Expedia Inc. v. Domain Names, by Proxy, Inc. c/o domainnamesbyproxy.com Inc.
Claim Number: FA0812001238590
Complainant is Expedia,
Inc. (“Complainant”), represented by Aaron
D. Hendelman, of Wilson Sonsini Goodrich & Rosati,
The domain names at issue are <expefdia.com> and <expedia-search.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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 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 and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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:
1. Respondent’s <expefdia.com> and <expedia-search.com> domain names re confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expefdia.com> and <expedia-search.com> domain names.
3. Respondent registered and used the <expefdia.com> and <expedia-search.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia Inc., is an online travel services
provider. Complainant operates this
business under its EXPEDIA mark, and operates its online services from its
<expedia.com> domain name.
Complainant has registered its EXPEDIA mark with multiple governmental
trademark authorities. Complainant’s
predecessor first registered its EXPEDIA mark with the United States Patent and
Trademark Office (“USPTO”) on
Respondent registered the <expefdia.com> domain name on
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 provided evidence of the registration of its EXPEDIA mark with the USPTO. The Panel finds Complainant has provided sufficient evidence to establish rights in its EXPEDIA mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Respondent’s <expefdia.com> domain name incorporates Complainant’s
EXPEDIA mark with the additions of the letter “f” and the generic top-level
domain “.com.” The Panel finds the
introduction of typographical errors, such as the addition of a letter, does
not distinguish the disputed domain name from Complainant’s mark for the
purposes of the Policy. See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat.
Arb. Forum Nov. 18, 2000) (finding that, by misspelling
words and adding letters to words, a respondent does not create a distinct mark
but nevertheless renders the domain name confusingly similar to the
complainant’s marks); see also America Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10,
2002) (“The misspelling of a famous mark does not diminish the confusingly
similar nature between the marks and the disputed domain names.”). Also,
the Panel finds the addition of a top-level domain is irrelevant in evaluating
the similarity between a domain name and a mark because a top-level domain is a
required element of every domain name. See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA
153545 (Nat. Arb. Forum
Respondent’s <expedia-search.com> incorporates Respondent’s EXPEDIA mark with the additions of a hyphen, the generic term “search” and the generic top-level domain “.com.” The Panel finds these alterations do not distinguish the disputed domain name from Complainant’s mark and thus finds the <expedia-search.com> domain name is confusingly similar to Complainant’s EXPEDIA mark under Policy ¶ 4(a)(i). See American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not possess rights or legitimate interests in the disputed domain names. Complainant must present a prima facie case to support these allegations before the burden shifts to Respondent to prove otherwise. The Panel finds Complainant has presented an adequate prima facie case to support its allegations. Respondent has failed to respond to these proceedings; therefore, the Panel may conclude Respondent does not possess rights or legitimate interests in the disputed domain names. The Panel, however, will examine the record and determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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.”).
Respondent is using the disputed domain names to advertise online travel services, including those of Complainant and Complainant’s competitors. The Panel finds Respondent’s use of the disputed domain names is not 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). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
Complainant contends Respondent is not commonly known by the disputed domain names. The WHOIS information and record do not indicate Respondent has ever been commonly known by the disputed domain names. Furthermore, Complainant maintains it has never authorized Respondent to use its EXPEDIA mark in any manner. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to display links to Complainant and to third-party websites that compete with Complainant. The Panel finds Respondent’s actions constitute disruption of Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also American Airlines, Inc. v. Texas Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the disputed domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent presumably receives compensation in the form of click-through fees for its use of the confusingly similar disputed domain names. The Panel finds Respondent’s uses are an attempt to profit from the goodwill Complainant has established in its EXPEDIA mark. The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds 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 <expefdia.com> and <expedia-search.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 27, 2009
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