WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hotwire, Inc. v. Jean Lucas, Domcharme Group
Case No. D2015-2242
1. The Parties
The Complainant is Hotwire, Inc. of San Francisco, California, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Jean Lucas, Domcharme Group of Montreal, Canada.
2. The Domain Names and Registrar
The disputed domain names <htwire.com>, <hutwire.com> and <yotwire.com> are registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2015. On December 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names, and the Registrar transmitted by email to the Center on the same day its verification response confirming:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are registered in the name of the Respondent and the contact details are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the Policy applies to the disputed domain names.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 the Respondent of the Complaint, and the proceedings commenced on December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 11, 2016. 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
The Complainant is part of the Expedia travel group. It operates a travel discount website at the domain name <hotwire.com>. The services offered include discount hotel accommodation, car rental, flights and vacation packages. It was launched in 2000 and has been operating under the trademark HOTWIRE and HOTWIRE.COM since then. Its services by reference to those trademarks have been extensively and widely promoted. In the last three years alone, its promotional expenditure exceeded USD 70,000,000. Its promotional activities include a YouTube channel (https://www.youtube.com/user/HotwireTravel), Facebook and Twitter.
The Complaint includes evidence demonstrating that the Complainant has registered trademarks for both HOTWIRE and HOTWIRE.COM in the United States of America and many other countries including Mexico, Canada, the countries of the European Union, Switzerland, the People's Republic of China, Australia and New Zealand. These include:
- United States Registered Trademark No. 2,681,692 for a range of services in International Classes 39 and 42 filed on October 23, 2000 and registered on January 28, 2003;
- United States Registered Trademark No. 3,428,658 for a range of services in International Classes 35, 39 and 43 filed on June 1, 2006 and registered on May 13, 2008;
- Canadian Registered Trademark No. 669974 for a range of services in International Classes 35 and 39 filed on June 16, 2004 and registered on August 15, 2006;
- Community Trademark No. 3003399 for a range of services in International Classes 35, 39 and 43 filed on January 10, 2003 and registered on December 20, 2004.
The Complainant has received a number of industry awards including being identified by JD Power and Associates from consumer surveys as the highest ranking in customer satisfaction in each of 2006, 2007 and 2008. Market Metrix Hospitality Index rankings indicate that success continued in 2009 and subsequent years.
The Complaint includes evidence indicating that the Respondent is currently the holder of at least 824 other domain names. The Complainant contends that most of these are examples of typosquatting. Examples of this allegation include <britiishairways.com>, <fjitsu.com>, <brrookstone.com> and <direxctv.com>. There have been at least eight previous decisions under the Policy in which the Respondent has been found in breach of the Policy.
According to the Registrar, the disputed domain names <htwire.com> and <hutwire.com> were first registered on May 14, 2002. The Complaint alleges, however, that it is likely the Respondent became the registrant only in 2008. The disputed domain name <yotwire.com> was first registered on November 22, 2013.
Before the Complaint was filed, the disputed domain names resolved to pay-per-click websites or click-through portals relating to travel. Until the Complainant complained about the disputed domain names, the Respondent also listed the disputed domain name <yotwire.com> on "www.sedo.com" for sale as a "premium domain".
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for HOTWIRE and HOTWIRE.COM referred to in section 4 above. The Complainant has also established that those trademarks were in use prior to registration from late in 2000. The scale of that use indicates that the Complainant would have common law rights in those trademarks as unregistered trademarks.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain names themselves to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Each disputed domain name differs from the Complainant's HOTWIRE.COM trademark by a simple variation of a single letter: in the case of the disputed domain name <hutwire.com> there is an "u" instead of an "o"; in the case of the disputed domain name <htwire.com>, the "o" has simply been omitted; and in the case of the disputed domain name <yotwire.com>, the "h" has been transposed to a "y". It has long been established under the Policy that such minor changes, sometimes referred to as "typosquatting" qualify as confusingly similar to the trademark in question. See e.g., Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201 (e.g., <playbou.com> and <playbooy.com>) and Barnes & Noble College Bookstores, Inc v. Oleg Techino, WIPO Case No. D2006-1537 (e.g., <bafnesandnoble.com>). There are numerous decisions to this effect including a number against the Respondent.
For the same reasons, each disputed domain name is also confusingly similar to the Complainant's trademark HOTWIRE as it is permissible to disregard the ".com" component of the disputed domain names as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant first points out that it adopted and was using its trademarks well before the disputed domain names were registered and, on its case, many years before the Respondent became the registrant.
Secondly, it is clear that none of the disputed domain names are derived from the Respondent's formal names. Nor is there any evidence that the Respondent is otherwise known by a name from which the disputed domain names could be derived.
Thirdly, bearing in mind that the Respondent is located in Canada, the Respondent does not have any registered trademarks for any of the disputed domain names or "hotwire" in relation to services for directing traffic to travel and hotel accommodation sites through pay-per-click links as the Complainant has registered its trademarks there.
Fourthly, the Complainant states that it has not authorised the Respondent to register or use any of the disputed domain names in question. Nor is the Respondent affiliated with it.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. See e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The term "hotwire" could be considered in some contexts an ordinary English expression or at least a term in common use to refer to starting an engine or motor (typically of a car or other vehicle) without using the key or by otherwise bypassing the ignition system. For present purposes, it is sufficient to refer to the entry in Wikipedia and the Merriam-Webster Dictionary online.
That, however, is not the context in which the Respondent is or has been using the disputed domain names. Rather, the disputed domain names have been used by the Respondent to refer users through pay-per-click links to travel related sites for accommodation, car hire and the like. The term "hotwire" has reference to those services only by reason of its significance as the Complainant's trademark.
Taking that into account, the "typosquatting" nature of the differences between the disputed domain name and the Respondent's large portfolio of other apparently "typosquatted" domain names, the Panel accepts the Complainant's submission that the Respondent registered each of the disputed domain names to "typosquat" on the Complainant's trademarks. Such conduct constitutes registration and use in bad faith, See e.g., Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554 and Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537.
In the case of the disputed domain name <yotwire.com>, an additional reason for finding use in bad faith may be found in the listing of that disputed domain name for sale on "www.sedo.com" as a "premium domain".
Accordingly, the Panel finds that each disputed domain name has been registered and is being used in bad faith under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <htwire.com>, <hutwire.com> and <yotwire.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: January 25, 2016