Expedia, Inc. v.
Richard Mandanice
Claim
Number: FA0302000146598
Complainant is Expedia, Inc., Bellevue, WA USA (“Complainant”) represented by Brett A. August of
Pattishall McAuliffe Newbury Hilliard & Geraldson. Respondent is Richard Mandanice, Delson, PQ, CANADA
(“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <expedia-uk.com> registered with Parava Networks Inc d/b/a
Registrateya.Com Naame.Com.
The undersigned certifies that she has acted independently
and impartially and to the best of her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on February 24, 2003;
the Forum received a hard copy of the Complaint on February 26, 2003.
On February 25, 2003, Parava Networks Inc d/b/a
Registrateya.Com Naame.Com confirmed by e-mail to the Forum that the domain
name <expedia-uk.com> is registered
with Parava Networks Inc d/b/a Registrateya.Com Naame.Com and that Respondent
is the current registrant of the name. Parava Networks Inc d/b/a
Registrateya.Com Naame.Com has verified that Respondent is bound by the Parava
Networks Inc d/b/a Registrateya.Com Naame.Com 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 March 3, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 24, 2003 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@expedia-uk.com by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On March 31, 2003, pursuant to Complainant's request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the 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 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
makes the following assertions:
1. Respondent’s <expedia-uk.com> domain name is
confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does
not have any rights or legitimate interests in the <expedia-uk.com> domain name.
3. Respondent
registered and used the <expedia-uk.com>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant holds a number of trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark (Reg. No.
2,220,719 registered on January 26, 1999) in relation to a variety of goods and
services, including travel agency services. Since October 1996, Complainant has
been using the <expedia.com> domain name in connection with its goods and
services.
Respondent registered the <expedia-uk.com>
domain name on January 9, 2003. Respondent is using the disputed domain name to
divert Internet users to a pornographic website.
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.
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 established that it has rights in the EXPEDIA mark through
registration with the USPTO and continuous use in commerce since 1996.
Respondent’s <expedia-uk.com>
domain name is confusing similar to Complainant’s mark because the disputed
domain name integrates Complainant’s entire mark and adds a hyphen and the
letters “uk” to the end of the mark. The addition of a hyphen and the letters
“uk” do not significantly differentiate Respondent’s domain name from
Complainant’s mark because the mark is the dominant element of the domain name.
See InfoSpace.com v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”); see also JVC Americas Corp. v. Macafee,
CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by
Respondent, <jvc-america.com>, is substantially similar to, and nearly
identical to Complainant's JVC mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent has not submitted a Response in this proceeding. Therefore, the
Panel may make reasonable inferences in favor of the Complainant and accept
Complainant’s reasonable allegations as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec.
21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless clearly contradicted by the
evidence).
Moreover, the Panel may infer that Respondent has no rights to or
legitimate interests in the disputed domain name because of Respondent’s
failure to respond to the Complaint. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names); see also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name because the Respondent never submitted
a response nor provided the Panel with evidence to suggest otherwise).
Respondent is using the <expedia-uk.com>
domain name to divert Internet traffic to a pornographic website. The use of a
domain name confusingly similar to a registered trademark to divert Internet
consumers to a pornographic website is neither a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that infringing on another's well-known mark to provide a link
to a pornographic site is not a legitimate or fair use); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co.,
D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or
legitimate interests in the domain names <chargergirls.com> and
<chargergirls.net> where the Respondent linked these domain names to its
pornographic website).
Respondent has not provided the Panel with any evidence that it is commonly
known by either EXPEDIA UK or <expedia-uk.com>,
and there is no evidence in the record to the contrary. Therefore, Respondent
has failed to establish that it has rights to or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May
16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one
has been commonly known by the domain name prior to registration of the domain
name to prevail"); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Therefore, the Panel finds that Complainant has established Policy ¶
4(a)(ii).
Respondent is using the <expedia-uk.com>
domain name to divert Internet traffic to Respondent’s pornographic website.
The use of a domain name confusingly similar to a registered trademark to
divert Internet users to a pornographic website is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)
(finding that absent contrary evidence, linking the domain names in question to
graphic, adult-oriented websites is evidence of bad faith); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use).
Furthermore, preceding panels have found bad faith registration and use
involving this Respondent. This pattern of registering domain names confusingly
similar to registered trademarks evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See
Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent engaged in a pattern of conduct of registering domain
names to prevent the owner of the trademark from reflecting the mark in a
corresponding domain name, which is evidence of registration and use in bad
faith); see also General Elec. Co. v.
Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the
Respondent engaged in a pattern of conduct, by registering over fifty domain
names such as <amazondirect.com> and <lycosdirect.com>, and
intended to prevent holders from using their marks in corresponding domain names).
Accordingly, the Panel finds that Complainant has established Policy ¶
4(a)(iii).
Having established all three elements required under ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expedia-uk.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin,
Panelist
Dated: April 7, 2003
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