Expedia, Inc. v. Expedia Inc
Claim Number: FA0707001026464
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 <rxpedia.com>, <exprdia.com>, and <expedoa.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2007.
On July 2, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 July 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 30, 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 postmaster@rxpedia.com, postmaster@exprdia.com, and postmaster@expedoa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names.
3. Respondent registered and used the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is a well-known corporation that offers a variety of travel and entertainment goods and services over the Internet. Complainant has conducted business under the EXPEDIA mark since 1996 and offers its services from its website that resolves from the <expedia.com> domain name. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark (Reg. No. 2,220,719 issued January 26, 1999).
Respondent registered the <expedoa.com> domain name on April 20, 1999 and the <rxpedia.com> and <exprdia.com> domain names on May 10, 1999. Respondent was formerly a member of Complainant’s affiliate program. Respondent’s disputed domain names previously resolved to Complainant’s website at the <expedia.com> domain name. The disputed domain names currently appear inactive. After receiving a cease and desist letter from Complainant, Respondent offered to sell the disputed domain names to Complainant for an amount greater than its 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."
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.
Respondent’s <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names are confusingly similar to Complainant’s EXPEDIA mark, as each disputed domain name contains a close misspelling of the mark without changing its overall impression. The letter “r” in the <rxpedia.com> domain name simply replaces the first letter “e” in Complainant’s EXPEDIA mark, the letter “r” in the <exprdia.com> domain name replaces the second letter “e” in the mark, and the letter “o” in the <expedoa.com> domain name merely replaces the letter “i” in the mark. Also, because a top-level domain is a required element of all domain names, the addition of the generic top-level domain “.com” to Complainant’s mark does not render the disputed domain names distinct. Thus, the Panel finds that the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names are confusingly similar to Complainant’s EXPEDIA mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names. Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See eHealthInsurance Services Inc. v. Mohammed Hasan, FA 982289 (Nat. Arb. Forum July 9, 2007) (“Complainant bears the initial responsibility of making a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Based on Respondent’s failure to answer the Complaint, the
Panel presumes that Respondent lacks rights or legitimate interests in the
disputed domain names. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the
Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with
the rules ‘as it considers appropriate.”); see
also 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.”). However,
the Panel will still examine the record to determine if Respondent has rights
or legitimate interests under Policy ¶ 4(c).
Complainant alleges that
Respondent is not commonly known by the <rxpedia.com>, <exprdia.com>, and <expedoa.com>
domain names, which indicates that Respondent lacks rights or legitimate
interests under Policy ¶ 4(c)(ii). Although Respondent’s WHOIS information
indicates that Respondent is “Expedia Inc,” there is nothing further in the
record to suggest that Respondent is commonly known by the disputed domain
names. Respondent was previously an
affiliate of Complainant and signed an Affiliate Agreement, which prohibited it
from registering any domain names that infringed on Complainant’s EXPEDIA mark,
but Respondent is no longer affiliated with Complainant in any way. Thus, the Panel finds that Respondent is not
commonly known by the <rxpedia.com>, <exprdia.com>,
and <expedoa.com> domain names.
Respondent’s disputed domain names previously resolved to Complainant’s website at the <expedia.com> domain name, and the Panel presumes that Respondent benefited commercially when Internet users were redirected to Complainant’s website. This does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Respondent’s <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names now appear to be inactive. Such non-use of the disputed domain names also does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
Furthermore, the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names are typosquatted versions of Complainant’s EXPEDIA mark, as they each contain common typing errors. The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) due to the typosquatted nature of the names. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
As mentioned above, the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names previously resolved to Complainant’s own website and the Panel presumes that Respondent benefited commercially from these disputed domain names. Complainant is thus profiting from the likelihood that Internet users will confuse the source of the disputed domain names as being affiliated with Complainant. This indicates that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s bad faith registration and use of the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names is also evidenced by Respondent’s subsequent non-use of the disputed domain names, as they are currently inactive. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
The typosquatted nature of the disputed domain names further
indicates that Respondent registered and is using the disputed domain names in
bad faith under Policy ¶ 4(a)(iii). See Ganz
v.
Finally, Respondent’s offer to sell the <rxpedia.com>, <exprdia.com>, and <expedoa.com>
domain names to Complainant for an amount greater than its out-of-pocket
costs also points to Respondent’s bad faith registration and use of the
disputed domain names pursuant to Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rxpedia.com>, <exprdia.com>, and <expedoa.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 13, 2007
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