Expedia, Inc. v. Tan Kim Fong
Claim Number: FA0610000827672
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 Tan Kim Fong (“Respondent”), Kampung Serdang, PO Box 201, Sitiawan 32000 Malaysia.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <experdia.com>, registered with Dstr Acquisition Vii, Llc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2006.
On October 26, 2006, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <experdia.com> domain name is registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the name. Dstr Acquisition Vii, Llc has verified that Respondent is bound by the Dstr Acquisition Vii, Llc 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@experdia.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 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <experdia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <experdia.com> domain name.
3. Respondent registered and used the <experdia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark. Complainant uses the EXPEDIA mark in connection with offering online travel agency services at its website located at the <expedia.com> domain name. Complainant’s services include access for Internet users to airline, hotel and rental car reservations.
Respondent registered the <experdia.com> domain name on November 4, 2001. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Internet users are first confronted with a pop-up telling them they have won a prize and prompting them to click “ok” to claim their prize. Internet users clicking “ok” are redirected to third-party gambling websites. Internet users clicking “cancel” when confronted by the pop-up are redirected to Respondent’s website featuring third-party links to online travel agency services in direct competition with Complainant, including Travelocity, Priceline and Orbitz.
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. The Panel finds that such registration is sufficient to establish the rights required under 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <experdia.com> domain name is
confusingly similar to Complainant’s EXPEDIA mark. The disputed domain name is a common misspelling of Complainant’s
mark created by adding an extra letter “r.”
Internet users seeking Complainant on the Internet could easily find
themselves redirected to Respondent’s website through a simple typo. The Panel finds that the addition of a
single letter, resulting in a common misspelling of Complainant’s mark, does
not overcome the confusing similarity between the disputed domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dow Jones & Co., Inc. v. Powerclick, Inc.,
D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of
errors or changes, such as the addition of a fourth “w” or the omission of
periods or other such “generic” typos do not change respondent’s infringement
on a core trademark held by the complainant); see also Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s stated assertion that Respondent lacks rights or legitimate interests in the disputed domain name is sufficient to create a prima facie case. With the establishment of a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel may take into account Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See 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.”); 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.”). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the <experdia.com> domain name to redirect Internet users to Respondent’s website featuring pop-ups and links to third-party websites offering Internet search engine services in direct competition with Complainant. Presumably, Respondent receives pay-per-click fees from these links and pop-ups. The Panel finds that such use is not a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). See 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); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Further, there is no available evidence demonstrating that
Respondent is commonly known by the <experdia.com> domain
name. Respondent’s WHOIS information
identifies Respondent as “Tan Kin Fong” which is in no way similar to the
disputed domain name. Additionally,
Complainant asserts that Respondent is in no way sponsored by or affiliated
with Complainant, and that Complainant has not given Respondent permission to
use Complainant’s mark in a domain name.
The Panel finds that Respondent is not commonly known by the disputed
domain name, and thus lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See 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); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the
[<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <experdia.com> domain
name, which is confusingly similar to Complainant’s EXPEDIA mark, to redirect
Internet users to Respondent’s website.
Respondent’s website first confronts Internet users with a pop-up and if
Internet users click through to Respondent’s website it is comprised of numerous links to third-party websites
offering Internet search engine services in direct competition with
Complainant. Presumably, Respondent
receives pay-per-click fees from these links.
The Panel finds that Respondent’s use of a confusingly similar domain
name to redirect Internet users to Respondent’s website, serving as a
clearinghouse for links to third-party websites in competition with
Complainant, disrupts Complainant’s business and is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). SeeDisney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); 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)).
Respondent’s <experdia.com>
domain name is confusingly similar to Complainant’s EXPEDIA mark. Internet users seeking Complainant could
easily find themselves redirected to Respondent’s website through a simple
misspelling or typo of Complainant’s EXPEDIA mark. Because of the confusing similarity between the disputed domain
name and Respondent’s mark Internet users arriving at Respondent’s website may
mistakenly believe that Respondent’s website is sponsored by or affiliated with
Complainant. However, instead of
finding Complainant’s genuine services, Internet users are instead confronted
with the numerous third-party links displayed on Respondent’s website, from
which Respondent presumably receives referral fees. The Panel find’s that
Respondent’s use of a confusingly similar domain name to attract Internet users
to its website, presumably for financial gain, is evidence of bad faith use and
registration pursuant to Policy ¶ 4(b)(iv).
See 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.’”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes).
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 <experdia.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 5, 2006
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