Expedia, Inc. v. Erick Moore
Claim Number: FA0702000926570
Complainant is Expedia, Inc. (“Complainant”), represented by Deborah
J. Peckham, of Kirkpatrick & Lockhart Preston Gates
Ellis LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <expedia.tv>, registered with Go Daddy Software.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 5, 2007.
On February 28, 2007, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <expedia.tv> domain name is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 March 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 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@expedia.tv by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 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.
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 <expedia.tv> domain name is identical to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <expedia.tv> domain name.
3. Respondent registered and used the <expedia.tv> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1996, Complainant, Expedia, Inc., has provided travel services under the EXPEDIA and EXPEDIA.COM marks, including reservations for airline tickets, hotel accommodations, car rentals, cruises, and vacation packages.
Complainant has registered the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,220,719 issued January 26, 1999; Reg. No. 2,612,384 issued August 27, 2002), as well as the EXPEDIA.COM mark (Reg. No. 2,405,746 issued November 21, 2000).
On May 22, 2006, Respondent registered the <expedia.tv> domain name and has since that date used it to redirect Internet users to a competing travel services website, located at the <lastminute.com> domain name.
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’s valid trademark registrations for the EXPEDIA and EXPEDIA.COM marks adequately demonstrate its rights in the marks pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainants federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The <expedia.tv> domain name is an exact replica of Complainant’s registered EXPEDIA mark, but for the addition of the generic top-level domain (“gTLD”) “.tv.” Because gTLDs are a required addition in every domain name, the Panel does not find this addition to be a distinguishing difference. Accordingly, the Panel holds that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance); see also Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant has the burden of
making a prima facie case that
Respondent has no rights or legitimate interests in the domain name in
dispute. If Complainant makes a prima facie case, then the burden
effectively shifts to Respondent to show, on the contrary, that it does have
rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v.
Admin, Domain, FA
873137 (Nat. Arb. Forum
Feb. 13, 2007) (finding that once a prima facie case has been
established by the complainant under Policy ¶ 4(c), the burden then shifts to
the respondent to demonstrate its rights or legitimate interests in the
disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA
888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires
that the complainant must show that the respondent has no rights to or
legitimate interests in the subject domain name and that once the complainant
makes this showing, the burden of production shifts to the respondent to rebut
the complainant’s allegations).
Respondent has not responded to the Complaint. As a result, the Panel presumes that Respondent lacks rights and legitimate interests in the <expedia.tv> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). However, the Panel will now examine the record to determine whether or not Respondent has rights or legitimate interests under the Policy ¶ 4(c) factors.
Under Policy ¶ 4(c)(ii), Respondent can establish rights or legitimate interests if it is commonly known by the <expedia.tv> domain name. However, the WHOIS information lists the registrant of the contested domain name as “Erick Moore,” and there is no other evidence available to indicate that Respondent is commonly known by the disputed domain name. Hence, Respondent has not established rights or legitimate interests under this paragraph of the Policy. See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Under Policy ¶¶ 4(c)(i) and 4(c)(iii), Respondent can
establish rights or legitimate interests if it is making a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the <expedia.tv>
domain name, respectively. Here,
however, Respondent is redirecting Internet users to a competing travel
services website. In Ultimate Electronics, Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003), the Panel found that use of a domain name
featuring a complainant’s entire mark to sell products in competition with a
complainant “demonstrates neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the name.” The panel in Expedia,
Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005), a case involving the current
Complainant, also found that the use of an identical or confusingly similar
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). As a result, Respondent cannot establish
rights or legitimate interests under this paragraph of the Policy by operating
a website in direct competition with Complainant.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name to operate a
competing travel services website provides evidence that it has registered the <expedia.tv> domain name to
disrupt Complainant’s business. The
panels in both Marriott International, Inc. v. MCM Tours, Inc., FA
444510 (Nat. Arb. Forum May 6, 2005) and Classic Metal Roofs, LLC v.
Interlock Industries, Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) found
bad faith registration and use where respondents were redirecting Internet
users to competing websites.
Consequently, the Panel finds bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
The Panel also finds bad faith registration and use under
Policy ¶ 4(b)(iv), for by redirecting Internet users to a competing website,
Respondent is likely profiting from customers seeking Complainant’s travel
services who end up at Respondent’s website instead. Respondent is taking advantage of the
confusing similarity between the <expedia.tv>
domain name and Complainant’s registered EXPEDIA mark in order to profit from
the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to Respondent’s website offering competing travel services violated Policy ¶
4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions,
FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith
under Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to the
respondent’s website offering competing computer products and services).
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 <expedia.tv> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 9, 2007
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