Expedia, Inc. v. Sinergi8 c/o A.A. Ngurah Yulia Wirapramana
Claim Number: FA0610000817308
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 Sinergi8 c/o A.A. Ngurah Yulia Wirapramana (“Respondent”), Jl. Tegal Sari I/18, Puri Chandra Asri, Denpasar Bali 80362, ID.
The domain names at issue are <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com>, registered with Enom, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2006.
On October 11, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 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@expediasia.com, postmaster@asiaexpedia.com and postmaster@baliexpedia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 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 <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names.
3. Respondent registered and used the <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is one of the leading travel reservations websites on the Internet. Since as early as 1996, Complainant has continuously used the EXPEDIA mark in connection with its travel reservations services, which include air, hotel and rental car reservations for destinations around the world.
Complainant has registered the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,633,295 issued October 8, 2002; Reg. No. 2,612,384 issued August 27, 2002; Reg. No. 2,610,290 issued August 20, 2002; Reg. No. 2,778,113 issued October 28, 2003; Reg. No. 2,639,932 issued October 22, 2002; Reg. No. 2,402,434 issued November 7, 2000; Reg. No. 2,383,732 issued September 5, 2000). Complainant has also registered the mark in Indonesia, where Respondent resides (Reg. No. IDM000002478 issued April 17, 2003).
Respondent registered the <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names on January 16, 2006. The <expediasia.com> domain name resolves to a holding page, while the <asiaexpedia.com> and <baliexpedia.com> domain names resolve to a commercial web directory with links to other travel reservations websites that directly compete with Complainant.
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 registered the EXPEDIA mark with the USPTO
and in numerous other countries around the world, including in Indonesia, where
Respondent resides. The Panel finds
these trademark registrations to be sufficient for Complainant to establish
rights in the EXPEDIA mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James
(CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005)
(“The Panel finds from a preponderance of the evidence that Complainant has
registered its mark with national trademark authorities. The Panel has determined that such
registrations present a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see
also Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12,
2006) (holding that the complainants established rights in marks because the
marks were registered with a trademark authority).
The disputed domain names each wholly incorporate
Complainant’s EXPEDIA mark and merely add the terms “sia,” “asia” or “bali.” In
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001), the panel found that the respondent’s domain names, all
of which contained the complainant’s entire GUINNESS mark but merely added
common terms to the end, such as “irish stout,” “guide,” “tours” and “jazz
festival,” were confusingly similar to the mark because each featured the
complainant’s GUINNESS mark “prominently.”
As the disputed domain names at issue here also simply append common
terms to Complainant’s EXPEDIA mark, the Panel holds that the <asiaexpedia.com>,
<expediasia.com> and <baliexpedia.com> domain names
are confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v.
Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several
domain names incorporating the complainant’s entire EXPERIAN mark and merely
adding the term “credit” were confusingly similar to the complainant’s mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that
Respondent lacks rights and 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). See 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); 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”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain names. See Geocities v. Geocities.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks 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 has registered the disputed domain names under the name “Sinergi8 c/o A.A. Ngurah Yulia Wirapramana,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Moreover, Respondent is using the <asiaexpedia.com> and <baliexpedia.com> domain names to redirect Internet users seeking Complainant’s travel reservations services to the websites of Complainant’s competitors. The Panel presumes that Respondent receives click-through fees for each consumer it diverts to other websites. Consequently, Respondent’s diversionary use of the disputed domain name for commercial gain is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel further finds that Respondent has not used the
<expediasia.com> domain name in connection with 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), because Respondent has failed to develop a
website at the disputed domain name and has not made any demonstrable
preparations to use the disputed domain name for any purpose since registering
it. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25,
2000) (finding that the respondent’s failure to develop the site demonstrates a
lack of legitimate interest in the domain name); see also Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <baliexpedia.com> and
<asiaexpedia.com> domain names to redirect Internet users to a
website displaying links to competing travel services websites. The Panel finds that Respondent has
registered and is using the disputed domain name in order to disrupt
Complainant’s business under the EXPEDIA mark, which constitutes bad faith
according to Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns,
D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and
used the domain name <eebay.com> in bad faith where the respondent has
used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
The Panel also finds that Respondent’s diversionary use of the <baliexpedia.com> and <asiaexpedia.com> domain names for commercial gain violates Policy ¶ 4(b)(iv), for by linking the domain name to a website displaying links to Complainant’s competitors in the travel industry, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s EXPEDIA mark in order to profit from the goodwill associated with the mark. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Bank of American Fork v. Shen, FA 699645 (Nat. Arb. Forum Jun. 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).
With respect to the <expediasia.com> domain name, Respondent has not used nor made demonstrable preparations to use this domain name since registering it in January 2006. Such nonuse provides evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel stated in Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000), “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s non-use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel concludes that Complainant has satisfied 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 <expediasia.com>, <asiaexpedia.com> and <baliexpedia.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 24, 2006
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