Expedia, Inc. v. James Cassidy
Claim Number: FA0512000612065
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 James Cassidy (“Respondent”), 1670 Satin Leaf Court, Delray Beach, FL 33445.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <e-spedia.com> and <espedia.net>, registered with Moniker Online Services, Inc.
The undersigned certifies that he as acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2005.
On December 22, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <e-spedia.com> and <espedia.net> domain names are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 11, 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@e-spedia.com and postermaster@espedia.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <e-spedia.com> and <espedia.net> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <e-spedia.com> and <espedia.net> domain names.
3. Respondent registered and used the <e-spedia.com> and <espedia.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., provides a wide variety or
products and services, primarily including Internet travel agency
services. Through its website,
Complainant provides access to airline, hotel and rental car reservations for
destinations in the United States and throughout the world.
Complainant owns numerous valid trademark registrations
throughout the world for its EXPEDIA mark (i.e. Reg. No. 2,383,732 issued
September 5, 2000). Complainant has
been using its EXPEDIA mark in commerce
since as early as October 1996.
Complainant has invested millions of dollars to advertise and promite
its EXPEDIA mark and has sold or licensed hundreds of millions of dollars in
EXPEDIA branded goods and services.
Respondent registered the <e-spedia.com> domain name on November 28, 2005 and the <espedia.net> domain name on December 2, 2005. The disputed domain names resolve to directory websites that display travel services in competition with Complainant, as well as a link to Complainant’s website. On November 8, 2004, Complainant sent a letter to Respondent objecting to Respondent’s registration of the disputed domain names. An attorney claiming to represent Respondent sent a letter to Complainant claiming that Respondent has incorporated eSpedia, Inc. in Florida and has filed a trademark registration, which is currently pending approval.
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.
The Panel finds that Complainant’s registration of its EXPEDIA mark with the USPTO is sufficient to establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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 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.”).
The <e-spedia.com> and <espedia.net> domain names differ from Complainant’s EXPEDIA mark with the substitution of the letter “s” for the letter “x” in both domain names and the addition of a hyphen in one of the domain names. These changes are not sufficient to distinguish the disputed domain names from Complainant’s mark. Additionally, the use of the generic top-level domains “.com” and “.net” is irrelevant to determining similarity. Thus, the Panel determines that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
Complainant has met the requirements under 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 names. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent is using the <e-spedia.com> and <espedia.net> domain names to operate directory websites that display links to Complainant’s competitors as well as to Complainant, presumably for the purpose of earning referral fees for linking Internet users to these businesses. Although the websites include a link to Complainant, Respondent is commercially benefiting from its appropriation of Complainant’s EXPEDIA mark by attracting Complainant’s potential customers. The Panel finds that Respondent’s commercial use of the domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant has submitted a letter, purportedly sent to Complainant from Respondent, in which Respondent’s counsel asserts that Respondent has incorporated as eSpedia, Inc. in the State of Florida. However, Complainant contends that the date of incorporation was in 2004, which was several years after Complainant’s registration of its EXPEDIA mark with the USPTO. Furthermore, Complainant has not authorized or permitted Respondent to use any version of its EXPEDIA mark in any manner, and Respondent has not come forward with any evidence in this matter to affirmatively prove that it is operating a business under the <e-spedia.com> and <espedia.net> domain names. Therefore, in the absence of a response, the Panel concludes that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests in the domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); cf. Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”).
Complainant has met the requirements under Policy ¶ 4(a)(ii).
Respondent’s use of the <e-spedia.com> and <espedia.net> domain names to divert Internet users searching for Complainant’s travel-related products and services to Respondent’s directory website displaying links to competing companies demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s EXPEDIA mark. The registration and use of confusingly similar versions of Complainant’s EXPEDIA mark to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant has met the requirements under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-spedia.com> and <espedia.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 27, 2006
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