WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hotwire, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Tamara Jones

Case No. D2019-2067

1. The Parties

The Complainant is Hotwire, Inc., United States of America (“United States”)., represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tamara Jones, United States.

2. The Domain Name and Registrar

The disputed domain name <hotwireapp.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2019. On August 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 28, 2019.

The Center verified that the Complaint together with the amended 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 September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2019.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 7, 2019. 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 a corporation organized under the law of the state of Delaware, United States, with a principal place of business in San Francisco, California, United States. Now functioning as a part of the Expedia Group, the Complainant or its predecessor have operated a travel website at “www.hotwire.com” (the “Complainant’s website”) since 2000 offering discounted airline tickets, hotel rooms, rental cars, and vacation packages, using the trademark HOTWIRE, either alone or in combination with other word or design elements (collectively, the “HOTWIRE Marks”).

The Complainant also uses other domain names incorporating the HOTWIRE mark to redirect users to the Complainant’s website, including <hotwire.org>, <hotwirecom.com>, <hotwire-travel.com>, <hotwire.com.mx>, <hotwire.co.uk>, and <hotwire.com.pt>, as well as linked mobile apps and social media sites. The Complaint attaches evidence showing that the Complainant’s website has received more than two million visits per month in 2019 and is ranked number 925 among the most visited websites in the United States. The Complainant’s website has received several awards, including a 2014 award from the Web Marketing Association for outstanding achievement in mobile development.

The Complainant holds numerous trademark registrations in the United States and other countries for the HOTWIRE Marks. These include the following United States registrations:

According to the Registrar, the Domain Name was registered on June 4, 2019 in the name of the Respondent is domain privacy service, which has expressed no interest in the Domain Name in this proceeding. Following notice of the dispute, the Registrar identified the registrant as the Respondent Ms. Jones, with no listed organization, of Castleton on Hudson, New York, United States. Ms. Jones is referred to hereafter as the “Respondent”. Mail sent by the Center to the postal address for the Respondent in the WhoIs directory was returned as undeliverable. The Panel notes that online maps and directories of Castleton on Hudson (a town near Albany, New York) do not list the street shown by the Registrar as Ms. Jones’ postal address, and the telephone number given for her includes an area code for Arizona, not New York. The Respondent has not replied to emails sent to the email address provided to the Registrar.

The Complaint attaches a screenshot of the website to which the Domain Name resolved in July 2019 (the “Respondent’s website”). It was headed with an exact copy of the Complainant’s registered HOTWIRE design logo, on a page offering searches and deals for airline flights, hotel reservations, car rentals, and vacation cruises. It is not evident on this record whether these were fraudulent offers or whether they were simply linked to commercial offers from the Complainant’s competitors. The Complainant denies any connection with the Respondent, and the Respondent’s website did not disclose the actual identity of its operator. The “About us” page and similar details copied or linked to content on the Complainant’s website rather than revealing the Respondent’s details.

At the time of this Decision, the Domain Name does not resolve to an active website but only presents an error message indicating that the “Web server is down”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its HOTWIRE Marks, incorporating the mark HOTWIRE in its entirety and adding the descriptive term “app”, an abbreviation for “mobile application” that does not dispel confusion and actually heightens it because of the Complainant’s own mobile offerings.

The Respondent has no evident rights or legitimate interests in the Domain Name, according to the Complainant, as the HOTWIRE mark is well-known in the online travel industry and the Complainant has not authorized its use by the Respondent for exactly this purpose. Copying the Complainant’s logo and deliberately creating confusion as to source or affiliation cannot be considered a use of the Domain Name in connection with a bona fide commercial offering. This misdirection of Internet users for commercial gain must also be deemed bad faith under the Policy, reinforced by the effort to obscure the identity of the registrant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

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

Under paragraph 15(a) of the Rules, “A Panel shall 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”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Domain Name incorporates the distinctive portion of the Complainant’s HOTWIRE Marks in its entirety and adds a descriptive term, “app”, that in no way avoids confusing similarity, as it refers so generally to software or mobile applications. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7.

The Panel finds, therefore, that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

Here, the Complainant makes a prima facie case with evidence of trademark rights, confusing similarity, lack of permissive use, copying the Complainant’s logo on the Respondent’s website, and offering either fraudulent or competing commercial services on that website associated with the Domain Name. The Respondent has not come forward with evidence of rights or legitimate interests, and none are evident on this record or from a perusal of the Respondent’s website. Accordingly, the Panel concludes that the Complainant has established the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

This paragraph is apt in these circumstances. The Complainant’s HOTWIRE Marks are well-known, and the Respondent was clearly aware of them. The Respondent copied the Complainant’s logo and mimicked its online travel website, apparently in an effort to profit from Internet users mistaking the Respondent’s website for one affiliated with the Complainant. Whether this was an instance of unfair competition or simply a fraudulent, short-term scam, it must certainly be considered bad faith registration and use within the meaning of the Policy.

While there are legitimate reasons to use a domain privacy service, the Respondent’s additional measures to hide its identity and avoid accountability lend further support to the inference of bad faith. The registration details appear to be inaccurate; the Respondent never replied to the Complainant or the Center; and the Respondent’s website did not identify the website operator but instead falsely used information from the Complainant’s website.

The Panel concludes that the Complainant has established the third element of the Complaint.

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 Domain Name, <hotwireapp.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: October 15, 2019