Expedia, Inc. v. Tuan Le Anh
Claim Number: FA0606000728482
Complainant is Expedia, Inc. (“Complainant”), represented by Kristen S. Knecht, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Tuan Le Anh (“Respondent”), R211/20 The Giao, Hanoi, Hai Ba Trung Vn84, Vietnam.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediaasia.com> and <expediaasia.org>, registered with Wild West Domains, 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 June 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2006.
On June 7, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediaasia.com> and <expediaasia.org> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. 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 June 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 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@expediaasia.com and postmaster@expediaasia.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is an online travel goods and services provider.
Complainant and its predecessors in interest have used its EXPEDIA mark since at least October 1996.
Complainant holds numerous registrations for its EXPEDIA mark, including in Vietnam (Reg. No. 4-2005-03303 filed March 25, 2005) and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,383,732 issued September 5, 2000).
Respondent is not authorized to use Complainant’s EXPEDIA mark, and Respondent is not associated with Complainant in any way.
Respondent registered the <expediaasia.com> and <expediaasia.org> domain names on January 6, 2006.
The disputed domain names resolve to a competing travel website.
This website also contains links for third-party websites, some of which are in direct competition with Complainant.
At least one of these links connects to Complainant’s own website at <expedia.com>.
Respondent offered to sell the disputed domain names to Complainant for $212 each, upon the condition that Complainant provide the money prior to the transfer of the disputed domain names.
Respondent’s <expediaasia.com> and <expediaasia.org> domain names are confusingly similar to Complainant’s EXPEDIA mark.
Respondent does not have any rights or legitimate interests in the <expediaasia.com> and <expediaasia.org> domain names.
Respondent registered and uses the <expediaasia.com> and <expediaasia.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being 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 names registered by Respondent are confusingly similar to a trademark in
which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain names; and
iii. the domain names were registered and are being used by Respondent in bad faith.
Complainant’s international and US trademark registrations establish Complainant’s rights in the EXPEDIA mark. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002): "[R]egistration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <expediaasia.com> and <expediaasia.org> domain names are confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i), inasmuch as both domain names contain Complainant’s entire mark combined with the geographic identifier “asia” and a generic top-level domain name. Neither of these additions is enough to negate the confusing similarity between Respondent’s domain names and Complainant’s mark. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to a complainant’s CMGI mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <expediaasia.com> and <expediaasia.org> domain names. Complainant must first make a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with a respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint in this
proceeding raises a presumption that Respondent lacks rights or legitimate
interests in the domain names <expediaasia.com> and <expediaasia.org>. See 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.
See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). However, the Panel will nonetheless examine the record to determine if there is any evidence to support the proposition that Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s EXPEDIA mark and that Respondent is not associated with Complainant in any way. Additionally, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain names. There is also no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain names. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), a panel found that a respondent had no rights or legitimate interests where that respondent was not commonly known by the mark and had never applied for a license or permission from a complainant to use the trademarked name. See also 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The evidence on record likewise indicates that Respondent is using the disputed domain names to divert Internet users attempting to locate Complainant’s website to a competing travel website that also contains links to other third-party websites, some of which are in direct competition with Complainant. The Panel infers from this that such use of the disputed domain names is for Respondent’s commercial benefit. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), a panel found that a respondent’s demonstrated intent to divert Internet users seeking a complainant's website to a website of that respondent and for its benefit was not 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 also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where a respondent attempted to profit using a complainant’s mark by redirecting Internet traffic to its own website). Thus, the Panel concludes that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Based on the uncontested
evidence presented by Complainant, the Panel finds that Respondent registered
and is using the disputed domain names for its commercial gain. The <expediaasia.com>
and <expediaasia.org> domain names resolve to the website of a
competing travel agency that also contains links to third-party websites, some
of which are in direct competition with Complainant, in an obvious attempt to
trade on Complainant’s well-known name.
Such use of Complainant’s mark is capable of creating a likelihood of
confusion as to the possible source of the website and Complainant’s
affiliation with it. Accordingly, the
Panel concludes that such use of the disputed domain names constitutes bad
faith registration and use by Respondent, under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding
that if a respondent profits from its diversionary use of a complainant's mark
when the domain name resolves to commercial websites and if that respondent
fails to contest the complaint, it may be concluded that it is using the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that a respondent registered the domain name <statefarmnews.com>
in bad faith because it intended to use a complainant’s marks to attract the
public to the web site without permission from the complainant).
Moreover, Respondent
plainly registered the contested domain names with knowledge of Complainant’s
rights in the EXPEDIA mark by virtue of Complainant’s prior registrations of
that mark with the pertinent national authorities. Registration of a confusingly similar domain names despite such
actual or constructive knowledge evidences bad faith registration of the domain
name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <expediaasia.com> and <expediaasia.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 20, 2006
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