Expedia, Inc. v. Syed Shahzad, Syed Group
Claim Number: FA2208002006797
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly, of Kelly IP, LLP, District of Columbia, USA. Respondent is Syed Shahzad, Syed Group (“Respondent”), represented by Muhammad Tahir Muslim, UAE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediancenter.com>, registered with NameCheap, Inc.
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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2022; the Forum received payment on August 2, 2022.
On August 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <expediancenter.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2022, 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@expediancenter.com. Also on August 4, 2022, 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.
A timely Response was received and determined to be complete on August 24, 2022.
On August 26, 2022, Complainant filed a Reply to the Response.
On August 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Expedia, Inc. is one of the world’s largest travel companies. Expedia owns an extensive portfolio or group of travel brands, including EXPEDIA, TRAVELOCITY, HOTELS.COM, HOTWIRE, ORBITZ, and VRBO that encompass more than 200 travel booking sites in more than 70 countries covering more than 3 million properties, over 500 airlines, and more than 220,000 activities.
Expedia owns the trademark EXPEDIA, which is the subject of numerous U.S. trademark registrations, including U.S. Registration Nos. 2224559; 2220719; 2610290; and 3919339, and its rights in the mark date back to at least as early as 1996. Expedia also owns several trademark registrations for its EXPEDIA mark in the United Arab Emirates (UAE), where Respondent apparently is located. Expedia typically uses an airplane logo in association with the EXPEDIA mark.
Expedia 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. Expedia also offers goods and services under EXPEDIA-formative marks and names, including EXPEDIA LOCAL EXPERT, EXPEDIA CRUISES, and EXPEDIA PARTNER SOLUTIONS.
Expedia has enjoyed great commercial success. Its revenues were approximately $8.5 billion in 2021, $5.2 billion in 2020, and $12 billion in 2019. Expedia extensively promotes its businesses and services on its social media pages.
Expedia contends that the disputed domain name, <expediancenter.com>, is confusingly similar to its EXPEDIA trademark because it contains Complainant’s mark in its entirety and non-distinguishing elements, namely, an additional letter “n,” a generic and/or descriptive term – “center” – and the gTLD “.com.”
Expedia further argues that Respondent has no rights or legitimate interests in the domain name. Expedia points out that Respondent uses the disputed domain name in connection with a commercial website advertising and/or offering directly competing travel-related services for destinations in the Middle East, Europe, and Asia. Expedia further notes that Respondent’s website, in addition to its use of the trade name “Expedian Center,” also includes an airplane logo that mimics Expedia’s airplane logo.
Expedia contends that Respondent’s use of the disputed domain name in connection with a website that offers services that compete with those offered by Expedia does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Expedia also asserts that Respondent is not and has not been commonly known by the disputed domain name.
With respect to the issue of bad faith registration and use, Complainant maintains that the requisite bad faith is manifested under ¶4(b)(iv) of the Policy because Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s EXPEDIA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website and the directly competing services advertised or offered therein.
Complainant also contends that Respondent’s registration and use of the disputed domain name constitute bad faith under ¶ 4(b)(iii) of the Policy because Respondent disrupts Complainant’s business by using the domain name to advertise/offer competing travel-related services, by competing with Complainant for Internet traffic, and by interfering with Complainant’s ability to control use of its EXPEDIA trademark.
Finally, Complainant asserts, “it is indisputable that Respondent registered the Domain Name in bad faith with knowledge of Complainant’s rights in its EXPEDIA mark given the international fame of Complainant’s mark particularly in the field of travel, Respondent’s selection and registration of the Domain Name that contains Complainant’s EXPEDIA mark in its entirety, and Respondent’s use of the Domain Name for directly competing travel services.”
B. Respondent
Respondent contends that the complaint is “tottaly (sic) baseless.” Respondent notes that it purchased the disputed domain name in November 2020, and subsequently renewed it.
Respondent asserts that the disputed domain name sounds completely different from the EXPEDIA mark and that when it registered the domain name it did not have any clue about Complainant since Complainant did not have any office or branches or any promotional material in either Pakistan or the UAE. Respondent contends he has a complete right to use the disputed domain name in these countries as Complainant has no stake in these countries and Respondent only does business in these countries, mostly serving Moslem pilgrims. “So no legal proceeding can be done against this allegation because of only the imagination of complainant.” According to Respondent, since Complainant does not have stake in our market, “so it clearly shows the bad faith of complainant.”
B. Additional Submissions
In its Reply, Complainant accuses Respondent of falsely claiming that it operates in different geographic regions than Expedia. Expedia asserts that it is a global company that offers travel services around the world, including in the UAE and Pakistan. This can be confirmed simply in a few minutes and keystrokes, Complainant explains.
