Expedia, Inc. v. Nouman Khan
Claim Number: FA1808001802571
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Nouman Khan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediapak.com> and <expediapakistan.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2018; the Forum received payment on August 21, 2018.
On August 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <expediapak.com> and <expediapakistan.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2018 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@expediapak.com, postmaster@expediapakistan.com. Also on August 22, 2018, 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 September 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Expedia, Inc., operates one of the world’s largest full-service online travel agencies. Complainant uses its EXPEDIA mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719, registered Jan. 26, 1999). See Compl. Ex. 9. Respondent’s <expediapak.com> and <expediapakistan.com> domain names are confusingly similar to Complainant’s mark as each adds the “.com” generic top-level domain (“gTLD”) and the geographic term “pak” or “pakistan.”
ii) Respondent does not have rights or legitimate interests in the <expediapak.com> and <expediapakistan.com> domain names. Complainant has not licensed or otherwise authorized Respondent to use its EXPEDIA mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Nouman Khan” as the registrant. See Compl. Ex. 1. Respondent is not using the <expediapak.com> and <expediapakistan.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <expediapak.com> domain name to resolve to a website advertising and/or offering services that compete with Complainant’s travel business. Additionally, Respondent uses the <expediapakistan.com> domain name to resolve to an inactive website.
iii) Respondent registered and is using the domain names in bad faith. Respondent engaged in a pattern of bad faith registration by registering two domain names that infringe upon Complainant’s rights in the EXPEDIA mark. Further, Respondent uses the <expediapak.com> domain name to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain. Respondent also failed to actively use the <expediapakistan.com> domain name. Finally, Respondent registered both domain names with actual knowledge of Complainant’s rights in the EXPEDIA mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Respondent registered the <expediapak.com> and <expediapakistan.com> domain names on September 26, 2017.
2. Complainant has established rights in the EXPEDIA mark through registration with the USPTO (e.g., Reg. No. 2,220,719, registered Jan. 26, 1999).
3. The <expediapak.com> website features Complainant’s EXPEDIA mark, offers travel services and displays advertisements for hotels and other travel-related businesses.
4. The <expediapakistan.com> website merely displays the error message “website coming soon!”.
5. Complainant’s EXPEDIA mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1996.
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.”).
Complainant contends it has rights in the EXPEDIA mark through registration with the USPTO (e.g., Reg. No. 2,220,719, registered Jan. 26, 1999). See Compl. Ex. 9. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant established rights in the EXPEDIA mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <expediapak.com> and <expediapakistan.com> domain names are confusingly similar to Complainant’s EXPEDIA mark because each merely adds the “.com” gTLD and the geographic term “pak” or “pakistan.” The addition of a geographic term and a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Skype Ltd. v. Sacramento, FA 747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant alleges that the term “pak” is a shorthand version of the geographic term “Pakistan.” Accordingly, the Panel concludes that Respondent’s <expediapak.com> and <expediapakistan.com> domain names are confusingly similar to Complainant’s mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its EXPEDIA mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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 that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <expediapak.com> and <expediapakistan.com> domain names list “Nouman Khan” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by either the <expediapak.com> domain name or the <expediapakistan.com> domain name.
Further, Complainant alleges that Respondent uses the <expediapak.com> domain name to resolve to a website advertising and/or offering services that compete with Complainant’s travel business. Under Policy ¶¶ 4(c)(i) and (iii), use of a domain name to resolve to a website featuring competing advertisements or offering competing services may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also 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 provided screenshots of the <expediapak.com> website, which indicate that the site features Complainant’s EXPEDIA mark, offers travel services and displays advertisements for hotels and other travel-related businesses. See Compl. Ex. 11. Accordingly, the Panel holds that Respondent failed to use the <expediapak.com> domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii).
Moreover, Complainant claims that Respondent uses the <expediapakistan.com> domain name to resolve to an inactive website. Use of a domain name to resolve to an inactive website may not be considered a legitimate Policy ¶ 4(c)(i) or (iii) use. See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provided screenshots of the <expediapakistan.com> website, which show that the site merely displays the error message “website coming soon!” See Compl. Ex. 12. As such, the Panel holds that Respondent failed to use the <expediapakistan.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent engaged in a pattern of bad faith registration by registering two domain names that infringe upon Complainant’s rights in the EXPEDIA mark. Registration of multiple infringing domain names may evidence a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). The Panel notes that Respondent is the registrant of both of the disputed domain names in the current case. See Compl. Ex. 1. As such, the Panel finds that Respondent engaged in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).
Further, Respondent uses the <expediapak.com> domain name to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain by resolving to a website featuring competing advertisements and services. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (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 OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously mentioned, Complainant provided screenshots of the <expediapak.com> website, which show that the site features Complainant’s EXPEDIA mark, offers competing services and displays competing advertisements. See Compl. Ex. 11. Therefore, the Panel concludes that Respondent registered and used the <expediapak.com> domain name in bad faith under both Policy ¶¶ 4(b)(iii) and (iv).
Moreover, Complainant alleges that Respondent failed to actively use the <expediapakistan.com> domain name. Pursuant to Policy ¶ 4(a)(iii), a respondent’s failure to actively use a domain name may evince a finding of bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provided screenshots of the <expediapakistan.com> website, which show that the site merely displays an error message. See Compl. Ex. 12.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, as one of the world’s largest travel companies, owns an extensive portfolio or group of travel brands including EXPEDIA, TRAVELOCITY, HOTELS.COM, HOTWIRE, ORBITZ, HOMEAWAY, and others that feature the world’s broadest supply portfolio, encompassing more than 200 travel booking sites in more than 75 countries and more than 150 mobile websites in nearly 70 countries and 35 languages, covering 590,000 properties, 550+ airlines, and 25,000+ activities. Complainant has an extensive, global audience to which it markets travel suppliers’ products via Expedia’s traditional desktop offerings, as well as through alternative distribution channels including mobile and social media, Expedia’s private label business, and Expedia’s call centers. In addition, Expedia’s advertising and media businesses help other businesses, primarily travel providers, reach a large audience of travelers around the globe. Complainant operates one of the world’s largest full-service online travel agencies through its EXPEDIA-branded websites comprised of the EXPEDIA.COM website and localized EXPEDIA websites in more than 30 countries that provide business and leisure travelers online tools and information to efficiently research, plan, book, and experience travel. The EXPEDIA online network also includes Expedia’s award-winning mobile apps and its highly popular social media pages. The EXPEDIA network offers travelers have access to the latest technology that delivers airline tickets, lodging, car rentals, rail, cruises, insurance, as well as airport transfers, activities, and tours from hundreds of thousands of suppliers, on both a standalone and package basis. (Comp., Exhibit 4: screen shots of Expedia’s EXPEDIA.COM website and representative examples of its localized EXPEDIA websites for the U.K., France, and China; Comp., Exhibit 5: screen shots of Expedia’s EXPEDIA apps as offered on Apple’s and Google’s websites. Comp., Exhibit 6: screen shots of Expedia’s Facebook, Twitter, and Pinterest social media pages.) Therefore, the Panel finds that Complainant’s EXPEDIA mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1996; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <expediapakistan.com>.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name <expediapakistan.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel holds that Respondent engaged in Policy ¶ 4(a)(iii) bad faith registration and use.
Finally, Complainant argues that Respondent registered both domain names with actual knowledge of Complainant’s rights in the EXPEDIA mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s EXPEDIA mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1996. See Compl. p. 4. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediapak.com> and <expediapakistan.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 17, 2018
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