Expedia, Inc. v. Alexandru Stamate
Claim Number: FA1411001588623
Complainant is Expedia, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Alexandru Stamate (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expedia-flights.net>, registered with NameSilo, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 7, 2014, NameSilo, LLC confirmed by e-mail to the National Arbitration Forum that the <expedia-flights.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2014 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@expedia-flights.net. Also on November 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
Factual and Legal Grounds
Complainant’s Marks
The Complainant owns the EXPEDIA trademarks (the “Marks”) and makes extensive use of these Marks such that they have become extraordinarily famous throughout the world. Complainant is one of the largest online, full-service travel companies allowing customers around the world to reserve flights, hotels, cruises, tours, and car rentals through its more than 150 travel booking sites in more than 70 countries. Complainant’s supply portfolio includes more than 145,000 hotels, 300 airlines, and numerous car rental companies, cruise companies, and other travel suppliers. Each month, approximately 60 million unique visitors access Complainant’s web sites to research, plan, and book travel.
Complainant adopted the EXPEDIA Marks in 1996 and has continuously used them since that time. Complainant traded on the NASDAQ Stock Exchange under the ticker symbol EXPE. Its travel services have been promoted through its Expedia.com and other websites throughout the world as well as through online, print, and television advertising campaigns, email communications. In fact, the Expedia.com site was named the World’s Leading Online Travel Agency Website at the 2013 World Travel Awards. This web site received more than 23,000,000 visits during July 2014 and is currently ranked as the 156th most visited website in the United States and the 497th most visited website in the entire world. Complainant also owns and uses a number of other domain names that include the EXPEDIA Mark to redirect Internet traffic to web pages on the Expedia.com web site, including, by way of example, Expediamaps.com, Expediacustomer.com, Expedia-café.com, Expediaeliteplus.com, Expedia.org, Expedia.net, Expedia.us, and Expedia.biz.
Complainant also values its ethical and community service obligations to its partners and to the world. Through its Annual Community Service Day Complainant’s employees volunteered to assist the World Heritage Alliance in sustaining the Olympic National Park in Washington state and the Sian Ka’an biosphere reserve on the east coast of Mexico’s Yucatán peninsula.
As a result of Complainant’s longstanding use and promotion of the EXPEDIA Marks, the consuming public and the trade recognize and associate the EXPEDIA Marks with Complainant and its high quality services and products. Indeed, in a past UDRP proceeding regarding the domain name Expediabooking.com, a Panel noted the fame and notoriety of the EXPEDIA and EXPEDIA.COM marks. Expedia, Inc. v. Hotelsistanbul, NAF (March 29, 2012). Even as early as 2003, the EXPEDIA mark was recognized as a “well-known” trademark by another Panel. Expedia, Inc. v. Jim West Cruises, WIPO Case No. D2003-0429 (“Pairing of the Complainant’s well-known trademark with the generic word ‘cruise’ is likely to lead Internet users to believe that the Domain Name is a site affiliated with Complainant.”). See also Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716 (noting that Expedia is a “well-publicized Internet travel company”).
Finally, the EXPEDIA Marks are registered in many countries and geographic regions around the world, including the United States and the European Union (which incorporates, amongst others, Respondent’s home country of Romania). Complainant’s trademark registrations include the following:
Mark Goods and Services Reg. No. (Country) Reg. Date
EXPEDIA IC 039. US 100 105. G & S: travel agency services, namely, making reservations and bookings for transportation; providing information concerning travel and travel-related topics; providing guidebooks, travel news, maps, city directories and listings for use by travelers available electronically via a global computer network; providing travel information over computer networks and global communication networks. FIRST USE: 19961022. FIRST USE IN COMMERCE: 19961022 2220719 (US) 28-Jan-1999 (Filed 9-Apr-1996)
EXPEDIA IC 042. US 100 101. G & S: travel agency services, namely, making reservations and bookings for temporary lodging. FIRST USE: 19961022. FIRST USE IN COMMERCE: 19961022 2224559 (US) 16-Feb-1999 (Filed 9-Apr-1996)
EXPEDIA Cl. 09 Computer software; computer software for providing geographic maps, travel route information and recommendations, and travel information guides.
Cl. 39 Travel agency services and ticketing services; providing electronic information concerning travel and travel destinations.
Cl. 41 Educational services pertaining to travel and travel destinations. 372060 (CTM) 7-May-1999 (Filed 24-Sep-1996)
EXPEDIA.COM Cl. 39 Travel agency services and ticketing services; providing electronic information concerning travel and travel destinations.
Cl. 41 Educational services pertaining to travel and travel destinations. 1240449 (CTM) 25-Jan-2001 (Filed 12-Jul-1999)
Respondent’s Registration Of The <Expedia-flights.net> Domain Violates The Policy.
