Expedia, Inc. v. WhoisGuard Protected c/o WhoisGuard
Claim Number: FA0512000608223
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 WhoisGuard Protected c/o WhoisGuard (“Respondent”), 8939 S. Sepulveda Blvd, Westchester, CA 90045.
The domain name at issue is <xpedia.com>, registered with Enom, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.
On December 13, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <xpedia.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@xpedia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2006, pursuant to Complainant's request to have this dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole 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, among others:
Complainant and its predecessors in interest have used the famous trademark EXPEDIA in commerce since at least 1996.
Complainant provides a variety of goods and services, most
notably travel-related services, via the Internet using websites at several
domain names, including <expedia.com>, <expedia.ca>,
<expedia.co.uk>, <expedia.fr>, <expedia.de> and
<expedia.it>.
Complainant holds registrations for the EXPEDIA mark with
various trademark authorities throughout the world, including one with the
United States Patent and Trademark Office (“USPTO”) filed April 9, 1996, and
issued January 26, 1999.
The EXPEDIA mark was first registered by Complainant’s
predecessor-in-interest, and was later duly assigned to Complainant.
Complainant has invested millions of dollars in advertising
and promoting its EXPEDIA mark and has developed valuable goodwill in that
mark.
Respondent registered the <xpedia.com> domain name on February 11, 1997.
The disputed domain name resolves to a website that displays information unrelated to Complainant, as well as links to some of Complainant’s competitors, including Cheapflights.com and BookingBuddy.com.
Respondent’s <xpedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
Respondent does not have any rights or legitimate interests in the <xpedia.com> domain name.
Respondent registered and uses the <xpedia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence that its predecessor in interest registered the EXPEDIA mark with the USPTO and other national trademark authorities. The Panel finds that this is sufficient to establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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.”
From the evidence of record, Complainant’s rights in its mark are senior to any rights in the disputed domain name that might be claimed by Respondent because Complainant’s first mark registration filing (April 9, 1996) predates the registration of Respondent’s domain name (February 11, 1997). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002), holding that the effective date of a complainant’s trademark rights date from the application’s filing date.
Respondent’s <xpedia.com> domain name is phonetically identical to Complainant’s mark, and differs from the mark only by virtue of the omission of the letter “e.” Respondent’s use of the generic top-level domain “.com” is not relevant to the Panel’s determination of similarity. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000), finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002), finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see alsoRollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark.
Complainant has therefore satisfied the proof requirements of Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie showing to this effect, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant has presented a prima facie case in keeping with its obligations under Policy ¶ 4(a)(ii). Respondent has failed to respond to Complainant’s allegations in any particular. In the circumstances, this failure, without more, is sufficient to establish that Respondent lacks rights or interests cognizable under the Policy.
Accordingly, Complainant prevails under Policy ¶ 4(a)(ii).
Complainant alleges, and Respondent does not deny, that
Respondent uses the <xpedia.com> domain name to divert Internet
users to Respondent’s website, at which links to Complainant’s competitors are
displayed. The Panel infers from this
conduct an intent on the part of Respondent to benefit from a likelihood of
confusion of the subject domain name with Complainant’s well-known EXPEDIA
mark. Respondent’s use of a domain name
confusingly similar to Complainant’s mark to attract Internet users searching
for Complainant’s products and services to Respondent’s commercial website is
evidence of bad faith registration and use under Policy ¶ 4(b)(iv), and,
therefore, as well under Policy ¶ 4(a)(iii).
See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003): “Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.” To the same effect, see Associated
Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003).
Moreover, Respondent’s utter failure to respond to the allegations of the Complaint in this proceeding is strong evidence of Respondent’s bad faith registration and use of the disputed domain name. See London Court of International Arbitration v. Wellsbruck Corp., D2005-0084 (WIPO Apr. 2, 2005): “The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith.”
For these reasons, the Panel finds that Complainant has met its obligations under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <xpedia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 19, 2006
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