Expedia, Inc. v. Hotelsistanbul
Claim Number: FA1203001432531
Complainant is Expedia, Inc. (“Complainant”), represented by Nathan E. Ferguson of Wilson Sonsini Goodrich & Rosati, Washington, USA. Respondent is Hotelsistanbul (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediabooking.com>, registered with GoDaddy.com, LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 2, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <expediabooking.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2012 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@expediabooking.com. Also on March 5, 2012, 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.
A timely Response was received and determined to be complete on March 8, 2012.
On March 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
1. “I am Turkish. Please send to me all the informations in Turkish language so I can know what you do. ExpediaBooking.com was used as a comparison site but now I took that informations away and you can be happy. Okay?”
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."
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.
Preliminary Issue: Respondent’s Response
As noted above, Respondent’s main part of its response to this proceeding is a request that the information about the case be provided in the Turkish language. The Panel notes that, under UDRP Rule 11, the language of the proceeding is English as verified by the Registrar. Further, it has been verified that Respondent is bound by the GoDaddy.com, LLC 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”). The Panel therefore refuses Respondent’s request.
Complainant contends that it owns rights in its EXPEDIA and EXPEDIA.COM marks by virtue of its trademark registrations throughout the world. Complainant provides the Panel with a table of its trademark registrations. Complainant asserts that it owns trademark registrations for its EXPEDIA mark with OHIM (e.g., Reg. No. 372,060 registered May 7, 1999) and the USPTO (e.g., Reg. No. 2,220,719 registered January 26, 1999). See Complainant’s Exhibit E. As for the EXPEDIA.COM mark, Complainant asserts that it owns trademark registrations with CIPO (Reg. No. TMA543433 registered April 4, 2001) and the USPTO (e.g., Reg. No. 2,405,746 registered November 21, 2000). See Complainant’s Exhibit E.
The Panel notes that Complainant only provides copies of its USPTO trademark certificates for its EXPEDIA mark in Complainant’s Exhibit F and that Complainant does not provide any evidence of its other trademark registrations, aside from the information contained in the table of Complainant’s Exhibit E. Nevertheless, based on the evidence in the record, the Panel concludes that Complainant owns rights in its EXPEDIA and EXPEDIA.COM marks under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims that the <expediabooking.com> domain name is confusingly similar to Complainant’s EXPEDIA.COM mark because the disputed domain name incorporates the mark in its entirety. In comparing the EXPEDIA.COM mark with the disputed domain name, the Panel finds that the only difference between the two is the addition of the descriptive term “booking.”
The Panel determines, as did previous panels, that the addition of a descriptive term is not sufficient to distinguish the disputed domain name and holds that Respondent’s <expediabooking.com> domain name is confusingly similar to Complainant’s EXPEDIA.COM mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Rights or Legitimate Interests
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 alleges that Respondent does not own a trademark or service mark relating to Complainant’s EXPEDIA and EXPEDIA.COM marks or the <expediabooking.com> domain name. Complainant insists that it did not license or permit Respondent to use its marks in a domain name. The Panel acknowledges that Respondent does not contend that it is commonly known by the disputed domain name. The Panel also acknowledges that the WHOIS information lists “Hotelsistanbul” as the registrant of the disputed domain name, which the Panel finds not to be similar to the <expediabooking.com> domain name. Based on this evidence, the Panel determines that Respondent is not commonly known by the <expediabooking.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed 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).
Complainant asserts that Respondent’s <expediabooking.com> domain name resolves to a website that provides competing travel-related services, mainly hotel reservations.
The Panel resolves that Respondent’s use of the confusingly similar disputed domain name for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <expediabooking.com> domain name under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Complainant does not present arguments to any of the elements of Policy ¶ 4(b). Nevertheless, the Panel determines that Respondent’s registration and use of the <expediabooking.com> domain name disrupts Complainant’s business by competing with Complainant’s provision of travel services and as a consequence holds that Respondent registered and uses the <expediabooking.com> domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
In light of the fame and notoriety of Complainant's EXPEDIA and EXPEDIA.COM marks, it is inconceivable that Respondent could have registered the <expediabooking.com> domain name without actual and/or constructive knowledge of Complainant's rights in the marks.
The Panel is of the opinion that arguments of bad faith based on constructive notice are irrelevant; in line with UDRP case precedent which declines to find bad faith based on constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and the Panel therefore finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediabooking.com> domain name TRANSFERRED from Respondent to Claimant.
Calvin A. Hamilton, Panelist
Dated: March 29, 2012
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