Expedia, Inc. v. Qaiser Amin
Claim Number: FA0805001191812
PARTIES
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.
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 Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
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 postmaster@dubaiexpedia.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
authorities in
He does not intent to use “Expedia” in his website.
FINDINGS
Based on the findings below, Complainant has
proven that the name should be transferred to Complainant.
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.
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.
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 <dubaiexpedia.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 8, 2008
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