Expedia, Inc. v. Ashraf
Sello c/o EgyptShop Trade
Claim Number: FA0710001088989
PARTIES
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 <egpedia.com>, registered with Names4Ever.
PANEL
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 Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 3, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 5, 2007.
On October 4, 2007, Names4Ever confirmed by e-mail to the National
Arbitration Forum that the <egpedia.com> domain name is
registered with Names4Ever and that the
Respondent is the current registrant of the name. Names4Ever has
verified that Respondent is bound by the Names4Ever
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 October 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 1, 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@egpedia.com by e-mail.
A timely Response was received and determined to be complete on October 15, 2007.
On October 22, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Information
Expedia, Inc. (“Expedia”)
Contact Name: Trademark Counsel
Address:
Expedia’s Authorized Representative – Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Contact Names: Sanjiv
D. Sarwate, Esq. and Sharon A. Ceresnie, Esq.
Address:
Disputed Doman Name: EGPEDIA.COM (“Infringed Domain Name”).
This dispute is properly within the scope of the ICANN Policy, and the
Administrative Panel has jurisdiction to decide the dispute. The Registrar’s Registration Agreement,
pursuant to which the Infringing Domain Name was registered, incorporates the
ICANN Policy.
Long prior to the Respondent’s registration of the Infringing Domain
Name, Expedia adopted, and has continuously used since that adoption, the
inherently distinctive EXPEDIA Mark for EXPEDIA goods and services in the
United States and around the world.
Expedia does business primarily over the Internet and is the most
successful travel service on the Internet.
Expedia has invested many millions of dollars in advertising and
promoting the EXPEDIA Mark and has sold or licensed many hundreds of millions
of dollars in its EXPEDIA goods and services under the EXPEDIA Mark, including
entertainment and travel related goods and services.
In addition to its inherent distinctiveness, and as a result of
Expedia’s extensive marketing efforts, substantial sales and the resulting
success of its EXPEDIA goods and services, the EXPEDIA Mark has become famous
and represents extraordinarily valuable goodwill owned by Expedia.
Expedia offers numerous travel-related services in connection with
Respondent registered the Infringing Domain Name on or about March 16,
2007. On or about June 29, 2007, Expedia
sent Respondent a cease and desist letter demanding that Respondent cease use
of and transfer the Infringing Domain Name to Expedia. Expedia did not receive a response from
Respondent. On July 20, 2007, Expedia
sent a follow-up letter reiterating its demands that Respondent cease use of
and transfer the Infringing Domain Name to Expedia. Expedia did not receive a response to this
letter.
The Infringing Domain Name is confusingly similar to the EXPEDIA Mark
as it is a close misspelling of the Complainant’s EXPEDIA Mark, merely
substituting the letter “g” for the second letter “x” in the mark. Expedia therefore satisfies ICANN Policy ¶
4(a)(i).
Respondent has used the Infringing Domain Name to re-direct Internet
users to Expedia’s homepage at <expedia.com>. Respondent likely received click-through
revenue as a result of Internet users mistakenly believing that the Infringing
Domain Name is associated with Expedia and then, after landing on Respondent’s
page, realizing that they have landed on Respondent’s site. This type of use has been recognized as bad
faith uses in violation of ICANN Policy ¶ 4(b)(iv). See
Fossil, Inc. v. www.fossil-watch.org c/o Hostmaster, Case No. FA0409000335513
(Nat. Arb. Forum Nov. 9, 2004) (finding bad faith where respondent
attempted to profit from the fame of complainant’s trademark by attracting
Internet traffic to his web site).
The combination of Respondent’s actual and constructive knowledge of
Expedia’a prior rights and the fame of the EXPEDIA Mark, attempts to take
advantage of the goodwill associated with Expedia’s famous EXPEDIA Mark, use of
the Infringing Domain Name to disrupt Expedia’s business, to generate click-through
revenue, and typosquatting (the intentional misspelling of words with the
intent to intercept and siphon off traffic from its intended destination), all
demonstrate bad faith registration and use of the Infringing Domain Name under
ICANN Policy ¶ 4(a)(iii).