Complainant also notes that it owns a trademark registration for its EXPEDIA mark in the UAE, as well as trademark registrations in Pakistan for its EXPEDIA mark.
Complainant labels as “frivolous” Respondent’s assertion that the disputed domain name is not confusingly similar to the EXPEDIA trademark because they sound different. “There is no requirement under the UDRP that a disputed domain name must have the same pronunciation for the complainant to prevail.”
Complainant labels as “baseless” Respondent’s suggestion that its purchase of the disputed domain name establishes a legitimate interest.
“Finally, Respondent does not offer any evidence that its registration and use of the Domain Name … do not constitute bad faith under the UDRP. Rather, Respondent simply makes self-serving claims that it has used the Domain Name for a short period of time prior to Expedia’s filing of its Complaint.”
FINDINGS
The Panel finds that: (1) the disputed domain name <expediancenter.com> is confusingly similar to the EXPEDIA trademark; (2) Complainant has rights to the EXPEDIA trademark; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the disputed domain name was registered and is being used 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.
The Panel finds that the disputed domain name is confusingly similar to the EXPEDIA trademark. As Complainant points out and as noted above, the disputed domain name, <expediancenter.com>, contains Complainant’s mark in its entirety adding only non-distinguishing elements, namely, an additional letter “n,” a generic and/or descriptive term – “center” – and the gTLD “.com.” The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark under the UDRP Policy ¶ 4(a)(i). 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; in such case, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Furthermore, the addition of a letter to a mark does not obviate confusing similarity. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
Even if the Panel was to accept Respondent’s argument that the disputed domain name sounds different from Complainant’s EXPEDIA mark, such would not avoid a finding of confusing similarity. As noted in the WIPO Overview of WIPO Views on Selected UDRP Questions, Third Edition, §1.6, the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” In the Panel’s view, for the reasons set forth above, the EXPEDIA mark is recognizable within the <expediancenter.com> domain name.
The Panel further determines that Complainant has rights in the EXPEDIA trademark. The evidence establishes Complainant’s ownership of trademark registrations for the EXPEDIA trademark from the United States Patent and Trademark Office (USPTO), as well as from the relevant authorities from the UAE and Pakistan. The registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under UDRP Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The evidence supports a determination that Respondent uses the disputed domain name in connection with a website that offers services in competition with Complainant. Respondent’s website, for example, invites Internet users to “Plan Your Travel Now! Search Cheap Hotels and Events.”
The use of a disputed domain name to offer competing goods or services is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under paragraph 4(c)(i) or (iii) of the Policy. 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.”). See, also, Expedia v. Kapil Giri, FA 1290186 (Forum Nov. 30, 2009) (“Respondent is using the disputed domain name to offer travel services that are in direct competition with Complainant. The Panel finds that Respondent’s use of nepalexpedia.com domain name is 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).”).
There also is no evidence that Respondent is commonly known by the disputed domain name or that Complainant has licensed or otherwise authorized Respondent to use the disputed domain name.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
Respondent asserts that the requisite bad faith does not exist in this case because the parties operate in different markets and because Complainant does not have any offices, branches, or promotional material in either Pakistan or the UAE. However, the evidence includes EXPEDIA web pages promoting UAE hotels, travel packages and flights. Moreover, while Respondent may only do business in the UAE and Pakistan, screen shots from the <expediancenter.com> website indicate that Respondent offers travel-related services to many European destinations, including London, Italy, Germany, and Switzerland, as well as Vietnam, destinations to which Complainant’s services are also directed. The fact that Complainant may not have offices or branches in either the UAE or Pakistan does not excuse Respondent’s registration and use of the disputed domain name given the longstanding and worldwide use of the EXPEDIA mark – a use that predates Respondent’s ownership of the disputed domain name by over 20 years. The Panel finds that it is more likely than not that Respondent registered and is using the disputed domain name with knowledge of Complainant’s rights in the EXPEDIA mark. Such knowledge supports a finding of bad faith under the UDRP. See, for example, Expedia v. Gary, FA1979816 (Forum Feb. 8,2022) (“Respondent’s actual knowledge is evident from the notoriety of Complainant’s well-known EXPEDIA trademark and from Respondent’s incorporation of Complainant’s entire EXPEDIA mark into Respondent’s confusingly similar domain name.”)
Based on the above, the Panel finds that Respondent registered the disputed domain name for the purpose of disrupting the business of a competitor, within the meaning of ¶ 4(b)(iii) of the Policy. The Panel further finds that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of the products and/or services found at such site, within the meaning of ¶ 4(b)(iv) of the Policy.
Having stablished all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediancenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels Panelist
Dated: September 6, 2022
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