Expedia, Inc. v. JH Kang
Claim Number: FA1705001732787
Complainant is Expedia, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is JH Kang (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediade.xyz>, registered with Uniregistrar Corp.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 22, 2017.
On May 23, 2017, Uniregistrar Corp confirmed by e-mail to the Forum that the <expediade.xyz> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 May 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2017 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@expediade.xyz. Also on May 25, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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" 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 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 uses the EXPEDIA marks in connection with its online travel marketplace. Complainant registered the EXPEDIA marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719, registered Jan. 26, 1999), as well as in numerous other jurisdictions, which demonstrates its rights in the mark. Respondent’s <expediade.xyz> is confusingly similar to Complainant’s marks because it incorporates the marks in their entirety, adding only the geographic code “de” (for the country of Germany) and the generic top-level domain name (“gTLD”) “.xyz,” neither of which meaningfully distinguishes the domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <expediade.xyz>. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the EXPEDIA marks for any purpose. Respondent also fails to use the disputed domain name in connection with any bona fide offering of goods or services, because the domain name does nothing more than host a collection of pay-per-click links. Further, many of the links reference Complainant itself or direct Internet users to the websites of Complainant’s competitors, which does not constitute a bona fide offering or legitimate commercial use of any kind.
Respondent registered and continues to use <expediade.xyz> in bad faith. Respondent’s use of the disputed domain name involves attracting Internet users to its site using Complainant’s notoriety, so that it may financially profit by way of pay-per-click advertisements. Some of these hyperlinks direct traffic to websites that compete with Complainant, causing a disruption of Complainant’s business activities. Further, Respondent employs typosquatting to enhance confusion among Internet users with a domain name that is confusingly similar to one of Complainant’s. Finally, Respondent must have had actual notice of Complainant’s rights in the EXPEDIA marks because of their widespread notoriety, which is evidenced by the host of links on the disputed domain name’s resolving website that directly reference or compete with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <expediade.xyz> domain name.
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.
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(f), 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 (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.”).
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant claims to have registered the EXPEDIA marks—used in a marketplace for travel-related goods and services—with the USPTO as early as 1999 (e.g., Reg. No. 2,220,719, registered Jan. 26, 1999), which it contends demonstrates its longstanding rights in the marks. Additionally, Complainant claims to have registered the EXPEDIA mark in other jurisdictions around the world. Registration of a mark with the USPTO and other entities sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel concludes that Complainant has established its rights in or to the EXPEDIA marks under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its EXPEDIA marks because it is composed entirely of the mark, with only two minor additions: the two-letter country code “de” (for Germany), and a “.xyz” gTLD. Neither of these, Complainant argues, sufficiently distinguishes the disputed domain name from its EXPEDIA marks. The addition of geographic terms—particularly those which describe a place where a complainant conducts corporate activities—fails to sufficiently distinguish domain names from registered marks. See, e.g., Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the Internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Further, the addition of the “.xyz” gTLD is insufficient to preclude a finding of confusing similarity. See, e.g., AbbVie Inc v. Konayem Temirtassova, FA 1604178 (Forum Mar. 12, 2015) (“Respondent cannot escape responsibility for using a well-known and registered trademark of another by simply adding the gTLD .xyz . . .”). Therefore, this Panel finds that the additions made to Complainant’s EXPEDIA marks in <expediade.xyz> do not serve to differentiate the two for the purposes of Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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 argues that Respondent has no rights or legitimate interests in the <expediade.xyz> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the EXPEDIA marks, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information concerning <expediade.xyz> identifies “JH Kang” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. The Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <expediade.xyz> domain name pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent uses the disputed domain name’s resolving site to host hyperlinks, many of which reference or direct traffic to Complainant’s competitors. This constitutes neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant contends Respondent also financially profits from <expediade.xyz> by way of pay-per-click advertisements. Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel agrees that Complainant sufficiently made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant makes two prominent assertions that fall within the articulated provisions of Policy ¶ 4(b); that Respondent registered and uses the disputed domain name to disrupt Complainant’s business under Policy ¶ 4(b)(iii), and for commercial gain of the kind articulated in Policy 4(b)(iv). Complainant alleges that Respondent uses <expediade.xyz> to host links to the websites of Complainant’s commercial competitors, which disrupts Complainant’s business by presenting directly competing products and services. This sort of disruption can be evidence of bad faith on the part of a respondent. Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to a competing website). Further, Complainant contends, Respondent uses the disputed domain name to attract Internet users in order to personally profit by way of pay-per-click advertisement revenue. Capitalizing on the goodwill and notoriety of widely known marks in this way can provide evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Therefore, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(iii) or (iv), or both.
In analyzing bad faith, the Panel also looks beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant argues that Respondent engages in typosquatting by incorporating Germany’s country code—“de”—into the disputed domain name, creating a name very similar to the one that Complainant uses to conduct its business in Germany. Complainant argues Respondent’s registration of <expediade.xyz> is intentionally designed to cause confusion among Internet users by capitalizing on a foreseeable misspelling of one of Complainant’s own domain names. Creating confusion by incorporating common misspellings is a classic example of typosquatting, and can provide additional evidence of bad faith conduct on the part of a respondent pursuant to Policy 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Thus, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name despite actual notice of Complainant’s rights in the EXPEDIA marks, which provides clear evidence of bad faith. Although Panels have held that constructive notice alone is insufficient for a finding of bad faith, this Panel finds that Complainant’s evidence of actual notice sufficiently constitutes bad faith registration and use of the <expediade.xyz> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues that the EXPEDIA marks’ widespread notoriety evidences actual notice to Respondent of Complainant’s rights in the marks, which is corroborated by the links of the disputed domain names resolving site which reference Complainant itself. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the EXPEDIA marks and registered <expediade.xyz> in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <expediade.xyz> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 1, 2017
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