Expedia Inc. v. HansenStrategies
Claim Number: FA0812001238047
Complainant is Expedia
Inc. (“Complainant”), represented by Aaron
D. Hendelman, of Wilson Sonsini Goodrich & Rosati,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expesia.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2008.
On December 11, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <expesia.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2009 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <expesia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expesia.com> domain name.
3. Respondent registered and used the <expesia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia Inc., has used its EXPEDIA mark since 1996 in connection with its online travel services provided through its websites. Complainant also provides a number of related goods under this mark to its customers. Complainant has registered its EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,220,719 issued January 26, 1999) and other governmental trademark authorities worldwide. Complainant also owns and operates the <expedia.com> domain name in connection with its operations.
Respondent registered the disputed <expesia.com> domain name on August 3, 2001. The disputed domain name resolves to a web page that advertises Complainant’s services, but leads Internet users through a link to a Dutch website offering electronic products and books.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 has submitted evidence of its numerous
registrations of the EXPEDIA mark with the USPTO and other governmental
trademark authorities worldwide. The
Panel finds that, pursuant to Policy ¶ 4(a)(i), Complainant has set forth
satisfactory evidence of its rights in the EXPEDIA mark. See
Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also
Respondent’s disputed <expesia.com> domain name merely substitutes the “d” in EXPEDIA with an “s,” and adds the generic top-level domain “.com.” The Panel begins its analysis by noting that the addition of a top-level domain name is considered irrelevant and immaterial under Policy ¶ 4(a)(i). 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 name for the purpose of determining whether it is identical or confusingly similar). Thus, the Panel is left to scrutinize the sole remaining alteration; namely the substitution of “d” in EXPEDIA with “s.” In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panel found that the <belken.com> domain name was confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e.” Likewise, the panel in Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) found that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling. The unifying theme in this precedent is the consideration that a substitution of letters in a mark fails to create any meaningful distinction that would thwart a finding of confusing similarity under Policy ¶ 4(a)(i). The Panel aligns itself with this precedent, and therefore finds that the <expesia.com> domain name is confusingly similar to the EXPEDIA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 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 Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant has alleged that Respondent is not commonly
known by the disputed domain name, and that Respondent lacks licensure or
permission to use Complainant’s mark in a domain name. The Panel notes that Respondent has failed to
offer any contrary assertions or evidence.
Indeed, the WHOIS registration information for the disputed domain name
bolsters Complainant’s arguments, in that Respondent is listed as
“HansenStrategies.” The Panel sees no
evidence within the record to contradict Complainant, and therefore finds that
Respondent is not commonly known by the disputed domain name pursuant to Policy
¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip't as the registrant of the disputed domain names and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute); see
Respondent’s disputed domain name resolves to a website that, at first glance, purports to advertise Complainant’s travel services. However, Internet users that have been diverted to the resolving website through the disputed domain name and click the links will be unceremoniously deflected again. Such Internet users wind up at a Dutch website that sells electronic products and books. Whether this Dutch business’s website competes with Complainant or is merely unrelated is of no importance—Respondent has clearly utilized the disputed domain name and corresponding mark to obtain commercial benefit. The Panel infers that Respondent sought either the click-through revenue in the placement of these links, or directly sought to provide material benefit to this Dutch operation through the diversion of Internet users. Both constitute commercial gain, and therefore the Panel finds that Respondent has failed to use the disputed domain name in connection with 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant alleges that Respondent has engaged in “typosquatting.” This label refers to the practice of registering a domain name that knowingly contains common typographical errors of marks in the hope of deceptively diverting Internet users who commit these mistakes into reaching Respondent’s resolving website. Such registrants seek to divert Internet users away from their intended targets through their innocent misspellings when conducting their Internet browsing. In this case, the disputed domain name contains only Complainant’s EXPEDIA mark yet substitutes “d” for “s.” The Panel infers that this was accomplished with the goal of trapping Internet users who mistakenly substitute the letters due to their proximity on computer keyboards. This constitutes the type of error that fits the mold of typosquatting. Since Respondent has offered no contrary assertions or evidence, the Panel finds that Respondent has indeed engaged in typosquatting, which constitutes additional evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As discussed above, the disputed domain name lures Internet users to Respondent’s resolving website via the confusingly similar disputed domain name. This website tricks Internet users into believing that the links and advertisements will lead to Complainant since Complainant’s business is advertised. However, such Internet users are brought unwittingly to a Dutch website that sells electronic products and books. Respondent commercially benefits through some form of referral fee or through the direct promotion of this Dutch website. The Panel therefore considers Respondent have committed this act intentionally with the hopes of receiving material benefit through the resulting likelihood of confusion as to Complainant’s endorsement and sponsorship of the disputed domain name. This constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
Respondent’s deception of Internet users for commercial gain is not accomplished merely through the provision of misleading links and advertisements. Respondent first diverted Internet users through the confusingly similar disputed domain name, which the Panel has already found to have constituted typosquatting. Only upon this initial sham and pretext may Respondent then complete the ruse by confronting diverted Internet users with the illusory links and advertisements. The Panel finds that Respondent’s typosquatting comprises additional evidence of Respondent’s bad faith and registration under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expesia.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 21, 2009
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