Expedia, Inc. v. Smart Marketing Ltd.
Claim Number: FA0610000817906
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 Smart Marketing Ltd. (“Respondent”), Flat G, 9/F, Block 1, Hong Kong 0000, HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myexpedia.com>, registered with Namescout.com.
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.
James A. Carmody, Esq., 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 12, 2006, Namescout.com confirmed by e-mail to the National Arbitration Forum that the <myexpedia.com> domain name is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.com 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 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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@myexpedia.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 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <myexpedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <myexpedia.com> domain name.
3. Respondent registered and used the <myexpedia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., provides travel agency services online through its websites promoted under the EXPEDIA mark. In connection with the provision of its services, Complainant holds numerous trademark and service mark registrations for the EXPEDIA mark at registration offices around the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,224,559 issued February 16, 1999).
Respondent registered the disputed domain name on December 2, 2001. The disputed domain name resolves to a website that features numerous text-based links to third-party travel websites.
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 rights in the EXPEDIA mark
through registration of the mark with the USPTO. 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.”).
Complainant asserts that the disputed domain name is
confusingly similar to its EXPEDIA mark.
The <myexpedia.com> domain name contains Complainant’s mark
in its entirety and adds the term “my” and the generic top-level domain
(“gTLD”) “.com.” Under Policy ¶
4(a)(i), the addition of the term “my” and a gTLD, such as “.com,” to an
otherwise unmodified mark fails to distinguish the disputed domain name from
the mark contained therein.
Accordingly, the Panel finds the <myexpedia.com> domain
name to be confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy
¶ 4(a)(i). See ESPN, Inc. v.
MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that
the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly
similar to Complainant’s SportsCenter 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden of proof to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. If Complainant makes such a showing, the burden ultimately shifts to Respondent to show that it does have rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). The Panel finds Complainant, through its evidentiary submissions and uncontested assertions, to have successfully established a prima facie case that Respondent lacks rights and legitimate interests.
Respondent’s failure to submit a Response in this proceeding raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, chooses to analyze the record to determine if Respondent has rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(c).
According to the WHOIS registry, the registrant of the disputed domain name is “Smart Marketing Ltd.” of Hong Kong. Because there is no other evidentiary submissions indicating otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); 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 domain name resolves to a website
that features numerous text-based links to third-party travel websites. The Panel finds that the use of a
confusingly similar domain name to resolve to a website that merely displays
commercial advertisements to third-party websites neither amounts to 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). This finding is bolstered by the fact that
the featured commercial links relate to the same industry in which Complainant
is involved. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites 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) because the registrant
presumably receives compensation for each misdirected Internet user); see
also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains
For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that
Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com>
and <24hoursfitness.com> domain names to redirect Internet users to a
website featuring advertisements and links to Complainant’s competitors could
not be considered a bona fide offering of goods or services or a
legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent registered and used the
disputed domain name in bad faith. Due
to the fact that the website merely consists of text-based advertisements for
third-party websites, the Panel may infer that Respondent is receiving commercial
gain from its operation. Additionally,
as a result of the confusingly similar domain name resolving to a website with
advertisements related to the online travel industry, there is a likelihood that consumers will become
confused as to Complainant’s affiliation with or sponsorship of the resulting
website. Accordingly, the Panel finds
Respondent to have registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See
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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Moreover, Respondent’s diversionary use of the confusing similar domain name to funnel consumers to Complainant’s direct competitors evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (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 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 <myexpedia.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 24, 2006
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