Expedia, Inc. v. German Escobar
Claim Number: FA0602000638204
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 German Escobar (“Respondent”), 15250 SW 80th Street, Apt 10, Miami, FL 33193.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <expediagetaways.com>, registered with Wild West Domains, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2006.
On February 2, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediagetaways.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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@expediagetaways.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <expediagetaways.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expediagetaways.com> domain name.
3. Respondent registered and used the <expediagetaways.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark. Complainant first registered the EXPEDIA mark with the USPTO at least as early as September 5, 2000 (Reg. No. 2,383,732).
The EXPEDIA mark was first used and registered by Complainant’s predecessor-in-interest, Microsoft Corporation, and was assigned by Microsoft Corporation to Complainant. Complainant has utilized the EXPEDIA mark since at least as early as October 1996 in connection with a wide variety of goods related to travel agency services provided by Complainant’s websites.
Respondent registered the <expediagetaways.com> domain name on September 27, 2005. Respondent is using the disputed domain name to operate a website offering online travel services in direct competition with Complainant and providing links to Complainant’s other competitors.
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 the
EXPEDIA mark with the USPTO sufficiently demonstrates Complainant’s rights in
the mark pursuant to 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.”); 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.”).
Furthermore, Respondent’s <expediagetaways.com> domain name is confusingly similar to Complainant’s EXPEDIA mark, as Respondent’s domain name incorporates Complainant’s mark in its entirety, adding the travel-related term “getaways” and the generic top-level domain “.com.” Respondent’s addition of these features to Complainant’s mark does not avoid the creation of confusing similarity between the disputed domain name and Complainant’s mark, especially because the term “getaways” is directly related to Complainant’s travel services business. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially bears the burden of demonstrating that Respondent lacks any rights or legitimate interests in the disputed domain name. However, if Complainant establishes a prima facie case, the burden accordingly shifts to Respondent to prove that it has rights or legitimate interests with respect to the domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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 established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
Respondent is using the <expediagetaways.com> domain name to operate a website offering travel services in direct competition with Complainant and offering links to other travel services websites that compete with Complainant. Consequently, Respondent’s utilization of the disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and is using the <expediagetaways.com>
domain name in association with a website offering travel services similar to
Complainant’s business. As a result, Complainant
sufficiently demonstrates that Respondent is a competitor using the disputed
domain name to disrupt the business of Complainant. Thus, Respondent’s domain name has been registered and is being
used in bad faith pursuant to Policy ¶ 4(a)(iii). See Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where the
respondent and the complainant were in the same line of business in the same
market area); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent).
In light of both the confusing similarity between Respondent’s domain name and Complainant’s mark and Respondent’s offering of services in direct competition with Complainant, Internet consumers could easily confuse Respondent’s website with a website operated by or affiliated with Complainant. Thus, the evidence on record suggests that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or affiliation of its website pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <expediagetaways.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 21, 2006
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