Expedia, Inc. v. Virtus Offshore Investment Co.
Claim Number: FA0705000990335
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate and Kristen S. Knecht, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311
South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Virtus Offshore Investment Co. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ezpedia.com>, <expedua.com> and <expedis.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On May 19, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <ezpedia.com>, <expedua.com> and <expedis.com> domain names are registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.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 May 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@ezpedia.com, postmaster@expedua.com and postmaster@expedis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <ezpedia.com>, <expedua.com> and <expedis.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <ezpedia.com>, <expedua.com> and <expedis.com> domain names.
3. Respondent registered and used the <ezpedia.com>, <expedua.com> and <expedis.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., offers a wide variety of travel-related goods and services, most notably travel agency services and online access to airline, hotel and rental car reservations worldwide. Complainant provides these services through its <expedia.com> domain name and its corresponding EXPEDIA mark. Complainant holds trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark (Reg. No. 2,220,719 issued January 26, 1999).
Respondent registered the <ezpedia.com> and <expedua.com> domain
names on
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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the EXPEDIA mark. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel finds that Respondent’s <ezpedia.com>, <expedua.com> and <expedis.com>
domain names are confusingly similar to Complainant’s EXPEDIA mark as they are
close misspellings of Complainant’s mark and do not change the overall
impression of the mark. The letter “z” in
<ezpedia.com> simply replaces
the letter “x” in Complainant’s EXPEDIA mark, the letter “u” in <expedua.com> replaces the letter
“i” in the mark and the letter “s” in <expedis.com>
merely replaces the letter “a” in the mark.
Therefore, the disputed domain names are common misspellings and are
confusingly similar to Complainant’s EXPEDIA mark. Moreover, because a generic top-level domain
(“gTLD”) is a required part of all domain names, the addition of the gTLD
“.com” to Complainant’s mark does not render the disputed domain names
distinct. See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that,
by misspelling words and adding letters to words, a respondent does not create
a distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA
94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com>
is a common misspelling of the DAVE MATTHEWS BAND mark and therefore
confusingly similar); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must initially establish that Respondent lacks rights
or legitimate interests with respect to the disputed domain names. However, once Complainant makes a prima facie case, the burden of proof
shifts and Respondent must prove that it has rights or legitimate interests in
the <ezpedia.com>, <expedua.com> and
<expedis.com> domain names. See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <ezpedia.com>, <expedua.com> and <expedis.com> domain names. See 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.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <ezpedia.com>, <expedua.com> and <expedis.com> domain names and there is no other evidence that Respondent is commonly known by the disputed domain names. Moreover, Complainant asserts that Respondent is not authorized or licensed to use Complainant’s EXPEDIA mark and that Respondent is not associated with Complainant in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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).
Respondent is using the <ezpedia.com>, <expedua.com> and
<expedis.com> domain names to display links to various
third-party websites, including links to Complainant’s own website and links to
Complainant’s direct competitors in the online travel industry. The Panel infers that this is being done to
commercially benefit Respondent through the earning of click-through fees. The Panel thus finds that this is not 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). See WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each misdirected
Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy); see also Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because the respondent's sole purpose in selecting the domain
names was to cause confusion with the complainant's website and marks, its use
of the names was not in connection with the offering of goods or services or
any other fair use).
Additionally, the Panel finds that Respondent lacks rights
or legitimate interests in the disputed domain names because of the nature of
the names. The <ezpedia.com>, <expedua.com> and <expedis.com>
domain names are typosquatted versions of Complainant’s mark as they contain
common typing errors. See Encyclopaedia Britannica, Inc. v.
Zuccarini, D2000-0330 (WIPO
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <ezpedia.com>, <expedua.com> and
<expedis.com> domain names to redirect Internet users to
websites that contain various links, some of which are in direct competition
with Complainant’s online travel services, as well as unauthorized links to
Complainant’s own website. The Panel
finds that this constitutes a disruption of Complainant’s business and qualifies
as bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
The Panel presumes that Respondent is using the disputed
domain names for its own commercial benefit through the earning of
click-through fees for the links displayed on the websites that resolve from
the <ezpedia.com>, <expedua.com> and
<expedis.com> domain names. Furthermore, the Panel finds that the disputed
domain names are capable of creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship and affiliation with the
disputed domain names and corresponding websites and links. Such commercial benefit and likelihood of
confusion constitute bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent’s bad faith registration and use is further indicated under Policy ¶ 4(a)(iii) due to the typosquatted nature of the disputed domain names. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also 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.”).
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 <ezpedia.com>, <expedua.com> and <expedis.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 21, 2007
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