Expedia, Inc. v. Domain Park Limited
Claim Number: FA0708001053504
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediafarealert.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 6, 2007.
On August 3, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediafarealert.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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 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 September 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a provider of travel agency services through its online presence at various websites, including at the <expedia.com> domain name.
In connection with Complainant’s travel services, it offers to its customers a software tool known as “Fare Alert,” which allows Internet users to track the prices of flights.
Complainant owns trademark and service mark registrations for the EXPEDIA mark in many countries worldwide, including a service mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,220,719, issued January 26, 1999).
Respondent is not authorized to use Complainant’s EXPEDIA mark.
Respondent registered the <expediafarealert.com> domain name on May 11, 2007.
Respondent has offered to sell the contested domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs.
Respondent’s name resolves to a website displaying hyperlinks to third-party websites in direct competition with the business of Complainant.
Respondent’s <expediafarealert.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
Respondent does not have any rights or legitimate interests in the domain name <expediafarealert.com>.
Respondent registered and uses the <expediafarealert.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registrations of its EXPEDIA service mark with various trademark authorities sufficiently demonstrates its rights in the mark for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of a disputed domain name is sufficient to prove that that complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in hold that a complainant established rights in its marks for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant alleges, and Respondent does not deny, that the <expediafarealert.com> domain name is confusingly similar to its EXPEDIA mark. We agree. The disputed domain name contains Complainant's mark in its entirety and adds the phrase “fare alert” and the generic top-level domain (“gTLD”) “.com”. The phrase added to Complainant’s mark has an obvious relationship to Complainant's air travel business. And the addition of the gTLD does not negate a finding of confusing similarity, inasmuch as a top-level domain is a required element of all domain names. Thus we conclude that the disputed domain name confusingly similar to Complainant’s mark under Policy ¶ 4(a)(ii). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), if
Complainant successfully presents a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name, the burden shifts to Respondent to demonstrate that it
has such rights. Complainant has met its
burden in this regard. We will nonetheless
examine the evidence of record to determine if there is any basis for
concluding that Respondent has rights or legitimate interests in the <expediafarealert.com>
domain name under Policy ¶ 4(c). See Woolworths plc. v.
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
On the record before us, it is undisputed that Respondent uses the disputed domain name to host a website displaying hyperlinks to third-party websites in direct competition with the business of Complainant. Such use is presumably for Respondent’s commercial gain through the earning of click-through fees for displaying these hyperlinks. Such use 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Furthermore, there is no evidence, including in Respondent’s WHOIS information, indicating that Respondent is commonly known by the disputed domain name within the contemplation of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). And Complainant asserts, without contradiction, that Respondent is not authorized to use its mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question).
Additionally, Complainant has provided uncontroverted evidence that Respondent offered to sell the <expediafarealert.com> domain name to Complainant for an amount in excess of Respondent’s out-of-pocket costs. This behavior indicates that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003): “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.” See also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that a respondent’s conduct in attempting to sell a domain name suggests it has no legitimate interest in it).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence before us suggests that Respondent’s use of the <expediafarealert.com> domain name is for its own commercial benefit through the acquisition of click-through fees. Moreover, the disputed domain name creates a likelihood of confusion as to the possibility of Complainant sponsorship, endorsement or affiliation with the disputed domain name and corresponding website. This combination of circumstances constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that a respondent took advantage of the confusing similarity between the domain names <theotheraol.com> and <theotheraol.net> and a complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Moreover, Respondent’s undenied offer to sell the disputed domain name to complainant for an amount in excess of its out-of-pocket costs indicates bad faith registration and use of the domain under Policy ¶ 4(b)(i). See, for example, Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003): “Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <expediafarealert.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 18, 2007
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