For the following reasons, the <Expedia-flights.net> domain violates all three elements of the Policy ¶4(a) and, as such, should be ordered TRANSFERRED to Complainant.
The <Expedia-flights.net> Domain Is Identical or Confusingly Similar to the EXPEDIA Marks under Policy ¶4(a)(i).
Respondent’s <Expedia-flights.net> is confusingly similar, on its face, to Complainant’s registered and distinctive EXPEDIA Marks given that it encompasses Complainant’s identical Mark. Consumers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <Expedia-flights.net>.
Numerous Panel decisions have held that the addition of generic or other words to a complainant’s trademark, creates a confusingly similar domain name. See, e.g., Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 (In ordering the domain <comericaonline.com> transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Expedia, Inc. v. Expedia India Tours, NAF Claim No. FA 1459323 (2012) (In relation to the domain expediaindiatours.com, the Panel stated “[t]hese alterations of the mark, made in forming the domain name, fail to distinguish the domain name from Complainant’s mark under the standards of the Policy.”); Expedia, Inc. v. Inertia 3D, NAF Claim No. 1118154 (2008) (Panel ordered a transfer of the domain expediahosting.com noting that “the disputed domain name includes the entire mark and merely adds the generic term “hosting” and the generic top-level domain ‘.com.’ These additions are insufficient to distinguish the domain name from the mark under Policy ¶4(a)(i).”)
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts consumers by using an identical copy of the EXPEDIA Marks followed by the additional word “flights” thereby making internet users think that the domain is owned by Complainant and that it reliably leads to one of its legitimate sites. Confusion is made all the more likely by the fact that a prominent part of Complainant’s services is the booking of airline flights for its customers. Expedia, Inc. v. Ya Wang, NAF Claim No. FA 1279342 (2009) (In ordering the domain vegasexpedia.com transferred, the Panel noted that “the addition of the prefix ‘vegas’ to Complainant’s EXPEDIA mark may actually increase confusion because Complainant offers travel services in numerous cities around the United States, including Las Vegas, Nevada.”)
Finally, the addition of the .net gTLD does nothing to alleviate confusion between the EXPEDIA Marks and the <Expedia-flights.net> domain. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (“Indeed, it is well-settled that the mere addition of a TLD to a famous trademark does not avoid confusing similarity”); Reese v. Morgan, NAF Claim No. 917029 (2007) (Finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent has no rights or legitimate interest in the Disputed Domain Under Policy ¶4(a)(ii).
Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests in the <Expedia-flights.net> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). The <Expedia-flights.net> domain formerly resolved to what appeared to be a site duplicating or perhaps framing the legitimate content of the Expedia.com website but directing users to a Bitcoin payment site at the point where they were ready to pay for their travel purchases.[1] At this Bitcoin payment site the user would be asked to input a variety of sensitive, personal information typical to such financial transactions.
The use of a confusingly similar domain to redirect visitors to a complainant’s own website (or a copy thereof) has been held not to provide the respondent with any rights or legitimate interest in the domain. In Kabam, Inc. v. iKabam, Inc., WIPO Case No. D2012-1025 the respondent’s website was “a close imitation of the Complainant’s website” and was “clearly intended to mislead Internet users into believing that the website is either that of the Complainant or is somehow connected or authorised by it.” Id. The Panel unequivocally held that “[w]hen a respondent attempts to pass itself off as the complainant by imitating the complainant’s website, it is evidence that the respondent lacks rights or legitimate interests in the domain name”. Also, in PersonalizationMall.com v. Ryan G Foo / PPA Media Services, NAF Claim No. 1563873 (2014), the respondent’s disputed domain resolved to complainant’s own web page. The Panel found that “Respondent is not using the disputed domain name <personalisationmall.com> for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(ii), as the disputed domain name resolves to Complainant’s own website, through means over which Complainant has no control.” Id., citing, Direct Line Ins. plc v. Low-cost-domain, NAF Claim No. 1337658 (2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). The facts of the present case similarly provide the Respondent with no rights or legitimate interest in the <Expedia-flights.net> domain.
Next, by virtue of its copying or framing legitimate content from the Expedia.com site, Respondent’s website made extensive use of Complainant’s imagery and created the appearance of the legitimate Expedia.com website. Such imagery include the EXPEDIA Marks, blue-sky web graphics and information input fields which were identical or substantially similar those appearing at the genuine Expedia.com site. Use of such imagery to convey the false impression that a website is associated with and controlled by a brand owner has been found to be evidence that a respondent did not have a bona fide interest in disputed domains. See, e.g., King.com Limited and Midasplayer.com Ltd. v. Whoisguard, Inc. / Raymond Tan, WIPO Case No. D2013-1986 (No bona fide offering of products or services found where “the websites associated to each of the disputed domain names show several of Complainant’s copyrighted graphical elements and trademarks and … such websites are primarily set up for commercial gain to take unfair advantage of Complainant’s trademarks and reputation.”)
