WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotwire, Inc. v. Thomas Cunningham
Case No. D2015-1418
1. The Parties
Complainant is Hotwire, Inc. of San Francisco, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Thomas Cunningham of Williamsville, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <hotwiremexico.com> (the "Domain Name") is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2015. On August 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 16, 2015.
The Center appointed John C. McElwaine as the sole panelist in this matter on October 9, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a California-based business operating a leading discount travel website at the domain name <hotwire.com>. In particular, Complainant offers online services allowing consumers to research and purchase airline tickets, hotel rooms, rental cars, and vacation packages.
Complainant is the owner of United States trademark registration No. 2672740 for HOTWIRE, registration No. 3804017 for HOTWIRE (with design), registration No. 3428658 for HOTWIRE.COM, registration Nos. 3682150 and 3678696 for HOTWIRE.COM TRAVEL-TICKER, all for use in connection with, among other products and services, online travel services. The earliest of these registrations date back to 2003.
On January 5, 2015, Respondent registered the Domain Name. The Domain Name is being used by Respondent to operate a website offering resort hotel reservation services.
5. Parties' Contentions
Complainant operates a leading discount travel website located at "www.hotwire.com". Complainant asserts that it negotiates deep discounts from its suppliers, including major travel providers, to help travelers book unsold hotel rooms, airline seats, and rental cars. Complainant works with many United States-based and international airlines, including major full-service airlines, top hotels in hundreds of cities and resort destinations in twelve (12) countries throughout North America, Europe, and Asia, including the United States and Mexico. In particular, Complainant explains that it offers discount-priced hotel rooms through an opaque selection process in which the customer can choose the city, area of the city, number of review stars for the hotel, and certain amenities, and then receive a list of discount-priced hotel rooms.
Complainant alleges that "www.hotwire.com". was launched in 2000 and that the mark HOTWIRE has been used, either standing alone or in combination with other word and/or design elements (collectively, the "HOTWIRE Marks"), for its travel-related services since 2000. Accordingly, Complainant claims to have developed strong rights in the HOTWIRE Marks, including in the HOTWIRE.COM name and mark.
Complainant alleges that it has spent over USD 70 million in the last three year period advertising the HOTWIRE Marks throughout the world through online, print, and television advertising campaigns, and email communications. Complainant also claims to use the HOTWIRE Marks for its many social media accounts.
Complainant points out that it also uses the <hotwire.com> domain name and that the "www.hotwire.com" website has received several awards, including (i) Travel Weekly Magellan Award in 2013; (ii) the Web Marketing Association's Best Travel Mobile Website award in 2012; (iii) the highest ranking from 2006 to 2008 in Customer Satisfaction For Independent Travel Web Sites by J.D. Power and Associates, a global marketing information services firm focusing on sectors such as market research and customer satisfaction; and (iv) a top ranking among Hotel Travel Web Sites by the Market Metrix Hospitality Index multiple times between 2006 and 2011. In addition, Complainant asserts that it owns and operates websites located at other domain names that contain the term HOTWIRE that link back to its main "www.hotwire.com" website.
Complainant alleges that Respondent registered the Domain Name <hotwiremexico.com> on or around January 5, 2015, which is after the "www.hotwire.com" website and HOTWIRE Marks are alleged to have become well-known in the United States., and other countries. Complainant further alleges that Respondent has used it for a website that competes directly with Complainant and its "www.hotwire.com" website. In particular, Complainant alleges that Respondent is not just offering travel-related services concerning Mexico, but travel-related services concerning numerous locations for which Complainant also offers services under its HOTWIRE Marks. Respondent's website purports to offer travel-related services concerning such destinations as Orlando (Florida), Las Vegas (Nevada), and the Dominican Republic.
On May 7, 2015, Complainant's counsel attempted to contact Respondent through the mailing address and email address provided by Respondent in his Whois information for the Domain Name. No response was ever received by Complainant.
With respect to the first element of the Policy, Complainant argues that the Domain Name is confusingly similar to Complainant's HOTWIRE Marks, as it consists merely of the word "hotwire" and the addition of the geographically descriptive term "Mexico". Complainant argues that the addition of a geographic term does not avoid confusing similarity of the Domain Name and Complainant's HOTWIRE Marks. Complainant also points out that the generic-Top-Level Domain ("gTLD") ".com" does not impact the overall impression of the dominant part of the Domain Name.
With respect to the second element of the Policy, Complainant contends that Respondent could not have legitimate rights to the Domain Name when it is so well-known and recognizable. In addition, there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating Complainant's HOTWIRE mark or HOTWIRE.COM mark. It is further alleged that Respondent is using the Domain Name to attract Internet users and direct them to Respondent's website that purportedly offers the same type of services offered under the HOTWIRE Marks and through Complainant's "www.hotwire.com" website and that such use is likely to confuse Internet users into believing that Respondent's website is affiliated with or somehow connected to Complainant's "www.hotwire.com" website.
With respect to the third element, Complainant asserts that Respondent has registered and is using the Domain Name in bad faith by leveraging the notoriety of the HOTWIRE Marks to attract users to Respondent's website that competes directly with services offered by Complainant under the HOTWIRE name and mark. It is pointed out that Respondent diverts web traffic that otherwise would be looking for Complainant's HOTWIRE travel-related services and that such use of the Domain Name to divert traffic and/or for profit is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, but an act of bad faith in violation of the Policy.
