency.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 21, 2023
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