National Arbitration Forum
DECISION
Expedia, Inc. v. Blake
Emmerson
Claim Number: FA0612000873346
PARTIES
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expidia.org>, registered with Go Daddy
Software, Inc.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 19, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 22, 2006.
On December 20, 2006, Go Daddy Software, Inc confirmed by e-mail to
the National Arbitration Forum that the <expidia.org> domain name is
registered with Go Daddy Software, Inc
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc has verified that Respondent is bound by the Go Daddy Software, 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 January 3, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 23, 2007 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@expidia.org by e-mail.
A Response was received on January 23,
2007, but the National Arbitration Forum determined it to be deficient
pursuant to Supplemental Rule 5(a), as it was not received in hard copy
form. In its discretion, the
Panel will consider the deficient Response in addition to the Complaint. See Strum v.
Nordic Net
On January 26, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Expedia, Inc., contends that the <expidia.org> domain name is identical or confusingly similar to its EXPEDIA mark; Respondent has no rights or legitimate interests in respect to the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent, Blake
Emmerson, says that he registered the <expidia.org> domain name after
“noticing high search engine rankings” for the <expedia.ca> domain
name. Respondent claims that because he
has used the disputed domain name since 2002, “it seems reasonable that
expidia.org could at least operate similarly.”
FINDINGS
Since at least as early as
October 1996, Expedia and its predecessors have been using the EXPEDIA mark, as
well as <expedia.com>, on or in connection with a wide variety of goods
and services, most notably travel agency services provided through Expedia's
web sites, including providing access to airline, hotel and rental car
reservations for destinations in the United States and around the world. Expedia owns numerous valid and subsisting
registrations and applications for the EXPEDIA mark worldwide, including United States
Respondent is not affiliated or
related to Expedia in any way, nor is Respondent licensed by Expedia or
otherwise authorized to use the EXPEDIA mark.
Respondent registered the <expidia.org> domain name on January 5, 2005.
The <expidia.org> domain name
resolves to a holding page that features links to Expedia and several of its
competitors, including Smartfares.com, Orbitz.com, and Cheaptickets.com.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is
identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Identical and/or Confusingly
Similar
Complainant 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. 2,402,434 issued November 7, 2000). Complainant’s trademark registrations with
the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶
4(a)(i).
Respondent has simply misspelled
Complainant’s EXPEDIA mark in the <expidia.org> domain name by
replacing the letter “e” with the letter “i” and thus the disputed domain name
is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). Respondent has failed to sufficiently
distinguish the disputed domain name from the mark through the simple
substitution of one letter in the mark for another letter that is phonetically
similar. See Intelius, Inc. v. Kim
Sang Hyn, FA 703175 (Nat. Arb. Forum Jul. 5, 2006) (finding the
<intellus.com> domain name to be confusingly similar to the complainant’s
INTELIUS mark because the domain name differed from the mark by one letter and
was visually similar); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has the initial burden of making a prima facie case that Respondent has no rights or legitimate interests in the <expidia.org> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.”).
The WHOIS information lists the
registrant of the domain name as “Blake Emmerson” and there is no other
evidence in the record suggesting that Respondent is commonly known by the <expidia.org>
domain name. Complainant has not
authorized or licensed Respondent to register or use a domain name
incorporating a variation of Complainant’s EXPEDIA mark. Since Respondent is not commonly known by the
disputed domain name, Respondent does not have rights or legitimate interests
in the <expidia.org> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); 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).
Additionally, Respondent’s website at the <expidia.org> domain name is simply a pay-per-click web page with links to Complainant’s competitors in the travel industry. Respondent is redirecting Internet users who misspell Complainant’s EXPEDIA mark to competing websites for commercial gain, presumably in the form of click-through fees, and such use does not constitute 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 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.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the <expidia.org>
domain name to redirect Internet users to competing websites suggests that
Respondent registered the disputed domain name for the primary purpose of
disrupting Complainant’s business.
Therefore, Respondent has registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(iii) by diverting
Internet users to its own website selling competing products and services. 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)).
Respondent’s <expidia.org>
domain name resolves to a commercial search engine displaying various links to
third-party websites, some of which compete with Complainant. The Panel infers that Respondent is receiving
“click-through” fees for diverting Internet users via these links and
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. Such
registration and use is bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also G.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).
Respondent has engaged in
typosquatting by registering a domain name containing a common misspelling of
Complainant’s EXPEDIA mark. Previous
panels have found the practice of typosquatting to be bad faith registration
and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League,
Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the
intentional misspelling of words with [the] intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Sports
Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4,
2002) (“Redirecting Internet users attempting to reach a complainant’s website
in order to gain a profit off of a complainant is one example of bad faith use
and registration under the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expidia.org> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: February 9, 2007
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