B. Respondent
Respondent Information
According to the Whois database, the registrar of <egpedia.com>
is Albacus America, Inc. d/b/a Names4ever and the registrant of this domain
name is Ashraf Sello c/o EgyptShop Trade.
Repondent’s Reply
Kindly accept this email as an official reply concerning the case commencement.
Simply I don't have any bad faith toward the expedia and I am not trying to touch their copyrights, I told them many times that I don't have any problem to transfer the domain name egpedia to them to proof my good faith.
I sent them an email on 28th. of July before the date line Aug 1st. given in their email explaining why I unintentionally choose this name. I think they didn't receive it or something, because in their complaint they said that they didn't receive any reply from my side, Actually, I was surprised when receiving the complaint letter from them, as after I sent them that email I didn't receive anything from their side which made me assume that they were convinced of my point of view and ignored the subject.
Also I send them other emails to transfer the name to them and telling that I currently redirect the name to a new domain which is EgyptService.com till they send me the transfer form to be ready for transfer any time, But the following email was their reply:
Dear Mr. Sello,
Thank you very much for your e-mail. Unfortunately, our client
has advised us not to enter a settlement agreement at this time. If you
wish for the domain name to be transferred to Expedia, you can simply allow the
UDRP proceeding to proceed without taking any further action. The National
Arbitration Forum will simply order the domain name to be transferred to
Expedia when it renders its decision. We can then work out the details regarding
the transfer.
Best regards,
This is the message from me:
Dear Ms. Sharon,
I don't know why all this papers and all these procedures, I called Ms. Linda and You Ms. Sharon in the Pattishall McAuliffe office by phone and send you email telling that "I Don't have any objection to transfer the domain name egpedia to expedia" I'm Ready to transfer domain to them at any time but I didn't receive the form from expedia which have the request to transfer and contains the transfer tech. data, That's to stop all this.
Please finish this ASAP by emailing me the transfer form as you told me by phone, withdraw any complaint vs.. me, and send me a copy of the withdraw proof paper, and that's it.
Note that the domain egpedia.com is not currently blocked in the registrar control panel, So I think that I'm allowed to do this transfer any time you send me the transfer form and the complaint withdrawal proof paper.
Currently egpedia.com is being auto redirect to another site egyptservice.com (You can check that yourself), So egpedia.com is now ready to be transferred instantly to expedia upon receiving the transfer form and proof of complaint withdraw paper, That is another proof that we don't have bad faith as you said, and we respect the copyrights.
Best regards,
Ashraf Hamdy Sello
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
FINDINGS
ISSUE:
In reviewing the Complaint, it appears that the main issues are under ICANN
Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or
legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
Preliminary Issue: Consent to Transfer the Subject Domain
Name
It appears that Respondent does not
contest any of Complainant’s allegations regarding the <egpedia.com> domain
name. Rather, Respondent seems to
have consented to judgment in favor of Complainant and authorized the immediate
transfer of the subject domain name. The
Panel finds that in a circumstance such as this, where Respondent has consented
to the transfer of the disputed domain name, the Panel has decided to forego
the traditional UDRP analysis and order the immediate transfer of the domain
name. See Boehringer Ingelheim Int’l
GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9,
2003) (transferring the domain name registration where the respondent
stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this
case, the parties have both asked for the domain name to be transferred to the
Complainant . . . Since the requests of the parties in this case are
identical, the Panel has no scope to do anything other than to recognize the
common request, and it has no mandate to make findings of fact or of compliance
(or not) with the Policy.”); see also Disney Enters., Inc. v. Morales,
FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where
Respondent has agreed to comply with Complainant’s request, the Panel felt it
to be expedient and judicial to forego the traditional UDRP analysis and order
the transfer of the domain names.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <egpedia.com> domain name be TRANSFERRED
from Respondent to Complainant.
___________________________________________________
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: November 5, 2007
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