Expedia, Inc. v. W. Michi
Claim Number: FA0706001021106
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediwa.com> and <efxpedia.com>, registered with Go Daddy Software, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2007.
On June 27, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediwa.com> and <efxpedia.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <expediwa.com> and <efxpedia.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expediwa.com> and <efxpedia.com> domain names.
3. Respondent registered and used the <expediwa.com> and <efxpedia.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., has
continuously used the EXPEDIA mark in connection with a wide variety of goods
and services, including but not limited to, providing travel information and
access to airline, hotel and rental car reservations. Complainant has registered the EXPEDIA mark
in numerous jurisdictions, including the
domain names, which were both registered on March 7, 2006, resolve to web
pages that display links to Expedia’s homepage, <expedia.com>, as well as
to Expedia’s direct competitors. Respondent’s
names also employ pop-up advertisements and contain links which state, “Inquire
About This Domain.” These links direct
Internet users to
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established its rights in the EXPEDIA mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
The <expediwa.com> and <efxpedia.com> domain names are a close misspelling of Complainant’s EXPEDIA mark. The disputed domain names add either the letter “w” or the letter “f” to the EXPEDIA mark. These additional letters do not negate the confusing similarity between the disputed domain names and Complainant’s mark. Additionally, the top-level domain “.com” is irrelevant, because a top-level domain is required of all domain names. As a result, the Panel finds that the <expediwa.com> and <efxpedia.com> domain names are confusingly similar to the EXPEDIA mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights or legitimate interests in the domain names at issue. Once Complainant has established a prima facie case, the burden of proof shifts to the Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has made a prima facie case sufficient to shift the burden to Respondent. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that a mere assertion by the complainant that the respondent has no right or legitimate interest may be sufficient enough to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has not submitted a Response to the Complaint. The Panel thus presumes that Respondent has no rights or legitimate interests in the <expediwa.com> and <efxpedia.com> domain names, but will still consider all the availible evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent is not known by Complainant’s mark and has not acquired any trademark or service mark rights in Complainant’s mark. Further, Respondent had not sought, nor has Complainant granted, a license or permission to Respondent to use Complainant’s mark in any way. Therefore, the Panel finds that Respondent is not commonly known by either the <expediwa.com> or <efxpedia.com> domain names pursuant to Policy 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent also is not using the <expediwa.com> and <efxpedia.com> domain names in connection with a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ (4)(c)(iii). Respondent does not have a business or offer any services on the websites that resolve from the disputed domain names. Instead, Respondent’s disputed domain names feature pop-up advertisments and attempt to disrupt Complainant’s business by using the disputed domain names to redirect Internet users to various third-party websites, some of which offer services that compete with Complainant. As a result, the Panel finds that Respondent’s use of pop-up advertisments, and diversion of Internet users to websites in direct competition with Complainant, does not establish any rights or legitimate interests pursuant to either Policy ¶ 4(c)(i) or Policy ¶ (4)(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user).
Respondent solicits offers to sell the
<expediwa.com> and <efxpedia.com> domain
names through links which state: “Inquire About This Domain.” These links direct Internet users to
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <expediwa.com> and <efxpedia.com> domain names resolve to web pages that display links to third-party websites that offer the same or similar services as Complainant’s mark. These third-party websites are in direct competition with Complainant’s mark. Such use of the disputed domain names constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (holding that a disruption of the business of a competitor only occurs if the goods or services being offered can compete with or rival the goods or services offered by the trademark owner); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Moreover, there is a minor degree of difference between Respondent’s <expediwa.com> and <efxpedia.com> domain names and Complainant’s mark. This, coupled with the Respondent’s use of the disputed domain names to display links to third-party competitors of Complainant indicates further that Respondent registered the disputed domain names presumably to commercially benefit from the misleading domain names by receiving click-through-fees. Consequently, the Panel finds that Respondent has acted in bad faith registration and use pursuant to and Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent’s domain names <expediwa.com>
also contain links that direct Internet users to
The Panel concludes that 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 <expediwa.com> and <efxpedia.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 1, 2007
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