DECISION

 

HotelEngine, Inc. v. Host Master / Njalla Okta LLC

Claim Number: FA2408002111489

 

PARTIES

Complainant is HotelEngine, Inc. ("Complainant"), represented by Evan P. Everist of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Host Master / Njalla Okta LLC ("Respondent"), Saint Kitts and Nevis.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hotelangine.com>, registered with Tucows Domains Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 16, 2024; Forum received payment on August 16, 2024.

 

On August 19, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <hotelangine.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2024 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@hotelangine.com. Also on August 22, 2024, 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 September 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <hotelangine.com> domain name is confusingly similar to Complainant's HOTEL ENGINE mark.

 

2.       Respondent does not have any rights or legitimate interests in the <hotelangine.com> domain name.

 

3.       Respondent registered and uses the <hotelangine.com> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant holds a registration for the HOTEL ENGINE mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,545,476, registered June 3, 2014).

 

Respondent registered the <hotelangine.com> domain name on June 25, 2024, and uses it to pass off as Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the HOTEL ENGINE mark through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <hotelangine.com> domain name uses a slightly misspelled version of Complainant's HOTEL ENGINE mark and adds the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) ("Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD '.com.'  This is insufficient to distinguish the disputed domain names from Complainant's trademark.").  Therefore, the Panel finds that Respondent's <hotelangine.com> domain name is confusingly similar to Complainant's HOTEL ENGINE mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <hotelangine.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the HOTEL ENGINE mark. The WHOIS information for the disputed domain name lists the registrant as "Host Master / Njalla Okta LLC". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also 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)").

 

Complainant argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain name to pass off as Complainant. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Third Point LLC v. boon jeng loo, FA 2024986 (Forum Jan. 20, 2023); Compagnie Générale des Etablissements Michelin v. wangla, wangla,chenxu, chenxu, xuxu, xuxu, zhouxun, 9 zhouxun, wangxu, wangxu, D2024-1249 (WIPO May 28, 2024) (finding that use of a domain name for illegal activity, such as impersonation or passing-off, can never confer rights or legitimate interests on a respondent); see also 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.").  Complainant provides screenshots showing that Respondent uses the disputed domain name to mimic Complainant's login screen. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant demonstrates that Respondent registered and uses the <hotelangine.com> domain name in bad faith to pass off as Complainant and solicit login information. This disrupts Complainant's business and evinces bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See UBS AG v. SMS Vice/Ubs, FA 1866179 (Forum Nov. 4, 2019) (finding bad faith where respondent registered and used the domain <ubscash.com> to disrupt the complainant's business and commercially benefit from the disputed domain name by attempting to impersonate complainant in order to conduct a fraudulent phishing scheme for commercial gain). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).

 

Complainant also claims that Respondent registered the <hotelangine.com> domain name with knowledge of Complainant's rights in the HOTEL ENGINE mark. The Panel agrees, noting that Respondent mimics Complainant's login screen, and finds bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds that Respondent's typosquatting also demonstrates bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 1683305 (Forum Aug. 11, 2016) ("Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name's registrant.").  Accordingly, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).

 

The Panel also finds that Respondent has a history of adverse UDRP decisions showing a general pattern of bad faith. See Provide Com., Inc. v. Jardimar Holdings Corp / Charingola, FA 1502077 (Forum June 27, 2013) ("[T]he existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent's pattern of cybersquatting behavior. The Panel construes Respondent's pattern of such behavior as evidence that Respondent registered the disputed domain name in bad faith as well.").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <hotelangine.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: September 13, 2024