National Arbitration Forum

 

DECISION

 

Expedia, Inc. v. PMH Capital Limited c/o Paul Hill

Claim Number: FA0503000442294

 

PARTIES

Complainant is Expedia, Inc. (“Complainant”), represented by Kristen S. Knecht, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606.  Respondent is PMH Capital Limited c/o Paul Hill (“Respondent”), 7 Beech Park Drive, Barnt Green, Birmingham B45 8LZ, UK.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <expediacasino.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2005; the National Arbitration Forum received a hard copy of the Complaint on March 21, 2005.

 

On March 21, 2005, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the domain name <expediacasino.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that the Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.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 24, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 13, 2005 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@expediacasino.com by e-mail.

 

A timely Response was received and determined to be complete on March 30, 2005.

 

A “Reply in Support of Complaint” was received on April 5, 2005.  Pursuant to Supplemental Rule 7, such submission was untimely.  The Panel declines to consider such submission in its determination of this proceeding.

 

On April 5, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Since at least as early as October 1996, Complainant Expedia and its predecessors have been using the EXPEDIA mark on or in connection with a wide variety of goods and services, most notably travel agency services provided through Complainant’s websites.  Complainant routinely advertises and sells vacation packages for destinations such as Reno, Nevada and Las Vegas, which are well-known for their casinos.

 

Complainant owns numerous valid and subsisting registrations for the EXPEDIA mark throughout the world.  See Exhibit E to Complaint for list of registrations.

 

On or about March 19, 2004, Respondent, which is located in the United Kingdom, registered the domain name in dispute – <expediacasino.com>.  According to the Complaint, the domain name currently defaults to <casino.co.uk/defaultotb.asp>, a web page that features online gambling and links to various Internet casinos.  See Exhibit G to Complaint.

 

On March 19, 2004, Respondent sent an email to Expedia proposing that Expedia enter into a joint venture with Respondent to offer Internet casino services.  Several other similar emails followed. On May 20, 2004, Expedia sent a letter to Respondent advising Respondent of Expedia’s rights and demanding that the domain name in dispute be transferred to Expedia.  On July 7, 2004, Respondent offered Expedia the opportunity to engage in a joint Internet casino business via an offshore gambling license.  In the alternative, Respondent offered to sell the <expediacasino.com> domain name to Expedia for approximately $3,500.  See Exhibit L to Complaint.

 

On November 18, 2004, Expedia sent a letter to Respondent stating that Expedia had no interest in pursuing a joint venture with Respondent and requested that Respondent transfer the domain name to Complainant.  Expedia offered Respondent $500.00 to cover expenses.

 

Complainant asserts that the <expediacasino.com> domain name is confusingly similar to the EXPEDIA mark in that it incorporates the entirety of the mark in combination with the generic entertainment-related term “casino.”

 

Complainant further argues that Respondent has no rights or legitimate interests in the domain name.  It points out that Respondent is not known by the EXPEDIA mark and has not acquired any rights in the mark, that Expedia has not licensed or otherwise permitted Respondent to use the EXPEDIA mark, and that Respondent’s use of the domain name is not reasonably characterized as noncommercial or fair use under the applicable policy. 

 

With respect to the issue of “bad faith” registration and use, Complainant contends that the facts of this case, including the fact that Respondent first proposed the joint venture on the same day it registered the disputed domain name, suggest that Respondent, at the time of registration, had actual knowledge of Complainant and its EXPEDIA mark and was attempting to take advantage of the value and goodwill associated with the mark.  Complainant further maintains that the requisite “bad faith” is established by Respondent’s attempt to sell the domain name to Complainant for approximately $3,500.

 

B. Respondent

In its Response, Respondent advanced a number of arguments in an effort to refute Complainant’s assertion that the domain name was registered and used in “bad faith.” It contends that: (1) the proposed joint venture would have generated significant financial returns to Complainant; (2) that it dealt openly with Complainant; (3) it rejected Complainant’s offer to transfer the domain name for $500.00 and suggested an alternative sum of £2,000, which equals approximately $3,500; and (4) as a final effort to resolve the matter without the need to initiate this proceeding, offered to accept the original $500 offer from Complainant.

 

FINDINGS

The Panel finds that: (1) the <expediacasino.com> domain name is confusingly similar to the EXPEDIA mark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that the <expediacasino.com> domain name is confusingly similar to the EXPEDIA mark.  As Complainant notes, the domain name consists of the mark in its entirety, coupled with the generic term “casino.”  See Expedia, Inc. v. Leisure Tours Int’l, FA 381271 (Nat. Arb. Forum Feb. 1, 2005) (finding that combining the generic term “spring break” with the EXPEDIA mark was not enough to overcome finding of confusing similarity); see also eBay, Inc. v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar.16, 2001) (finding that <gayebay.com> domain name was confusingly similar to eBAY mark).

 

Rights or Legitimate Interests

 

The Panel concludes that none of the circumstances set forth in paragraph 4(c) of the Policy is applicable and that Respondent has no rights or legitimate interests in the domain name.  It is clear that Respondent is not commonly known by the domain name and, based on the facts as set forth above, that the domain name is not being used in a noncommercial or “fair” manner.  Further, the clear weight of previous UDRP panel decisions is to the effect that the use of a domain name that is identical or confusingly similar to a complainant’s mark is not a “bona fide” use within the meaning of paragraph 4(c)(i) of the Policy.  See, e.g., Adobe Sys. Inc. v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000).

 

Registration and Use in Bad Faith

 

Finally, the Panel concludes that the requisite “bad faith” registration and use is present.  Given the facts as set forth above, it is clear that Respondent registered the domain name with full knowledge of Complainant’s previous use of, and rights in, the EXPEDIA mark and in an attempt to trade on the goodwill associated with the mark. See, e.g., State Fair of Texas v. Granbury.com, FA 95288 (Nat  Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered domain name to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

 

It also appears to the Panel that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source of the site, within the meaning of paragraph 4(b)(iv) of the Policy.  Given the association of the EXPEDIA mark with travel-related services, including travel to locales that feature casino gambling, Internet users are likely to believe that the disputed website is sponsored by or affiliated with Complainant.

 

While Respondent, in its Response, suggests that its offer to sell the domain name to Complainant for £2,000 followed Complainant’s offer to purchase the domain name for $500, the evidence indicates otherwise.  Exhibit L to the Complaint consists of a copy of a July 22, 2004, email from Respondent to Complainant in which Respondent offers to sell the domain name to Complainant for £2,000, assuming Complainant does not wish to enter into a joint venture with Respondent.  It was until November 18, 2004, that Complainant offered to buy the domain name for $500.00. See Exhibit N to Complaint. Under these facts, the Panel finds that Respondent registered the domain name “primarily” for the purpose of selling the registration to Complainant for consideration in excess of out-of-pocket expenses, within the meaning of paragraph 4(b)(i) of the Policy.  In the Panel’s view, Respondent did not have a realistic expectation of entering into a joint venture with Complainant and, thus, it may be determined that the registration was motivated “primarily” for the purpose of selling the domain name registration to Complainant.[1]

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <expediacasino.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Jeffrey M. Samuels, Panelist
Dated: April 19, 2005

 

 

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