Expedia, Inc. v. Inertia 3D
Claim Number: FA0712001118154
Complainant is Expedia, Inc. (“Complainant”), represented by Clarence
H. Brown, of Kirkpatrick & Lockhart Preston Gates
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediahosting.com>, registered with GoDaddy.com, 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 December 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2007.
On December 7, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediahosting.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2008 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.
A timely electronic submission from Respondent was received on January 2, 2008. However, a hard copy of the Response, as required by ICANN Supplemental Rule 5, was not received.
On January 7, 2008, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends, among other things, that:
Since at least 1996, Complainant and its predecessors in interest have used the inherently distinctive service mark EXPEDIA in connection with the provision of a variety of goods and services, including travel agency services, through a web site located at <expedia.com>.
Complainant owns registrations for the EXPEDIA mark, including one with the United States Patent and Trademark Office (“USPTO”), registry number 2,220,719, registered January 26, 1999.
Complainant has invested substantial sums to advertise and promote its goods and services under the EXPEDIA mark, as a result of which the mark has become famous worldwide and represents valuable goodwill.
On or about May 7, 2007, Respondent registered the disputed domain name, which is confusingly similar to Complainant’s mark, and is therefore likely to confuse Internet users as to a possible relationship between Complainant and the domain name.
Respondent has no rights or legitimate interests with respect to the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the EXPEDIA mark or to incorporate it in any domain name.
The contested domain name is not used for a legitimate commercial purpose, but instead resolves to a third-party web site offering travel services in competition with the business of Complainant.
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, but instead identifies Respondent only as “Inertia 3D.”
Respondent had at least constructive knowledge of Complainant’s mark when it registered the contested domain name.
Respondent intentionally uses the domain name to host a web site that attracts Internet users, for which Respondent receives click-through fees.
Respondent registered and uses the contested domain name in bad faith.
Respondent contends, among other things, that:
Respondent’s domain name is used to operate a home-based web hosting business, not a travel agency business.
Respondent is willing to sell the domain name to Complainant.
Respondent’s web site contains a disclaimer to the effect that it is not affiliated with Complainant.
(1) the domain name registered by the Respondent is confusingly similar to a service mark in which the Complainant has rights;
(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 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:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the 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.
Before addressing the substantive issues raised by the Complaint, we must attend to a procedural matter arising from the fact that Respondent’s Response to the Complaint herein was received by the National Arbitration Forum in electronic format only, and not in hard copy, in contravention of ICANN Rule 5. We have discretion to ignore the Response in these circumstances and proceed on the basis of the Complaint alone. See, e.g., Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007). However, we are persuaded that it is in the interests of justice to consider the Response on its merits, and we will do so. See Metro. Life Ins. Co. v. Secure Whois Info. Serv., FA 910715 (Nat. Arb. Forum Mar. 16, 2007) (deeming any procedural deficiencies to be inconsequential and deciding to consider a response, which was only received in hard copy before the deadline).
Under this head, we first consider whether Complainant has rights in the EXPEDIA service mark sufficient for purposes of the Policy. In this connection, we note that Complainant asserts rights in the mark through its registration of the mark with the United States Patent and Trademark Office. This registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
We turn then to the question of confusing similarity. On this point, we are forced to conclude that the <expediahosting.com> domain name is confusingly similar to Complainant’s EXPEDIA mark, because the disputed domain name includes the entire mark and merely adds the generic term “hosting” and the generic top-level domain “.com.” These additions are insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contains the identical mark of a complainant combined with a generic word or term); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar the WESTFIELD mark because the mark was the dominant element). The same outcome obtains with regard to the inclusion of the generic top level domain (“gTLD”) “.com” to Respondent’s domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under this aspect of the Policy, Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a prima facie case. It falls, then, to Respondent to meet the allegations of the Complainant. It fails to do so at its peril.
Complainant first asserts that Respondent is not commonly known by the domain name <expediahosting.com>, noting that Respondent’s WHOIS information indicates that Respondent is “Inertia 3D.” Complainant also alleges that it has never given Respondent permission to use its EXPEDIA mark. Respondent does not deny these allegations. We conclude, therefore, that Respondent does not find shelter under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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").
Complainant also contends that Respondent’s <expediahosting.com> domain name resolves to a website containing links, one of which resolves to a third-party website featuring travel-related services in competition with the business of Complainant, and that Respondent profits from these links. Respondent does not deny these allegations. We conclude, therefore, that Respondent is not making 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained links to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that a respondent’s use of a complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
In these circumstances, Respondent’s protest to the effect that it is merely running a legitimate web hosting business is unavailing. Any doubt that might have existed in this regard is resolved by Respondent’s unsolicited indication of its willingness to sell the disputed domain name to Complainant.
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We have already mentioned that,
from the contents of Respondent’s website, we conclude that Respondent attempts
to attract Internet users there, presumably for commercial gain, as Complainant
alleges. And we have noted that Respondent
does not deny these allegations. On
these facts, Internet users may be confused as to the possibility of
Complainant’s affiliation with the <expediahosting.com>
domain name and corresponding website.
Under Policy ¶ 4(b)(iv), this is further evidence of Respondent’s bad
faith registration and use of the disputed domain name. See
State Fair of
For these reasons, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <expediahosting.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 18, 2008
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