Expedia, Inc. v. Ashraf Sello c/o EgyptShop Trade
Claim Number: FA0710001088989
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Expedia, Inc. (“Expedia”)
Contact Name: Trademark Counsel
Expedia’s Authorized Representative – Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Contact Names: Sanjiv D. Sarwate, Esq. and Sharon A. Ceresnie, Esq.
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).
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.
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.
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.
Ashraf Hamdy Sello
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.
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.”).
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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