Furthermore, upon information and belief, Respondent’s name is “Alexandru Stamate” and he is not commonly known by any of the EXPEDIA Marks, nor does Respondent operate a legitimate business or other organization under such marks or names and does not own any trademark or service mark rights in these names. Policy ¶4(c)(ii). See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <Expedia-flights.net> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Respondent’s website could easily be used for fraud or the improper gathering of personal information if visitors attempt to book travel through the site or input their personal information at the Bitcoin site to which they are eventually directed. In any event, Respondent’s site does not fit into any accepted notion of fair use such as comment, criticism, political, etc. Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 (Use of the PORSCH trademark, in a domain name, to attract potential customers to respondent’s auto loan business serving all vehicle brands was commercial and did not constitute a legitimate or fair use of the domain. Id.
Respondent Registered The <Expedia-flights.net> In Bad Faith Under Policy ¶4(a)(iii).
The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See, Policy ¶4(b)(iv).
Respondent intentionally used the EXPEDIA Marks without consent from Complainant. Respondent was put on actual notice of Complainant’s rights in its world-famous EXPEDIA Marks through its extensive and worldwide prior use thereof as well as its various trademark registrations which predate the creation of the <Expedia-flights.net>. See, Expedia, Inc. v. Hotelsistanbul, supra, (“In light of the fame and notoriety of Complainant’s EXPEDIA and EXPEDIA.COM marks, it is inconceivable that Respondent could have registered the [disputed] domain name without actual and/or constructive knowledge of Complainant’s rights in the marks.”) Moreover, the content on Respondent’s website, namely the extensive use of the EXPEDIA Marks and Complainant’s imagery, reveals that Respondent has actual knowledge of the Marks and is purposefully trading on them. Therefore, Respondent knowingly and intentionally registered and is using the <Expedia-flights.net> domain in violation of Complainant’s rights in its Marks.
Further, the use of the <Expedia-flights.net> domain to display content that framed or is substantially identical to the Expedia.com website content under this domain reinforces the fact that Respondent knew of Complainant and intentionally sought to violate the rights in its EXPEDIA Marks. See, PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888 (“Further evidence of Respondent's awareness of Complainant's existence and business is clear from the immediate redirection of users who visit the Disputed Domain Name to Complainant's own website. * * * There is no conceivable explanation by which Respondent could have registered the Disputed Domain Name in good faith.”).
Also, the use of identical website content only serves to increase customer confusion that the domain name is somehow licensed or controlled by Complainant. Kabam, Inc., supra, (“the fact that the Respondent has set up a website that imitates the Complainant’s website, trade marks, logos, images and also uses the Complainant’s games’ names show a clear intention to confuse and mislead Internet users into believing that the Respondent’s website is and the products sold on them are authorised or endorsed by the Complainant for commercial gain. The Panel concludes the above is clearly bad faith under paragraph 4(b)(iv) of the Policy.”)
Respondent was likely seeking to obtain commercial gain from its use of the website at the <Expedia-flights.net> domain by either earning affiliate credits from forwarding visitors to Complainant’s Expedia.com website, by forwarding visitors to the Bitcoin website for payment, or by gathering visitors’ personal information at either the <Expedia-flights.net> or the Bitcoin site. Any of these activities would be considered highly indicative of Respondent’s bad faith intent to earn commercial gain for itself or others from its registration and use of the <Expedia-flights.net> domain. See, e.g., Direct Line Insurance plc, supra, (Where domain redirected users to complainant’s own site for click-through or affiliate revenue “[t]he Panel finds that this scheme to appropriate Complainant’s mark and profit from its misuse demonstrates bad faith registration and use under Policy ¶4(b)(iv).”); Kabam, Inc., supra, (Where “Respondent has set up a website that imitates the Complainant’s website” for commercial gain, “[t]he Panel concludes the above is clearly bad faith under paragraph 4(b)(iv) of the Policy.”); Wal-Mart Stores, Inc. v. Moniker Privacy Services / domain admin GREAT ECHO LTD., WIPO Case No. D2011-2320 (“Respondent has likely obtained commercial gain from its use of the website either by selling visitors’ personal information or receiving compensation from the owners of third-party websites to which the disputed domain name directs. … Thus, the Panel concludes that the Respondent intentionally attempted to attract Internet users to the website, for commercial gain, by creating a likelihood of confusion.”)
