Expedia, Inc. v. Expedia India Tours
Claim Number: FA1208001459323
Complainant is Expedia, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, Washington, USA. Respondent is Expedia India Tours (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediaindiatours.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 22, 2012; the National Arbitration Forum received payment on August 23, 2012.
On August 24, 2012, Directi Internet Solutions Pvt. Ltd., d/b/a PublicDomain-Registry.com confirmed by e-mail to the National Arbitration Forum that the <expediaindiatours.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Public-DomainRegistry.com has verified that Respondent is bound by the Directi Inter-net Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 August 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@expediaindiatours.com. Also on August 29, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 September 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant began using the EXPEDIA service mark as early as October 1996 in connection with the marketing of online travel services.
Complainant holds registrations for the EXPEDIA service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,220,719, registered January 26, 1999).
Respondent registered the <expediaindiatours.com> domain name on or about March 5, 2011.
Respondent’s <expediaindiatours.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
Respondent has not been commonly known by the <expediaindiatours.com> domain name.
Respondent has not been licensed or otherwise permitted to use Complainant’s EXPEDIA mark.
Respondent uses the <expediaindiatours.com> domain name to resolve to Re-spondent’s business website, at which Respondent provides hotel reservations and car rentals which compete with the services provided by Complainant.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent has registered and uses the <expediaindiatours.com> domain name in bad faith to take advantage of the goodwill associated with Complainant’s EXPEDIA mark.
Respondent knew of Complainant’s rights in the EXPEDIA mark when it regis-tered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the EXPEDIA service mark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding that a UDRP complainant’s registration of its HONEYWELL mark sufficient to establish it’s rights in the mark under the Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of para-graph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Turning then to the central question arising under Policy ¶ 4(a)(i), we find from our review of the record that Respondent’s <expediaindiatours.com> domain name is confusingly similar to Complainant’s EXPEDIA mark. The domain name combines the entire EXPEDIA mark with the geographic term “india,” the term “tours,” which describes an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in form-ing the domain name, fail to distinguish the domain name from Complainant’s mark under the standards of the Policy. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the disputed domain name <indiaticketmaster.com> was confusingly similar to a UDRP complainant’s TICKETMASTER 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 a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been known by the <expediaindiatours.com> domain name, and that Respondent has not been licensed or otherwise permitted to use Complainant’s EXPEDIA mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Expedia India Tours,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <expediaindiatours.com> domain name so as to have demonstrated that it has rights to or legitimate int-erests in the contested domain name under Policy ¶ 4(c)(ii). See, for example, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <expediaindiatours.com> domain name to resolve to Respondent’s website, which sells hotel reservations and car rentals in competi-tion with the services provided by Complainant. Such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of the <expediaindiatours.com> domain name under Policy ¶ 4(c)(iii). See, for example, Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not con-stitute a bona fide offering of goods and services.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are satisfied from the evidence that Respondent registered and uses the <expediaindiatours.com> domain name to take advantage of the goodwill associated with Complainant’s EXPEDIA mark for the purpose of marketing travel-related services, such as hotel reservations and car rentals, in competition with the business of Complainant. Respondent is thus attempting to create con-fusion among Internet users as to the possibility of Complainant’s affiliation with the disputed domain name for Respondent’s commercial benefit. This is evi-dence that Respondent registered and uses the <expediaindiatours.com> domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith use and registration of domain names by using domain names that were identical or confusingly similar to a UDRP complainant’s mark to redirect users to a website offering services similar to those offered by that complainant).
We are also persuaded from the evidence that Respondent knew of Complain-ant’s rights in the EXPEDIA mark when it registered the contested domain name. This, too, is evidence of bad faith registration of the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a disputed domain name where a respondent was "well-aware of” the complainant's YAHOO! mark at the time of registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <expediaindiatours.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 8, 2012
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