Expedia, Inc. v. Trinh Construction
Claim Number: FA0708001059641
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is Trinh Construction (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediavn.com>, registered with Tucows Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 9, 2007; the National Arbitration Forum received a hard copy of the Complaint August 13, 2007.
On August 9, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <expediavn.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has 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 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <expediavn.com>, is confusingly similar to Complainant’s EXPEDIA.COM mark.
2. Respondent has no rights to or legitimate interests in the <expediavn.com> domain name.
3. Respondent registered and used the <expediavn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is a leading on-line provider of
airline, hotel, and rental car reservations for destinations in the
Respondent registered the <expediavn.com> domain name January 23, 2007. The disputed domain name originally resolved to a website featuring travel services that attempted to compete with Complainant. Upon discovery of this website, Complainant sent a cease and desist letter to Respondent requesting that Respondent cease its activities and turn the disputed domain name over to Complainant. Following Complainant’s cease and desist letter, the content associated with the disputed domain name was removed and the domain name currently does not have an active use.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established that it has rights to and legitimate interests in the EXPEDIA.COM 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 disputed domain name that Respondent registered, <expediavn.com>, is confusingly similar to Complainant’s EXPEDIA.COM mark. The addition of the letters “vn” to Complainant’s mark does not circumvent a finding of confusing similarity under Policy ¶ 4(a)(i). 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 Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
The Panel finds that Complainant 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 name at issue. Once Complainant establishes 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 name. In the instant case, the Panel finds that Complainant made a prima facie showing 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 did not submit a Response to the Complaint. In such cases, the Panel may presume that Respondent has no rights or legitimate interests in the <expediavn.com> domain name, but the Panel still considers 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 Complainant’s mark or the <expediavn.com> domain name 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 was previously using the <expediavn.com> domain name to display links to various third-party websites, including links to those who would seek to compete directly with Complainant in the on-line travel industry. The Panel infers that this was being done to commercially benefit Respondent through the earning of click-through fees. The Panel thus finds that Respondent’s previous use was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it was not a legitimate noncommercial or fair use under Policy 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also 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).
According to the evidence, the disputed domain name currently resolves to a website that has no active use. The Panel concludes that no bona fide offering of goods and services under Policy ¶ 4(c)(i) and no legitimate noncommercial or fair use is being made at the site under Policy ¶ 4(c)(iii). Further, Respondent has failed to actively use a disputed domain name and offers no evidence showing demonstrable preparations for use of the disputed domain name. See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent was using the <expediavn.com> domain name to redirect Internet users to websites containing various links, some of which sought to compete directly with Complainant’s online travel services. The Panel finds that such use constitutes a disruption of Complainant’s business and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); 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).
The Panel presumes that Respondent was using the disputed
domain name for its own commercial benefit through the earning of click-through
fees for the links displayed on the websites that resolved from the <expediavn.com> domain name. Furthermore, the Panel finds that the
disputed domain name is capable of creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship and affiliation with the
disputed domain names and corresponding websites and links. Such commercial benefit and likelihood of
confusion constitute bad faith registration and use under Policy ¶
Respondent’s registration and current failure to make active use of the <expediavn.com> domain name along with a failure to provide evidence showing preparations to use the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel finds that Complainant 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 <expediavn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 24, 2007.
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