Expedia, Inc. v. AD Creation c/o Admin AD
Creation
Claim
Number: FA0507000518046
Complainant is Expedia, Inc. (“Complainant”),
represented by Brett A. August, of Pattishall, McAuliffe,Newbury, Hilliard and Geraldson LLP, 311 South Wacker Drive, Suite 5000,
Chicago, IL 60606. Respondent is AD Creation c/o Admin AD Creation (“Respondent”),
4A Sabagh St., El Korba, Heliopolis, Cairo 11341 Egypt.
The
domain name at issue is <expediaegypt.com>, registered with Aaaq.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
15, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 19, 2005, Aaaq.com confirmed by e-mail to the National Arbitration Forum
that the domain name <expediaegypt.com> is registered with Aaaq.com
and that Respondent is the current registrant of the name. Aaaq.com has verified that Respondent is
bound by the Aaaq.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
July 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 11, 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@expediaegypt.com by e-mail.
Having received no Response from Respondent, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 17, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Crary 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 <expediaegypt.com>
domain name is confusingly similar to Complainant’s EXPEDIA and EXPEDIA.COM
marks.
2. Respondent does not have any rights or
legitimate interests in the <expediaegypt.com> domain name.
3. Respondent registered and used the <expediaegypt.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Expedia, Inc., is a provider of a variety of goods and services, most notably
travel agency services, including access to airline, hotel and rental care reservations
provided through its websites.
Complainant has
registered its EXPEDIA mark with the United States Patent and Trademark Office
(“USPTO”) (E.g. Reg. Nos. 2,220,719 issued January 26, 1999; 2,224,373
issued February 16, 1999). Complainant
has also registered the EXPEDIA.COM mark with the USPTO (Reg. No. 2,405,746
issued November 21, 2000).
Respondent
registered the <expediaegypt.com> domain name on June 1,
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
asserts that it has established rights in the EXPEDIA and EXPEDIA.COM marks
through registration with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also 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.”).
Moreover, the <expediaegypt.com>
domain name is confusingly similar to Complainant’s EXPEDIA mark because
the domain name incorporates Complainant’s mark in its entirety and merely adds
the geographic term “egypt.” This
change is not enough to overcome the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name
<net2phone-europe.com> is confusingly similar to the complainant’s mark
because “the combination of a geographic term
with the mark does not prevent a domain name from being found confusingly
similar"); see also VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s
VERISIGN mark and the <verisignindia.com> and <verisignindia.net>
domain names where the respondent added the word “India” to the complainant’s
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <expediaegypt.com>
domain name. When a complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove
that it has rights or legitimate interests.
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not commonly known by the <expediaegypt.com> domain
name. Thus, the Panel may conclude
that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where respondent was not commonly known by the mark
and never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that respondent has no rights or legitimate interests in domain
names because it is not commonly known by complainant’s marks and respondent
has not used the domain names in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <expediaegypt.com> domain name to operate
a website featuring commercial links to Respondent’s own website. The Panel may find that Respondent’s use of
a domain name that is confusingly similar to Complainant’s mark to divert
Internet users to Respondent’s own website for commercial gain does not
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. 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); see also Ultimate Elecs.,
Inc. v. Nichols, FA 195683 (Nat. Arb.
Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial website. Respondent registered and used the disputed
domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the <expediaegypt.com>
domain name to intentionally attract,
for commercial gain, Internet users to its website, by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and
likeness); see also 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).
Furthermore,
Respondent has used the <expediaegypt.com> domain name, which
contains Complainant’s EXPEDIA and EXPEDIA.COM marks, to redirect Internet
users to a website featuring travel services that compete with Complainant’s
business. This suggests that Respondent
had actual knowledge of Complainant’s rights in the marks when it registered
the domain name and chose the disputed domain name based on the goodwill
Complainant has acquired in its EXPEDIA and EXPEDIA.COM marks. Furthermore, Complainant’s registration of
the EXPEDIA and EXPEDIA.COM marks with the USPTO bestows upon Respondent
constructive notice of Complainant’s rights in the marks. Respondent’s registration of a domain name
containing Complainant’s marks in spite of Respondent’s actual or constructive
knowledge of Complainant’s rights in the mark is evidence of 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 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 the Complainant’s mark when it
registered the subject domain name”); 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.”).
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 <expediaegypt.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
August 29, 2005
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