Expedia, Inc. v. T W
Claim Number: FA0712001124315
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediareservation.com>, <expediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org>, registered with Dotster.
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 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 21, 2007, Dotster confirmed by e-mail to the National Arbitration Forum that the <expediareservation.com>, <expediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org> domain names are registered with Dotster and that Respondent is the current registrant of the names. Dotster has verified that Respondent is bound by the Dotster 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 January 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 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 postmaster@expediareservation.com, postmaster@expediareservation.net, postmaster@expediareservation.info, postmaster@expediareservation.org, postmaster@expediareservations.com, postmaster@expediareservations.info, postmaster@expediareservations.net and postmaster@expediareservations.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 28, 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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is one of the most successful online companies providing travel agency services, including airline tickets, hotel and rental car reservations, cruise tickets, entertainment and sporting event tickets, and resort reservations.
Complainant owns several registrations for the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”), including service marks Reg. No. 2,633,295, issued October 8, 2002, and Reg. No. 2,612,384, issued August 27, 2002).
Respondent is neither commonly known by the disputed domain names nor licensed to register domain names using the EXPEDIA mark.
Respondent registered the <expediareservation.com>, <expediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org> domain names on August 28, 2007.
Respondent’s disputed domain names resolve to a website containing the email address travelexpert2008@yahoo.com, which is in direct competition with the business of Complainant.
Respondent is using the disputed domain names in order to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant’s EXPEDIA service mark.
Respondent’s domain names <expediareservation.com>, <expediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org> are confusingly similar to Complainant’s EXPEDIA mark.
Respondent does not have any rights or legitimate interests in the domain names <expediareservation.com>, <expediareservation.net>, < expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org>.
Respondent registered and uses in bad faith the domain names <expediareservation.com>,<xpediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org>.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are 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 a 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 has established rights in the EXPEDIA mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. 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.”
Complainant contends, and Respondent does not deny, that Respondent’s domain names are confusingly similar to Complainant’s EXPEDIA mark. Indeed, each of Respondent’s domain names contains Complainant’s complete EXPEDIA mark, and merely adds a generic term associated with Complainant’s business and a generic top-level domain (“gTLD”). Such a domain name is confusingly similar to a competing mark for purposes of Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which that complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar to a competing mark because the combination of the two words "brambles" and "equipment" implies that there is an association with a complainant’s business).
The addition of the gTLDs “.com,” “.net,” “.info” and “.org” are, of course, irrelevant in assessing whether a domain name is identical or confusingly similar to a complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name, such as “.net” or “.com” does not affect the domain for purposes of determining whether it is identical or confusingly similar to a competing mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It
has been established that the addition of a generic top-level domain
is irrelevant when
considering whether a domain name is identical or
confusingly
similar under the Policy.
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends, and Respondent does not deny, that Respondent
lacks all rights and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that
a respondent has no rights or legitimate interests with respect to a domain
name, it is incumbent on that respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
In this case Complainant has established a prima facie case. And, because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
Given Respondent’s failure to submit a substantive answer in a timely
fashion, the Panel accepts as true all of the allegations of the complaint.
However, the Panel nonetheless elects to examine the evidence of record against the applicable Policy ¶ 4(c) elements before making a determination with regard to Respondent’s rights and legitimate interests.
In this connection, we first note that Complainant contends,
and Respondent does not contest, that Respondent is neither commonly known by
the disputed
domain names nor licensed to register domain names using the EXPEDIA mark. Therefore, in the absence of evidence
suggesting otherwise, Respondent has not established rights or legitimate
interests in the disputed
domain names under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003):
Due
to the fame of Complainant’s mark there must be strong evidence that Respondent
is commonly known by the disputed domain name in order to find that Respondent
has rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii).
See also Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum Sept.
25, 2003) (finding that without demonstrable evidence to support the assertion
that a respondent is commonly known by a domain name, the assertion must be
rejected). In addition, the WHOIS information identifies Respondent as
“TW” and the associated website lists the <travelexpert2008@yahoo.com> email
address. Thus Respondent has not
established rights or legitimate interests in the disputed domain names 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 Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003): “Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”
Complainant also contends, and Respondent does not dispute, that Respondent uses the disputed domain names to attract Internet users to associated websites containing the <travelexpert2008@yahoo.com> email address with the intent of directly competing with Complainant. Intentionally diverting Internet users to a competing website by using a domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used a domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial site); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001): “Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”
The Panel thus finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends, without objection from Respondent, that Respondent uses the disputed domain names intentionally to attract Internet users to its website by creating a likelihood of confusion with Complainant’s EXPEDIA mark and by displaying the <travelexpert2008@yahoo.com> email address in an attempt to gain commercially by directly competing with Complainant. Under Policy ¶ 4(b)(iv), such use of the disputed domain names constitutes bad faith registration and use. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name there at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that a complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark and the domain name was used to host a commercial website that offered services similar to those offered by that complainant under its mark).
In addition, it appears that Respondent registered the disputed
domain names with at least constructive
knowledge of Complainant’s rights in the EXPEDIA service mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
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 domain names <expediareservation.com>, <expediareservation.net>, <expediareservation.info>, <expediareservation.org>, <expediareservations.com>, <expediareservations.info>, <expediareservations.net> and <expediareservations.org> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 6, 2008
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