It is further claimed that Respondent's bad faith is exhibited by the fact that Respondent registered the Domain Name years after Complainant's HOTWIRE mark became well-known, and used the Domain Name for services related to those offered by Complainant for profit. Complainant alleges that Respondent's bad faith is additionally established by the likelihood that Internet users will mistakenly believe the Domain Name is connected to or associated with Complainant. It is alleged that consumers will view the HOTWIRE mark in the Domain Name, and will initially be confused as to the site's association with or sponsorship by Complainant. Complainant also asserts that Respondent may be using the Domain Name for an Internet phishing scheme to learn personal information about others and that such phishing schemes are not legitimate uses and show bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the HOTWIRE Marks, which predate the registration of the Domain Name.
The Domain Name contains Complainant's well-known HOTWIRE trademark in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity (see eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307). In fact, here the Domain Name consists of the HOTWIRE trademark and geographic term "Mexico". Numerous panels have found that the addition of a geographically descriptive word is insufficient to mitigate confusion between a disputed domain name and a complainant's trademark (see e.g., Société des Produits Nestlé S.A. v. Pedro Flores, WIPO Case No. D2014-2220 (finding <nestlemexico.com> to be confusing similar to NESTLE mark); Jaguar Land Rover Limited v. GKG.NET Domain Proxy Service Administrator / Grupo Sanchez Estrada, S.A. de C.V., Alejandra Ruiz, WIPO Case No. D2014-1631 (finding <landrovermexico.com> to be confusingly similar to LAND ROVER mark); Inter Ikea Systems B.V. v. Luis Fernando Kosonoy Michel, WIPO Caso No. D2011-1971 (finding <ikeamexico.com> to be confusingly similar to IKEA mark)).
Also, the addition of the gTLD ".com" to the Domain Name typically does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the Domain Name.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the HOTWIRE Marks in which Complainant has valid trademark rights.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. However, because the nature of the respondent's rights or legitimate interests, if any, in the disputed domain name lies most directly within the respondent's own knowledge, the consensus view is that this burden is a light one for complainant (see Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703). A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name (see Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1); seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant claims that it has not authorized Respondent to use the HOTWIRE Marks in a domain name and there is no evidence in the WhoIs data for the Domain Name that Respondent has been commonly known by the terms "Hotwire Mexico". Complainant denies having permitted or granted any permission or license to Respondent to use the Domain Name.
Under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Although the Respondent did not file a response, the Complaint makes it clear that Respondent has been using the Domain Name in connection with a website that offers the same type of services as those offered by Complainant under the HOTWIRE Marks through Complainant's "www.hotwire.com" website.
Complainant argues that Respondent is not making a bona fide offering of services because Respondent's registration of the Domain Name, together with the presentation of the content on the website is meant to confuse consumers into believing that Respondent is associated with or endorsed by Complainant. Prior UDRP panels have found that using a disputed domain name, together with the presentation of content in a manner calculated to confuse consumers is not a bona fide offering of services (see Six Continents Hotels, Inc. v. Paydues Inc., WIPO Case No. D2012-0756). Similarly, panels have found that use which intentionally trades on the fame and reputation of a complainant's trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy (see Dial-A-Mattress Operating Corp. v. Noname.com, Inc., WIPO Case No. D2001-0240; Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (panel concluded that "use which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy")).
In the Panel's view the facts here establish that Respondent was not making a bona fide use of the Domain Name. There is little doubt that Respondent was aware of Complainant's mark and related services when it registered the Domain Name in January 2015 and sought to commercially benefit from the strength of Complainant's mark. The word "hotwire" is not descriptive of travel services. Respondent uses the Domain Name for a website offering competing services, which does not amount to bona fide use under the Policy.
In addition, the type of information sought by Respondent on the reservation form website page indicates that he may be using the site to gather personal information about people in addition to credit card numbers. This fact calls into question even the commercial legitimacy of the website located at the Domain Name.
In sum, without a response from Respondent providing a credible counter explanation, Respondent's conduct does not, in the view of the Panel, confer a right or legitimate interest under the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inferences from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(a)(iii) of the Policy. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (see Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). Based on Complainant's submissions, which were not rebutted by Respondent, it is alleged that Respondent knew of Complainant's well-known HOTWIRE Mark when registering the Domain Name and is using the Domain Name to intentionally confuse consumers and to trade on Complainant's rights and reputation by offering competing services.
The website displayed at the Domain Name prominently displays the name "www.hotwiremexico.com" and it is used in connection with services that are highly related to Complainant's travel-related services. Of further concern to the Panel is that Respondent's website seeks to collect credit card information in advance of any sale and in an apparently unsecured manner. This fact cuts against any inference that the Domain Name was intended for a legitimate commercial business. Moreover, as discussed above, "hotwire" is a unique word in relation to the travel industry, and without a response by Respondent, there is no credible explanation for Respondent to have chosen to use the word "hotwire" in the Domain Name other than to trade-off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hotwiremexico.com> be transferred to the Complainant.
John C. McElwaine
Date: October 23, 2015