Expedia, Inc. v. claudia mathis / Expedia Transport / Expedia funding group
Claim Number: FA2104001941668
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is claudia mathis / Expedia Transport / Expedia funding group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> (collectively “Domain Names”) registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2021; the Forum received payment on April 15, 2021.
On April 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.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 April 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@expediafinancial.com, postmaster@expediafundinggroup.com, postmaster@expediacreditrepair.com. Also on April 21, 2021, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest travel companies with an extensive portfolio of travel brands. Complainant has rights in the EXPEDIA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,220,719, registered Jan. 26, 1999). Respondent’s <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> domain names are confusingly similar to Complainant’s EXPEDIA mark. Respondent incorporates the EXPEDIA mark in its entirety and adds generic terms like “financial,” “funding group,” or “credit repair” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> domain names as Respondent is not commonly known by the Domain Names nor did Complainant authorize Respondent to use the EXPEDIA mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell the Domain Names.
Respondent registered and used the <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> domain names in bad faith as Respondent attempts to attract internet users for commercially gain by creating a likelihood of confusion with Complainant’s EXPEDIA mark and resolving to webpages that compete with Complainant. Respondent engages in a pattern of bad faith by registering multiple domain names. Respondent has also attempted to sell the Domain Names. Lastly, Respondent had actual knowledge of Complainant’s rights in the EXPEDIA mark due to its longstanding use of the mark in commerce.
B. Respondent
Respondent failed to submit a formal Response in this proceeding, however between April 22, 2021 and April 24, 2021 Respondent sent 3 e-mails to the Forum the relevant portions being extracted below.
“We do not dispute this ...
Question... why do they have the right to deman a domain I have owned for more than 5 years without asking to purchase it?“
“Please let me know how to dispute this and challenge this”
“We are going to contact an attorney and fight this. I have owned these 3 companies with tax id's for years. I have paid taxes and do have telephone number associated with Expedia Financial Consultants, Expedia Funding group. Clear back to 2013. Expedia Transport was a domain name I purchased with a business I sold in 2015. My finance companies are in fact operational with bank accounts.
I am not going to be bullied by Expedia Travel services as they are not in this sector. I am going to hire an attorney at this point.”
The Panel notes that Respondent has provided no information in support of the e-mailed statements above and contrary to the first e-mail, the <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> domain names were registered on November 30, 2020, June 14, 2020, and January 29, 2021 respectively.
Complainant holds trademark rights for the EXPEDIA mark. Each of the Domain Names is confusingly similar to Complainant’s EXPEDIA mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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 formal 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”).
Complainant has rights in the EXPEDIA mark based upon registration of the mark with the USPTO (Reg. No. 2,220,719, registered Jan. 26, 1999). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the EXPEDIA mark as they each incorporate the entire EXPEDIA mark while adding the generic terms “financial,” “funding group,” or “credit repair” and the “.com” generic top-level domain (“gTLD”). Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the EXPEDIA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “claudia mathis / Expedia Transport / Expedia funding group” as registrant of record. However there is no affirmative evidence that the Respondent is actually commonly known under those names as opposed to simply registering the Domain Names under a name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”) Given the lack of evidence that the Respondent trades under any name corresponding to the Domain Names or has rights to a corresponding business name, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by any of the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names resolve to websites (“Respondent’s Websites”) advertising financial services under the EXPEDIA Mark. However the evidence in the Complaint is that these websites are not connected to actual functioning businesses as the respective websites refer to telephone numbers that are non-functional, addresses that are clearly unrelated to a financial services businesses and website pages that are blank or contain placeholder and filler text. Notwithstanding the assertions in Respondent’s letters that the Domain Names are used by a functioning business, in the absence of any supporting evidence about Respondent or its business (noting that the Respondent had and has chosen not to exercise the opportunity to provide additional evidence), the Panel cannot conclude that the Respondent uses or has sought to use the Domain Names in respect of any business at all, let alone made a bona fide offering of goods and services or a legitimate non-commercial use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (between June 14, 2020 and January 29, 2021), Respondent had actual knowledge of Complainant’s EXPEDIA mark. The EXPEDIA mark is a well-known and coined mark with no meaning in the English language. It is highly unlikely that an entity would register three domain names containing the EXPEDIA mark in the absence of awareness of the EXPEDIA marks. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s EXPEDIA mark for commercial gain by using the confusingly similar Domain Names to resolve to websites that purport to pass themselves off as Complainant (or as an entity associated with Complainant) and sell financial services. Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
In the alternative the Panel finds that Respondent has registered the three Doman Names, each of which contains the well-known EXPEDIA mark, failed to use them in connection with a functioning business, and following the receipt of the cease and desist letter from Complainant, offered to sell the Domain Names for a sum well in excess of any out-of-pocket costs incurred. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). In the present case, given the nature of the Domain Names, the manner in which they have been used, and the lack of evidence to support the alternative explanation provided by Respondent, the Panel also finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediafinancial.com>, <expediafundinggroup.com>, and <expediacreditrepair.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 14, 2021
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