Summation
All of the facts in this case strongly demonstrate that Respondent has registered and used the <Expedia-flights.net> domain in bad faith. The worldwide fame of the EXPEDIA trademarks and their use in the <Expedia-flights.net> domain, the content on Respondent’s website, and the opportunity for commercial activity on that site, all indicate that all the elements of Policy ¶4(a) have been satisfied.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant owns rights in its EXPEDIA mark by virtue of its trademark registrations throughout the world. For instance, Complainant owns trademark registrations for its EXPEDIA mark with Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 372,060 registered May 7, 1999) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719 registered January 26, 1999). Complainant has adequately proven its rights in its EXPEDIA mark under Policy ¶4(a)(i) through these registrations. 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 the <expedia-flights.net> domain name is confusingly similar to Complainant’s EXPEDIA mark because the disputed domain name incorporates the mark in its entirety. Respondent’s <expedia-flights.net> domain name adds the related generic term “flights,” a hyphen to separate the term “flights” from Complainant’s EXPEDIA mark, as well as the generic top-level domain (“gTLD”) “.net.” Prior panels have continuously held these types of minor variations do not adequately distinguish a complainant’s mark from a respondent’s disputed domain name under the UDRP. See Expedia, Inc. v. Inertia 3D, NAF Claim No. 1118154 (2008) (Panel ordered a transfer of the domain expediahosting.com noting that “the disputed domain name includes the entire mark and merely adds the generic term “hosting” and the generic top-level domain ‘.com.’ These additions are insufficient to distinguish the domain name from the mark under Policy ¶4(a)(i).”); see also 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 Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). It seems evident Respondent’s <expedia-flights.net> domain name is confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed domain name, which seems obvious in light of the WHOIS information. Respondent does not dispute this. Complainant claims Respondent does not own a trade mark or service mark relating to Complainant’s EXPEDIA mark or the <expedia-flights.net> domain name, which Respondent also does not contradict. Complainant did not license or permit Respondent to use Complainant’s marks in a domain name. Based on this evidence, it seems evident Respondent is not commonly known by the <expedia-flights.net> 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).
Respondent is not making a bona fide offering of goods or services under the disputed domain name. Respondent’s website does not currently resolve to any website because it was suspended by the hosting provider after receiving a so-called “take-down notice” from Complainant. Failing to make an active use of a domain name does not create rights or legitimate interests in a domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)).
Respondent’s previous website copied Complainant’s website for the purpose of appearing as Complainant’s legitimate business. Respondent displayed Complainant’s EXPEDIA mark predominantly on the top of the resolving website. Respondent displayed “flying from” and “flying to” options, along with departing and returning dates. While Respondent appeared to have mimicked Complainant’s website in many ways, Respondent used a Bitcoin link to pay for tickets (which required users to enter a great deal of personal information Complainant would not require). Respondent’s use of the confusingly similar disputed domain name for such purposes 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 <expedia-flights.net> 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <expedia-flights.net> domain name in bad faith under Policy ¶4(b)(iii). Respondent’s prior use of the disputed domain name to resolve to a website competing and attempting to pass itself off as Complainant indicates bad faith. Respondent’s registration and use of the <expedia-flights.net> domain name disrupts Complainant’s business by competing with Complainant’s provision of travel services. Respondent registered and uses the <expedia-flights.net> 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).
Complainant suggests Respondent registered the disputed domain name to obtain commercial gain from earning affiliate credits from forwarding visitors to Complainant’s website, forwarding visitors to Bitcoin website for payment, or by gathering visitor’s personal information at either the disputed domain name or the Bitcoin site. Frankly, the first allegation is a vague for this Panel to credit. Complainant should be able to determine if Respondent was acting as an affiliate. Since Complainant does not affirmatively state Respondent is an affiliate, the Panel will disregard this claim even though Respondent has not responded. Respondent does not dispute the remaining two claims. Registering a disputed domain name for the purpose of confusing Internet users and commercially profiting from their confusion indicates bad faith use and registration under Policy ¶4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). Respondent has attempted to pass itself off as Complainant in this scheme. This constitutes acting in bad faith under Policy ¶4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant claims it is inconceivable Respondent could have registered the <expedia-flights.net> domain name without actual knowledge of Complainant’s rights. This Panel would generally agree. Respondent’s use of the dispute domain name makes it pretty clear it knew about Complainant’s mark. 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <expedia-flights.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, December 9, 2014
[1] The domain currently does not resolve to any website due to its being suspended by the hosting provider after receiving a take-down notice from Complainant. Unfortunately, prior to this takedown Complainant was unable to obtain a screenshot of the Bitcoin page to which visitor were directed for payment.
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