Hotwire, Inc. v. Evanle Wilder
Claim Number: FA0606000741901
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 Evanle Wilder (“Respondent”), 117 Birch Road, Vero Beach, FL, 19098.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <heatwire.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint July 3, 2006.
On July 4, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <heatwire.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has 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@heatwire.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 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <heatwire.com>, is confusingly similar to Complainant’s HOTWIRE mark.
2. Respondent has no rights to or legitimate interests in the <heatwire.com> domain name.
3. Respondent registered and used the <heatwire.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hotwire, Inc., has continuously used the HOTWIRE and HOTWIRE.COM marks in connection with an online travel agency service since June 2000. Complainant operates an extensive website at the <hotwire.com> domain name where Internet users can make airline, hotel and car rental reservations.
Complainant registered the following marks with the United States Patent and Trademark Office (“USPTO”): HOTWIRE (Reg. No. 2,681,692 issued January 28, 2003) and HOTWIRE.COM (Reg. No. 2,916,626 issued January 4, 2005).
Respondent registered the <heatwire.com> domain name August 21, 2003. Respondent’s domain name resolves to a holding page displaying links to various content unrelated to Complainant.
According to Complainant, Respondent was at one time part of its affiliate marketing program, but is no longer related to Complainant in any way. One of the terms of the affiliate agreement prohibits parties from registering domain names containing Complainant’s HOTWIRE mark without first obtaining Complainant’s permission.
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 Complainant to 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 established using extrinsic proof in this proceeding that it has its rights in the HOTWIRE and HOTWIRE.COM marks by registering the marks with the USPTO. See Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The disputed domain name, <heatwire.com>, is
confusingly similar to Complainant’s HOTWIRE.COM mark because the disputed
domain name is pronounced similarly to the terms of Complainant’s mark and the
domain name is also a common misspelling of the mark. In Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum
Feb. 22, 2002), the panel found that the <mapcrest.com> domain name was
confusingly similar to the complainant’s MAP QUEST mark because the terms
“quest” and “crest” were similar in sound.
Likewise, the terms “hot” and “heat” are similar in sound and have
similar spellings. Therefore, the <heatwire.com>
domain name is confusingly similar to Complainant’s HOTWIRE.COM mark pursuant
to Policy ¶ 4(a)(i). See Vivendi
Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct.
31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly
similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in
Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is
phonetically identical and confusingly similar to Complainant's mark.”); see
also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding that the domain names <tdwatergouse.com> and
<dwaterhouse.com> are virtually identical to the complainant’s TD
WATERHOUSE name and mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has protected rights in the
HOTWIRE mark. Complainant alleges that Respondent lacks such rights or
legitimate interests in the <heatwire.com> domain name. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain names. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Document Tech., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <heatwire.com>
domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of
the Policy, any rights or legitimate interests in the domain name”). However, the Panel examines the record to determine if
Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent is not commonly known
by the <heatwire.com> domain name. The WHOIS information lists the registrant as “Evanle Wilder,”
and no other evidence in the record suggests that Respondent is commonly known
by the <heatwire.com> domain name. Even as a former affiliate in Complainant’s marketing program,
Respondent could not register or use a domain name containing Complainant’s
HOTWIRE.COM mark without Complainant’s permission. Consequently, Respondent has not established rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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"); see also 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 Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the
respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name
<deluxeform.com> to redirect users to the complainant’s <deluxeforms.com>
domain name and to receive a commission from the complainant through its
affiliate program).
Respondent is using the <heatwire.com>
domain name to redirect Internet users to a search engine holding page that
displays links to various content unrelated to Complainant. In Black & Decker Corp. v.
Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002), the
respondent was using the <blackandecker.com> domain name, which the panel
held was confusingly similar to the complainant’s BLACK & DECKER mark, to
redirect Internet users to third-party commercial websites. The panel concluded that the respondent
presumably received click-through fees for each consumer it diverted to other
websites, and that such diversion for commercial gain did not constitute a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Id.
In this case, Respondent is also likely earning click-through fees for
diverting consumers to other websites and therefore, Respondent’s use of the
<heatwire.com> domain name does not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of
goods or services as contemplated by the Policy); see also Am. Online, Inc.
v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26,
2003) (“Respondent's registration and use of the <gayaol.com> domain name
with the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds that Complainant satisfied 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 <heatwire.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 7, 2006.
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