WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hotwire, Inc. v. Ekramy Gaber El Said Ashry

Case No. D2016-1646

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 Ekramy Gaber El Said Ashry of Salalah, Oman.

2. The Domain Names and Registrar

The disputed domain names <hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2016. On August 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. The Center received informal email communications from the Respondent on August 19, 2016 and August 23, 2016.

The Center appointed Edoardo Fano as the sole panelist in this matter on September 15, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Hotwire, Inc., a U.S. affiliate of the company Expedia, Inc., operating in the field of online discount travel services.

The Complainant owns several trademark registrations for HOTWIRE, including:

- United States Trademark Registration No. 2,672,740 HOTWIRE, registered on January 7, 2003;

- United States Trademark Registration No. 3,428,658 HOTWIRE.COM, registered on May 13, 2008;

- European Union Trademark Registration No. 3003399 HOTWIRE, registered on December 20, 2004;

- European Union Trademark Registration No. 5127246 HOTWIRE.COM, registered on July 5, 2007;

The Complainant is widely operating through the Internet with its main international website being “www.hotwire.com”.

The Complainant provided evidence in support of the above.

The disputed domain names <hotwire.space>, <hotwire.one>, <hotwire.website> were registered on October 20, 2015; <hotwire.club> was registered on October 21, 2015; <hotwirebooking.com>, <hotwire-hotels.com>, <hotwire.top> were registered on July 16, 2016; <hotwirereservation.com>, <hotwirereservations.com>, <hotwireclub.com> were registered on July 17, 2016. All the disputed domain names resolve to portals with sponsored links related to online discount travel services.

On July 15, 2016 the Complainant sent a letter to the Respondent requesting the voluntary transfer of one of the disputed domain names, namely <hotwire.club>. The Respondent first offered to sell the disputed domain name <hotwire.club> to the Complainant and then, after the refusal to buy by the latter, declared that he would have advertised online discount travel companies in the relevant website, with the exception of Expedia and the other companies affiliated to Expedia. Immediately after this exchange of correspondence, several other disputed domain names were registered by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website> are confusingly similar to its trademark HOTWIRE.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, nor is the Respondent commonly known by the disputed domain names.

The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant states that it is inconceivable that the Respondent registered the disputed domain names unaware of its activities and its HOTWIRE trademark. In addition, the Complainant asserts that the disputed domain names were registered with the purpose of disrupting the business of the Complainant and attracting Internet users for commercial gain by creating confusion with the Complainant’s trademark.

B. Respondent

The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted informal email communications on August 19, 2016, and August 23, 2016. In his email on August 19, 2016, the Respondent stated the following: “Hello, Would like to inform you that I didn’t use your trademark. Only I put for sale. It is parking domains. I didn’t use any thing bad to hotwire.com.” In his email on August 23, 2016, the Respondent stated he was waiting on approval to renew the domain names.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark HOTWIRE both by registration and acquired reputation and that the disputed domain names <hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website> are confusingly similar to the trademark HOTWIRE.

Regarding the addition of the generic words “booking”, “club”, “hotels” and “reservation(s)” the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003‑0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the words “booking”, “club”, “hotels” and “reservation(s)” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, “.club”, “.one”, “.top”, “.space” and “.website” may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark HOTWIRE in the field of online discount travel services is clearly established and the Panel finds that the Respondent knew that the disputed domain names <hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website> were confusingly similar to the Complainant’s trademarks HOTWIRE and HOTWIRE.COM at the time of registration. This is also confirmed by the fact that the generic words added to the Complainant’s trademark HOTWIRE in the disputed domain names, namely “booking”, “club, “hotels” and “reservation(s)” all refer to the field of activity of the Complainant.

Regarding the use in bad faith, the websites at the disputed domain names are pages with several “pay per click” links, possibly automatically generated, all of them referring to the business activity of the Complainant, that is online travel services.

Therefore, the Panel considers that this use of the websites associated with the disputed domain names must be considered to be in bad faith, on the one hand because of the “pay per click” links, even in the case where they are automatically generated, since they are referring to the business activity of the Complainant and are therefore likely to create confusion. On the other hand Internet users are drawn to the Respondent’s websites due to the confusing similarity of the disputed domain names with the Complainant’s trademarks. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 2.6 and 3.8.

All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to attract, for commercial gain, Internet users to its websites in accordance with paragraph 4(b)(iv) of the Policy.

The answers of the Respondent to the letter of the Complainant, and the registration of several more disputed domain names immediately after that, reinforce the Respondent’s bad faith in both registration and use of the disputed domain names.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

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 <hotwirebooking.com>, <hotwire.club>, <hotwireclub.com>, <hotwire-hotels.com>, <hotwire.one>, <hotwirereservation.com>, <hotwirereservations.com>, <hotwire.space>, <hotwire.top> and <hotwire.website> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: September 20, 2016