Expedia, Inc. v. Guneet singh
Claim Number: FA2012001924758
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Guneet singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <myretroexpedia.com>, <theretroexpedia.com>, and <retroexpedian.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2020; the Forum received payment on December 11, 2020.
On December 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <myretroexpedia.com>, <theretroexpedia.com>, and <retroexpedian.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myretroexpedia.com, postmaster@theretroexpedia.com, postmaster@retroexpedian.com. Also on December 16, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant states that it is one of the world’s largest travel companies, owning an extensive portfolio or group of travel brands, encompassing more than 200 travel booking sites in more than 70 countries and more than 150 mobile websites in nearly 70 countries and 35 languages, covering 1,000,000+ properties, 500+ airlines, and 35,000+ activities. Complainant operates one of the world’s largest full-service online travel agencies through its EXPEDIA-branded websites comprised of the <expedia.com> website and localized EXPEDIA websites in more than 40 countries, including India. The EXPEDIA websites provide business and leisure travelers online tools and information to efficiently research, plan, and book travel. The EXPEDIA online network includes Complainant’s award-winning mobile apps and its highly popular social media pages. The EXPEDIA network offers travelers access to the latest technology that delivers airline tickets, lodging, car rentals, rail, cruises, insurance, as well as airport transfers, activities, and tours from hundreds of thousands of suppliers, on both a standalone and package basis. Over the years, Complainant’s commercial success has been tremendous: Complainant sells billions of dollars’ worth of products and services each year. For example, Complainant’s revenues were more than $12,065,000,000 in 2019, more than $11,200,000,000 in 2018, more than $10,059,000,000 in 2017, more than $8,770,000,000 in 2016, and more than $6,670,000,000 in 2015. Complainant has rights in the EXPEDIA mark through its registration of the mark in the United States in 1999.
Complainant alleges that the disputed domain names are identical or confusingly similar to its EXPEDIA mark as they incorporate the mark in its entirety and merely add an additional letter (“n”), and/or additional terms (“retro,” “my,” and/or “the”) and the gTLD “.com”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Respondent been authorized by Complainant to use the EXPEDIA mark. Respondent has not used the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the <retroexpedian.com> domain name to compete with Complainant and the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click advertisements, including to competing services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has displayed a pattern of bad faith registration. Additionally, Respondent uses the <retroexpedian.com> domain name to compete with Complainant and the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click advertisements, including to competing services. And Respondent offered to sell the <myretroexpedia.com> and <theretroexpedia.com> domain names for a price in excess of out-of-pocket costs. Finally, Respondent had actual knowledge of Complainant’s rights to the EXPEDIA mark prior to registering the disputed domain name based on the famous nature of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark EXPEDIA dating back to at least 1999 and uses it to market travel services.
The disputed domain names were registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to websites that either compete directly with Complainant or contain advertising links to services that compete with those of Complainant. Two of the disputed domain names were offered for sale at a price exceeding out-of-pocket costs.
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."
Paragraph 4(a) of the Policy requires that Complainant must 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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names incorporate Complainant’s EXPEDIA mark in its entirety and merely add an additional letter (“n”), and/or additional terms (“retro,” “my,” and/or “the”) and the gTLD “.com.” Adding additional letters, words, and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its EXPEDIA mark. Respondent is not commonly known by the disputed domain names: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain names lists the registrant as “Guneet Singh”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent uses the <retroexpedian.com> domain name to compete with Complainant. Specifically, Complainant provides screenshots of Respondent’s resolving website which advertises and/or offers directly competing travel reservations services under the trade name “Retro Expedian”. Using a confusingly similar domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Therefore, the Panel finds that Respondent fails to use the <retroexpedian.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent uses the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click hyperlinks, including to directly competing travel websites. Using a confusingly similar domain name to host pay-per-click hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent fails to use the <myretroexpedia.com> and <theretroexpedia.com> domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the <retroexpedian.com> domain name to compete with Complainant. Using a confusingly similar domain name to compete with a complainant can demonstrate bad faith per Policy ¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel may find Respondent registered and uses the <retroexpedian.com> domain name in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Also as already noted, Respondent uses the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click hyperlinks, including to directly competing travel websites. This is indicative of bad faith registration and use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and uses the <myretroexpedia.com> and <theretroexpedia.com> domain names in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Further, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant’s EXPEDIA mark. Registration of multiple domain names containing a complainant’s mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley, FA1805001789701 (Forum July 2, 2018) (finding that Respondent engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s famous CATERPILLAR mark); see also Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally Respondent offered to sell the <myretroexpedia.com> and <theretroexpedia.com> domain names for a price in excess of out-of-pocket costs. This is indicative of bad faith registration and use. See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Thus the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myretroexpedia.com>, <theretroexpedia.com> and <retroexpedian.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 11, 2021
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