Expedia, Inc. v. Kyunghwa Park
Claim Number: FA0603000669287
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 Kyunghwa Park (“Respondent”), Yongin-si Gyeonggi-do, Mabuk-ri Samsung Raemian 1-cha Apt. Guseong-eup Yo, Gyeonggi-do 449-557, KR.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <expadia.com>, registered with Communigal Communications Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2006.
On March 28, 2006, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <expadia.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 April 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 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@expadia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce Meyerson 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 <expadia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expadia.com> domain name.
3. Respondent registered and used the <expadia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., provides travel information and retail services over the Internet. Complainant has continuously used the EXPEDIA mark in connection with its travel agency services since 1996. Complainant is one of the most successful online travel agencies, operating primarily via a website at the <expedia.com> domain name.
Complainant owns numerous trademark registrations around the world, including registrations with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,220,719 issued January 26, 1999; Reg. No. 2,224,559 issued February 16, 1999; Reg. No. 2,240373 issued April 20, 1999) and Korea (Reg. No. 42,409 issued May 29, 1998). Complainant has also registered the EXPEDIA.COM mark with the USPTO (Reg. No. 2,610,291 issued August 20, 2002, filed January 28, 2000).
Respondent registered the <expadia.com> domain name on September 11, 2000, and is currently using the domain name to direct Internet users to Complainant’s website at the <expedia.com> domain name. Upon entering the disputed domain name, Internet users are subjected to pop-up advertisements.
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. 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.
Because Complainant has registered the EXPEDIA mark with the
USPTO and with trademark authorities in Korea, where Respondent resides,
Complainant has established 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.”).
The <expadia.com> domain name is confusingly
similar to Complainant’s EXPEDIA mark because it includes a mere misspelling of
the mark, which replaces the letter “e” with the letter “a.” In Belkin Components v. Gallant, FA
97075 (Nat. Arb. Forum May 29, 2001), the panel found the <belken.com>
domain name confusingly similar to the complainant's BELKIN mark because the
respondent merely substituted the letter “i” in the complainant’s mark for a
letter “e.” Likewise, the mere
substitution of one letter in Respondent’s domain name does not sufficiently
distinguish the <expadia.com> domain name from the EXPEDIA
mark. Therefore, the disputed domain
name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). Neiman Marcus Group, Inc v. Rukash, FA
444456 (Nat. Arb. Forum Apr. 25, 2005) (holding that minor alterations to a
complainant’s mark, including the addition, replacement, or transposition of
letters, are not sufficient to differentiate the domain names from the
complainant’s NEIMAN MARCUS mark pursuant to Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights to or legitimate interests in the <expadia.com> domain name. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <expadia.com>
domain name. BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent registered the domain name under the name “Kyunghwa Park,” and no other evidence
in the record suggests that Respondent is commonly known by the <expadia.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <expadia.com> domain
name, which is confusingly similar to Complainant’s EXPEDIA mark, to subject
Internet users to various pop-up advertisements, eventually directing them to
Complainant’s website at the <expedia.com> domain name. The Panel infers that Respondent receives
click-through fees for each consumer that clicks on one of these
advertisements. Therefore, Respondent
is taking advantage of the confusing similarity between Respondent’s domain
name and Complainant’s mark and capitalizing on the goodwill associated with
the mark. The Panel finds that such use
is indicative of bad faith registration and use pursuant to Policy ¶
4(b)(iv). Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding bad faith where the respondent used a misspelling of the
complainant’s famous mark to attract Internet users to a series of
advertisements); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO
Feb. 28, 2003) (finding that the respondent’s registration of an infringing
domain name to redirect Internet users to banner advertisements constituted bad
faith use of the domain name).
Furthermore, Respondent’s use of the <expadia.com>
domain name, which is merely a misspelled variation of Complainant’s EXPEDIA
mark, is evidence that Respondent is engaged in typosquatting. Although Internet users seeking
Complainant’s services at the <expedia.com> domain name ultimately reach
Complainant’s site by entering Respondent’s domain name, Respondent
commercially benefits by subjecting to pop-up advertisements those consumers
that misspell the mark. Therefore,
Respondent is taking advantage of Internet users’ typographical errors for its
own commercial gain, and such typosquatting constitutes bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Dermalogica, Inc. v. Domains to
Develop, FA 175201 (Nat. Arb. Forum Sept.
22, 2003) (finding that the <dermatalogica.com> domain name was a “simple
misspelling” of the complainant's DERMALOGICA mark which indicated
typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that
the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <expadia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 10, 2006
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