national arbitration forum

 

DECISION

 

Expedia Inc. v. Kapil Giri c/o Seasonal Travel Makers Pvt. Ltd.

Claim Number: FA0910001290186

 

PARTIES

Complainant is Expedia Inc. (“Complainant”), represented by Matthew J. Kuykendall, of Wilson Sonsini Goodrich & Rosati, California, USA.  Respondent is Kapil Giri c/o Seasonal Travel Makers Pvt. Ltd (“Respondent”), Nepal.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nepalexpedia.com>, registered with Onlinenic.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2009.

 

On October 21, 2009, Onlinenic confirmed by e-mail to the National Arbitration Forum that the <nepalexpedia.com> domain name is registered with Onlinenic and that Respondent is the current registrant of the name.  Onlinenic has verified that Respondent is bound by the Onlinenic 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 October 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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 postmaster@nepalexpedia.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)   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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nepalexpedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nepalexpedia.com> domain name.

 

3.      Respondent registered and used the <nepalexpedia.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Expedia Inc., uses its EXPEDIA mark in connection with the provision of online access to airline, car rental, and hotel reservations through Complainant’s websites.  Complainant is the owner of numerous trademark registrations for the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 2,220,719 issued January 26, 1999) and many other governmental trademark authorities worldwide.  

 

Respondent registered the <nepalexpedia.com> domain name on April 5, 2009.  The disputed domain name resolves to a website that purports to offer travel services that are in direct competition with the services that Complainant offers under its EXPEDIA mark. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of its EXPEDIA mark (i.e., Reg. No. 2,220,719 issued January 26, 1999) with the USPTO sufficiently demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i).  Furthermore, the Panel finds that it is not necessary for Complainant to have registered its EXPEDIA mark in the country of Respondent’s residence.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).

 

Respondent’s disputed domain name incorporates Complainant’s EXPEDIA mark in its entirety with the addition of the geographic descriptive term “nepal” and the affixation of the generic top-level domain “.com.”  The Panel finds that these alterations do not serve to sufficiently differentiate the disputed domain name from Complainant’s EXPEDIA mark.  Thus, the Panel finds that Respondent’s <nepalexpedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <nepalexpedia.com> domain name.  Once Complainant makes 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).  The Panel finds that Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent is using the disputed domain name to offer travel services that are in direct competition with Complainant.  The Panel finds that Respondent’s use of <nepalexpedia.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). 

 

Furthermore, Complainant contends that Respondent is not commonly known by the <nepalexpedia.com> domain name under Policy ¶ 4(c)(ii).  The WHOIS information identifies the registrant as “Kapil Giri c/o Seasonal Travel Makers Pvt. Ltd.” which bears no resemblance to the disputed domain name.  Thus, the Panel concludes that Respondent is not commonly known by the <nepalexpedia.com> domain name under Policy ¶ 4(c)(ii).  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

The Panel finds that Respondent’s registration and use of the <nepalexpedia.com> domain name to operate a travel services website in direct competition with Complainant constitutes a disruption to Complainant’s business and thus, qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

Complainant further asserts that Respondent is using the confusingly similar disputed domain name to intentionally divert Internet users to the associated website.  The Panel assumes that Respondent is attempting to profit by creating a likelihood of confusion between Complainant’s EXPEDIA mark and the disputed domain name.  The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

            The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

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 <nepalexpedia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 30, 2009

 

 

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