Expedia, Inc. v. Qaiser Amin
Claim Number: FA0805001191812
Complainant is Expedia, Inc. (“Complainant”), represented by John
L. Slafsky, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dubaiexpedia.com>, registered with GoDaddy.
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 Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2008.
On May 20, 2008, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <dubaiexpedia.com> domain name is registered with GoDaddy and that the Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy 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 May 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 17, 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 email@example.com by e-mail.
A timely Response was received in electronic format only, and not in hard copy on June 17, 2008. The Response is therefore incomplete under ICANN Rule 5.
All submissions were considered by the Panel.
On June 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Since at least October 1996, Complainant and its predecessors have been using the inherently distinctive mark EXPEDIA, as well as EXPEDIA.COM (collectively the “EXPEDIA Mark”) on or in connection with a wide variety of goods and services, most notably online travel services provided through Complainant’s websites, including providing access to airline, hotel and rental car reservations for destinations in the United States and around the world.
Complainant owns numerous valid and subsisting registration and applications for the EXPEDIA Mark worldwide. The EXPEDIA Mark was first used and registered by Complainant’s predecessor-in-interest, Microsoft Corporation, and was duly assigned by Microsoft Corporation to Complainant.
Long prior to the registration and renewal of the Infringing Domain Name, Complainant adopted, and has continuously used since that adoption, the inherently distinctive EXPEDIA Mark for the EXPEDIA goods and services in the United Stated and around the world.
Complainant has invested 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 travel-related goods and services.
Since as early as 1996, Complainant has used and developed substantial goodwill in the EXPEDIA trademark.
In addition to its inherent distinctiveness, and as a result of Complainant’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 Complainant.
The Initial Registrant registered the Infringing Domain Name on or about September 27, 2007.
The website located at the Infringing Domain Name currently displays no content. However, as recently as January 30, 2008, the website located at the Infringing Domain Name advertised travel services that are related to and competitive with Complainant’s services.
The Initial Registrant transferred the Infringing Domain Name to Respondent shortly after receiving a demand letter from Complainant’s counsel. Respondent then promptly renewed the registration.
The Infringing Domain Name is a combination of a geographic indicator,
Respondent is not known by the EXPEDIA Mark and has not acquired any trademark or service mark rights in the EXPEDIA Mark.
Complainant has not licensed or otherwise permitted Respondent to use the EXPEDIA Mark or to apply for or use any domain name incorporating the mark.
Respondent’s use of the EXPEDIA Mark in the Infringing Domain Name is not “nominative” in that it is not an unavoidable use of the trademark to identify the goods or services that Respondent offered on its website.
Respondent’s use of the Infringing Domain Name to attract Internet users to a website that directly competes with Complainant is not a legitimate noncommercial or fair use of the domain name.
The Initial Registrant registered the Infringing Domain Name long after Complainant adopted, used, and applied to register its EXPEDIA Mark. Similarly, Respondent acquired registration for the Infringing Domain name long after Complainant adopted, used and applied to register its EXPEDIA Mark.
In addition to actual knowledge, Respondent and the Initial Registrant have had constructive notice of Complainant’s trademark rights in the EXPEDIA Mark as a result of Complainant’s trademark registrations.
The Infringing Domain Name was registered and renewed to take advantage of the value and goodwill associated with the EXPEDIA Mark.
The Infringing Domain Name has been used to provide Internet users with the same kind of services as those offered by Complainant.
Respondent had no intention of misusing the “Expedia” name. Respondent is an individual and had developed the website with the intention of starting his own travel company without knowing the consequences of using the name “Expedia.”
Respondent, before registering the domain name with the local
He does not intent to use “Expedia” in his website.
Based on the findings below, Complainant has proven that the name should be transferred to Complainant.
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.
Complainant claims rights in the EXPEDIA mark in that it has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,220,719, issued January 26, 1999, filed April 9, 1996) and the Indian Office of the Controller General of Patents, Designs & Trade Marks (Reg. No. 1,109,630, issued May 11, 2005). Based on such registrations with the USPTO and Indian trademark authority, the Panel finds that Complainant has asserted sufficient rights in the EXPEDIA mark under Policy ¶ 4(a)(i) in order to achieve UDRP standing. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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 that the <dubaiexpedia.com> domain name is confusingly similar to its
EXPEDIA mark. Specifically, Complainant
asserts that the entire EXPEDIA mark is joined by the generic top-level domain
(“gTLD”) “.com” and the geographic qualifier “
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the 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 argues that Respondent is not commonly known by the <dubaiexpedia.com> domain name. Complainant avers that Respondent lacks any license or permission to use the EXPEDIA mark, and that the disputed domain name is not nominative or otherwise unavoidable in use to identify any commercial offering by Respondent. While Respondent does not specifically address the WHOIS domain name registration information, the registrant of the disputed domain name is listed as “Qaiser Amin.” The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); 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).
Complainant also argues that Respondent has used the website corresponding to the disputed domain name to host content and services competitive with Complainant’s travel services. Complainant contends that such content was displayed on this website as recently as January 30, 2008, but that currently there is no operating website associated with the disputed domain name. The Panel finds that Respondent’s usage of the disputed domain name to attract Internet users seeking Complainant’s travel services to Respondent’s competitive website does not constitute 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). The Panel also finds that any current inactive use of the disputed domain name does not carry rights and legitimate interests under Policy ¶ 4(a)(ii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's [inactive] holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
Complainant has proven this element.
Complainant contends that Respondent’s use of the disputed domain name to revert to a website that competes directly with Complainant by offering travel services disrupts Complainant’s business. Complainant further states that Respondent intended this disruption as a primary motivator in registering the disputed domain name. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant argues that Internet users seeking its services would happen across Respondent’s disputed domain name and corresponding competitive website, and be subsequently confounded and led into thinking that somehow Respondent may be affiliated with Complainant. Complainant argues further that Respondent has positioned Complainant’s EXPEDIA mark prominently on this corresponding website. The Panel finds that Respondent has created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website and also finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant contends that
Respondent had actual and/or constructive knowledge of Complainant and
Complainant’s rights in the EXPEDIA mark.
Complainant argues that it registered the EXPEDIA mark in both the
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dubaiexpedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2008
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