Expedia, Inc. v. Grand Slam Co.
Claim Number: FA1012001361168
Complainant is Expedia, Inc. (“Complainant”), represented by Evan M. W. Stern of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Grand Slam Co. (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com>, registered with Tucows, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 2, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wexpedia.com, postmaster@wwexpedia.com, postmaster@wwwlexpedia.com. Also on December 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names.
3. Respondent registered and used the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia Inc., is an online travel company offering a full line of travel services from its website, <expedia.com>. Complainant has been doing business in this field since 1996. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719 issued January 26, 1999) for its EXPEDIA mark. The EXPEDIA mark is used in support of Complainant’s web-based full line travel services.
Respondent, Grand Slam Co., registered the earliest of the disputed domain names on July 8, 2000. The disputed domain names redirect Internet users to a website offering sports betting services.
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 contends that it has established rights in the EXPEDIA mark via registration with a federal trademark authority, the USPTO (e.g., Reg. No. 2,220,719 issued January 26, 1999). Previous panels have found that trademark registration with a federal trademark authority establishes rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Thus, the Panel holds that Complainant has established rights in its EXPEDIA mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names are confusingly similar to its own EXPEDIA mark. The disputed domain names all include the mark in its entirety while only adding the letters “w” and “l” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to differentiate its disputed domain names from Complainant’s EXPEDIA mark by adding letters and a gTLD to the mark. See Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent’s domain name <eebay.com> is confusingly similar to the complainant’s registered EBAY trademark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that Respondent’s <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names are confusingly similar to Complainant’s EXPEDIA mark according to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
The Panel finds that Complainant has met its prima facie burden against Respondent. Previous panels have found that the burden shifts to Respondent to prove it has rights or legitimate interests in a mark after Complainant has made its prima facie case. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). When a Respondent fails to provide an answer to the initial Complaint, the Panel may assume that it does not have rights or legitimate in the disputed domain names, <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com>. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”) ; see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). However, even without an answer from Respondent the Panel will still examine the record fully to determine whether it has rights or legitimate interests in the disputed domain names according to the factors enumerated in Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. Respondent has failed to bring forth any evidence to contradict that contention and show that it is commonly known by the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names. The WHOIS information indentifies the registrant as “Grand Slam Co.,” which Complainant contends is not similar to the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names. Respondent’s disputed domain names redirect Internet users to a third-party site offering sports betting services for which Respondent apparently receives a fee. The Panel holds that Respondent’s use of the disputed domain names to redirect Internet users to a third-party site offering sports betting services for a fee is not a bona fide offering of good or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Respondent’s use of the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names are examples of typing mistakes associated with a search for Complainant’s mark; therefore, Respondent is engaging in typosquatting. The Panel finds that Respondent’s engagement in typosquatting is further affirmative evidence that it does not retain rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant). Thus, the Panel holds that Respondent has not established any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s <wexpedia.com>, <wwexpedia.com>, <wwwlexpedia.com> domain names redirect Internet users to website offering sports gambling services. Complainant contends that Respondent’s usage of its mark constitutes bad faith registration and use based upon the fact that it redirects Internet users looking for Complainant’s services to this gambling site for pecuniary gain. The Panel finds that Respondent’s use of the confusingly similar domain names to redirect users to a gambling website is bad faith registration and use on the part of Respondent pursuant to Policy ¶ 4(b)(iv). See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent linked the domain name <marssmusic.com>, which is identical to the complainant’s mark, to a gambling website).
Complainant also contends that Respondent’s usage of the <wexpedia.com>, <wwexpedia.com>, and <wwwlexpedia.com> domain names constitutes bad faith registration and use because it is an example of typosquatting. Previous panels have found that the usage of common misspellings including the failure to include the period between www and the mark to be examples of typosquatting and evidence of bad faith registration and use. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). Therefore, the Panel holds that Respondent has used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <wexpedia.com>, ,<wwexpedia.com>, <wwwlexpedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 13, 2011
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