Expedia, Inc. v. Conquest Business
Ventures, Inc.
Claim
Number: FA0505000482611
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 Conquest Business Ventures, Inc. (“Respondent”),
P.O. Box 837, Willemstad, Curacao, Arizona 00114.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <expediam.com>, registered with Go
Daddy Software, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 23, 2005.
On
May 23, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <expediam.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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
May 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 16, 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@expediam.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 National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
June 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed The Honorable
Charles K. McCotter, Jr. (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <expediam.com>
domain name is confusingly similar to Complainant’s EXPEDIA.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <expediam.com> domain name.
3. Respondent registered and used the <expediam.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Expedia, Inc., is a provider of online travel agency services, specifically
through its website located at the <expedia.com> domain name.
Complainant has
registered its EXPEDIA.COM mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. Nos. 2,405,746 issued November 21, 2000; 2,610,319
issued August 20, 2002).
Respondent
registered the <expediam.com> domain name on October 29,
2004. Respondent’s domain name resolves
to a website that features links to various travel-related services, many of
which compete directly with Complainant.
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. 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.").
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 rights in the EXPEDIA.COM mark through registration of the mark
with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”); 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 and that
it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Respondent’s <expediam.com>
domain name is confusingly similar to Complainant’s EXPEDIA.COM mark. The insertion of the additional letter “m”
to Complainant’s mark does not circumvent a finding of confusing similarity
under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Nintendo of Am., Inc. v. Lizmi,
FA 94329 (Nat. Arb. Forum Apr. 24, 2000) (finding that the respondent’s domain
names <pokemon2000.com> and <pokemons.com> are confusingly similar
to the complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
argued that Respondent lacks rights and legitimate interests in the <expediam.com>
domain name. Respondent, in neglecting
to respond, has failed to propose any set of circumstances to support a claim
of rights or legitimate interests in the disputed domain name. Thus, Respondent’s failure to respond may be
interpreted as evidence that Respondent lacks rights and legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the panel and the
respondent did not come forward to suggest any right or interest it may have
possessed); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is
using the disputed domain name to operate a website that features links to
various travel-related websites, many of which directly compete with Complainant
and from which Respondent presumably earns click-through fees. The Panel finds that such diversionary and
competitive use of the domain name 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 DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Wells
Fargo & Co. v. Ling Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain
name to direct Internet traffic to a website featuring pop-up advertisements
and links to various third-party websites is neither a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
Furthermore,
nothing in the record or WHOIS information indicates that Respondent is either
commonly known by the disputed domain name or authorized to register domain
names featuring Complainant’s EXPEDIA.COM mark. Thus, the Panel finds that Respondent has not established rights
or legitimate interests in the <expediam.com> domain name pursuant
to Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion must be rejected); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact
information for the disputed domain, one can infer that Respondent, Onlyne
Corporate Services11, is not commonly known by the name ‘welsfargo’ in any
derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <expediam.com> domain name to divert
Internet users to various commercial websites through a series of hyperlinks, from
which Respondent presumably earns click-through fees. The Panel finds that Respondent, through its use of the <expediam.com>
domain name, has intentionally attempted to attract, for commercial gain,
Internet users to its website by creating a likelihood of confusion with
Complainant’s EXPEDIA.COM mark as to the source and affiliation of the website
and services advertised thereon. Thus,
the Panel finds that Respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the Complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, the Panel finds that Respondent registered the <expediam.com>
domain name with actual or constructive knowledge of Complainant’s rights
in the EXPEDIA.COM mark due to Complainant’s
registration of the mark with the USPTO.
Moreover, Respondent is using the domain name to promote nearly
identical travel services as Complainant, thus demonstrating that Respondent
registered the domain name with actual knowledge of Complainant and its famous
EXPEDIA.COM mark. Respondent’s act of
registering a domain name that is confusingly similar to Complainant’s mark,
with actual and constructive knowledge of Complainant’s superior rights in the
mark, is tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about Complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <expediam.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 1, 2005
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