Expedia, Inc.
v. Palmside Holdings PTY LTD
Claim Number:
FA0508000538533
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard, & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Palmside Holdings PTY LTD (“Respondent”), 125 Banksia St., Sydney, New South Wales, 2019, Australia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <expeda.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2005.
On August 12, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <expeda.com> domain name 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 August 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 7, 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@expeda.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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 <expeda.com> domain name is confusingly similar to Complainant’s EXPEDIA.COM mark.
2. Respondent does not have any rights or legitimate interests in the <expeda.com> domain name.
3. Respondent registered and used the <expeda.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is a leading provider of Internet travel agency services, including information regarding destinations around the world as well as airline, hotel, and rental car reservation services, on-line ticket sales for entertainment events, and various promotional goods featuring the EXPEDIA logo. In connection with these goods and services, Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”), the most notable of which is the EXPEDIA.COM mark (Reg. No. 2,610,319 issued Aug. 20, 2002, filed Mar. 6, 2000).
Respondent registered the <expeda.com> domain name on September 26, 2000. Respondent’s domain name resolves to a website that provides a link and information regarding Complainant’s <expedia.com> website along with a general offer to sell Respondent’s <expeda.com> domain name registration. Upon Complainant’s inquiry about an agreement to transfer the disputed domain name, Respondent requested compensation in the amount of $80,000.
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 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 Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
[or] have acquired secondary meaning”).
Although Complainant’s registration was not issued until August 20,
2002, the effective date of registration dates back to the application’s filing
date, March 6, 2000. See Planetary
Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the
effective date of Complainant’s trademark rights date back to the application’s
filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101
(WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is .
. . the filing date of its issued registration.”).
Complainant asserts that Respondent’s <expeda.com> domain name is confusingly similar to Complainant’s EXPEDIA.COM mark. Respondent’s domain name is a misspelled variation of Complainant’s mark. Panels have found that the misspelling of another’s mark through the omission of a single letter fails to significantly distinguish the domain name pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the burden of proof onto Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (stating that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the Panel infers that no rights or legitimate interests exist pursuant to Policy ¶ 4(a)(ii). See 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); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is using the domain name, which is confusingly
similar to Complainant’s mark, to post an offer for sale of the domain name, to
provide information regarding the services Complainant provides, and to provide
a link to Complainant’s <expedia.com> website. In light of this evidence, the Panel infers that Respondent
registered the <expeda.com> domain name with the intention of
selling its rights and commercial use.
Such use is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where the respondent registered the domain name with
the intention of selling its rights); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name
registration suggests it has no legitimate use).
Furthermore, no affirmative evidence has been set forth showing that Respondent is commonly known by the <expeda.com> domain name. As a result, Respondent has failed to show evidence of rights or legitimate interests in the disputed 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 assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Finally, Panels have found the
fact that Respondent’s domain name is merely a typosquatted version of a
Complainant’s mark to be evidence in and of itself that Respondent lacks rights
and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd.
v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain
name, a typosquatted version of the complainant’s DINERS CLUB mark, was
evidence in and of itself that the respondent lacks rights or legitimate
interests in the disputed domain name vis á vis the complainant); see also Encyclopaedia
Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that
fair use does not apply where the domain names are misspellings of the
complainant's mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <expeda.com> domain
name with the intent of selling its rights.
Although an offer to sell a domain name is not definitive proof of bad
faith registration and use, Respondent’s request for $80,000, an amount that
far exceeds Respondent’s out-of-pocket costs, is proof of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb.
Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and
offered to sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”).
Finally, Respondent registered the <expeda.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the EXPEDIA.COM mark. Complainant’s
registration of the EXPEDIA.COM mark with the USPTO confers constructive
knowledge of Complainant’s rights in the mark upon Respondent. See 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 Victoria’s Cyber
Secret Ltd. v. V Secret Catalogue, Inc.,
161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072). Furthermore,
Respondent provides information regarding the services in which Complainant
engages as well as a link connecting Internet users to Complainant’s official
site. As a result, the Panel infers
that Respondent had actual knowledge of Complainant’s rights in the EXPEDIA.COM
mark at the time of registration.
Registration of a confusingly similar domain name with actual or
constructive knowledge of Complainant’s rights constitutes bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also 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”).
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 <expeda.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 27, 2005
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