Expedia, Inc. v. Kevin Booth
Claim Number: FA0606000728555
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <expediavillas.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 June 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2006.
On June 8, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <expediavillas.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 13, 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@expediavillas.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 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 <expediavillas.net> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expediavillas.net> domain name.
3. Respondent registered and used the <expediavillas.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is a popular and successful provider of online travel agency goods and services. Complainant has used the EXPEDIA mark in connection with its business since October 1996, and holds several registrations of the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,220,719 issued on January 26, 1999; Reg. No. 2,240,373 issued on April 20, 1999). Complainant offers a wide variety of travel agency goods and services, including airline, lodging and rental car reservations as well as general travel information under its EXPEDIA mark. Complainant uses its EXPEDIA mark in the operation of its websites, accessed through the <expedia.com> and <expedia.co.uk> domain names.
Respondent registered the <expediavillas.net> domain name on April 5, 2005. Respondent is using the disputed domain name to redirect Internet users to its commercial website offering villa rental services in the State of Florida. Respondent’s website competes with Complainant’s business by offering similar travel related goods and services.
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.
Complainant has established its rights in the EXPEDIA mark through registration with the USPTO. The Panel finds that such registration is sufficient to establish rights pursuant to 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.”).
Respondent’s <expediavillas.net> domain name
is confusingly similar to Complainant’s EXPEDIA mark. Respondent’s domain
name incorporates Complainant’s EXPEDIA mark in its entirety, and adds the word
“villa,” which is a descriptive term that can refer to a type of lodging used
by travelers, thus describing an aspect of Complainant’s business. Respondent also adds the generic top-level
domain “.net.” The Panel finds that Respondent’s domain
name is confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶
4(a)(i), despite the minor additions of a descriptive term and a top-level
domain. See Oki Data
Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Rollerblade,
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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the <expediavillas.net> domain name creates a prima facie case. The establishment of a prima facie case shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). It is within the Panel’s discretion to find that Respondent’s failure to submit a Response is evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will examine the available evidence to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the <expediavillas.net> domain
name, which is confusingly similar to Complainant’s EXPEDIA mark, to redirect Internet
users to Respondent’s commercial website.
Respondent’s website offers villa rental services in Florida, a service
in direct competition with Complainant’s travel agency services. The Panel finds that such use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to 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 Gardens Alive,
Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by the complainant and thus, was not using the name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use).
Not only is Respondent failing to use the disputed domain
name in connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use, there is also no available evidence
indicating that Respondent is commonly known by the <expediavillas.net>
domain name. Complainant asserts
that Respondent is not affiliated with or related to Complainant, nor is
Respondent licensed or authorized by Complainant to use Complainant’s EXPEDIA
mark. Further, Respondent’s WHOIS
information identifies Respondent as “Kevin Booth,” a name unrelated to the <expediavillas.net>
domain name. Thus, the Panel finds
Complainant’s assertion that Respondent is not commonly known by the disputed
domain name to be supported by the available evidence, and finds that
Respondent lacks rights or legitimate evidence pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <expediavillas.net> domain name, which is confusingly similar to Complainant’s EXPEDIA mark, to redirect Internet users to its commercial website offering rental services for Florida villas. Respondent’s service is in direct competition with Complainant’s travel agency services, which include connecting customers with lodging reservations. The Panel finds that such competing use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Respondent’s <expediavillas.net> domain name is confusingly similar to Complainant’s EXPEDIA mark. This confusing similarity could easily mislead Internet users. For instance, if an Internet user wanted to use Complainant’s travel agency services to book reservations at a villa they might do a general Internet search using the terms “expedia” and “villas.” This search might bring them to Respondent’s website, instead of to Complainant’s <expedia.com> website. Further, not only might Internet users find themselves misdirected to Respondent’s website, once there they might be confused as to Respondent’s relationship with Complainant, believing that Respondent’s confusingly similar domain name indicates that Respondent is somehow affiliated with Complainant. Thus, the Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to redirect Internet users to Respondent’s commercial website offering competing goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also J .D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
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 <expediavillas.net> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon Panelist
Dated: July 25. 2006
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