Expedia, Inc. and Orbitz, LLC v. Rajiv Khatri / Brian Iacaponi / Next Click Ventures LLC
Claim Number: FA1709001751654
Complainant is Expedia, Inc. and Orbitz, LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Rajiv Khatri / Brian Iacaponi / Next Click Ventures LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediamoves.com>, <expediaremovals.com>, and <0rbitzmoving.com>, registered with Google Inc., and <expediarentals.com> and <expediarentals.net>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2017; the Forum received payment on September 29, 2017.
On October 3, 2017, GoDaddy.com, LLC and Google Inc. confirmed by e-mail to the Forum that the <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> domain names are registered with GoDaddy.com, LLC or Google Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Google Inc. have verified that Respondent is bound by the GoDaddy.com, LLC and Google Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@expediamoves.com, postmaster@expediaremovals.com, postmaster@0rbitzmoving.com, postmaster@expediarentals.com, postmaster@expediarentals.net. Also on October 16, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainants, Expedia, Inc. and Orbitz, LLC. [hereinafter “Complainant”], operate full-service, online travel agencies, providing travelers with travel-related goods and services. Complainant registered the EXPEDIA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719, registered Jan. 26,1999). Complainant also registered the ORBITZ mark with USPTO (e.g., Reg. No. 2,858,685, registered June 29, 2004). Respondent’s <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> are confusingly similar to the Complainant’s marks. Respondent’s <expediamoves.com>, <expediaremovals.com>, <expediarentals.com>, and <expediarentals.net> incorporate the EXPEDIA mark in its entirety, adding the generic terms “moves,” “removals,” and “rentals,” and the “.com” and “.net” generic top level domains (“gTLDs”). Respondent’s <0rbitzmoving.com> incorporates the ORBITZ mark in its entirety, exchanging the letter “O” in ORBITZ with the number “0” and adding the “.com” gTLD.
Respondent has no rights or legitimate interests in <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net>. Respondent is not commonly known by any of the disputed domain names. Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain. Instead, <expediaremovals.com>, <expediarentals.com>, and <expediarentals.net> resolve to pay-per-click sites. Additionally, <expediamoves.com> and <0rbitzmoving.com> purport to offer its own commercial moving services using the ORBITZ and EXPEDIA marks.
Respondent registered and used <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> in bad faith. Respondent’s registration of multiple disputed domain names and prior adverse UDRP decisions constitute a pattern of bad faith registration. Respondent’s registration of the disputed domain names disrupts Complainant’s business by diverting users searching for travel services to Respondent’s websites. Additionally, Respondent has used the disputed domain names to intentionally attract users, for commercial gain, to websites unrelated to Complainant’s business. Respondent had actual knowledge of the EXPEDIA and ORBITZ marks when it registered <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Expedia, Inc. and Orbitz, LLC, of Bellevue, WA, USA. Complainant is the owner of domestic registrations for the marks EXPEDIA, EXPEDIA.COM, and related marks, which it has continuously used since at least as early as 1996, in connection with its provision of travel agency services and related goods such as guidebooks, maps, directories and other informational resources. Complainant also owns domestic registrations for the mark ORBITZ, ORBITZ.COM, and related marks, which it has continuously used since at least as early as 2000, for goods and services such as those noted above, along with facilitating those services through online chat rooms, bulletin boards, and other interactive computerized means of communication.
Respondent is Rajiv Khatri / Brian Iacaponi / Next Click Ventures LLC, of Fairhaven, MA, USA and Waxhaw, NC, USA. Respondent’s registrar’s address appears to be Scottsdale, AZ, USA. The Panel notes Respondent registered <expediamoves.com> on or about February 26, 2015, <expediaremovals.com> on or about September 24, 2012, <0rbitzmoving.com> on December 21, 2015, and <expediarentals.com> and <expediarentals.net> on or about September 20, 2007.
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."
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.
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(f), 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 (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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants, Expedia, Inc. and Orbitz, LLC. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Expedia, Inc. is the parent company of the wholly-owned subsidiary Orbitz, LLC. Both companies have standing in this matter because “they are affiliated companies, and each has an interest in the subject matter of the Complaint.” Because the Panel accepts the evidence in the Complaint as sufficient to establish a sufficient nexus between Complainants, the Panel will treat them as a single entity in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the “WHOIS registration records and use of the Domain Names indicate that the Domain Names are commonly owned and controlled by” Brian Iacaponi/Next Click Ventures LLC and Rajiv Khatri. Complainant also asserts that following an adverse UDRP decision against Rajiv Khatri for <orbitzmoving.com>, Rajiv Khatri registered <0rbitzmoving.com>, which is virtually identical to the now-defunct <orbitzmoving.com> website. Furthermore, <expediamoves.com> and <0rbitzmoving.com> are very similar to each other, and operated by Rajiv Khatri’s company, Lead Grab, LLC. Therefore, the Panel concludes that Respondent is a single entity.
Complainants, Expedia, Inc. and Orbitz, LLC. [hereinafter “Complainant”], operate full-service, online travel agencies, providing travelers with travel-related goods and services. Complainant registered the EXPEDIA mark with USPTO (e.g., Reg. No. 2,220,719, registered Jan. 26,1999). Complainant also registered the ORBITZ mark with USPTO (e.g., Reg. No. 2,858,685, registered June 29, 2004). Panels have found that USPTO registrations are sufficient to show rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has demonstrated its rights in the EXPEDIA and ORBITZ marks pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> are confusingly similar to the EXPEDIA and ORBITZ marks. Complainant asserts that Respondent’s <expediamoves.com>, <expediaremovals.com>, <expediarentals.com>, and <expediarentals.net> incorporate the EXPEDIA mark in its entirety, adding the generic terms “moves,” “removals,” and “rentals,” and the “.com” and “.net” gTLDs. Additionally, Complainant asserts that Respondent’s <0rbitzmoving.com> incorporates the ORBITZ mark in its entirety, exchanging the letter “O” in ORBITZ with the number “0” and adding the “.com” gTLD. The addition of generic terms and a gTLD are insufficient to differentiate a disputed domain name from a mark. Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Similarly, changing a letter into a number fails to differentiate a disputed domain name from the original mark. See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s domain names are confusingly similar to Complainant’s marks under the Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant asserts Respondent has no rights or legitimate interests in <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net>. Complainant argues that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Brian Iacaponi” of “Next Click Ventures LLC” for <0rbitzmoving.com>, <expediamoves.com>, and <expediaremovals.com>, and “Rajiv Khatri” for <expediarentals.com>, and <expediarentals.net>. Where respondents have failed to submit a response, panels have relied on WHOIS information to determine whether that respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Based on the WHOIS data, and Respondent’s failure to address Complainant’s assertions, the Panel finds that Respondent is not commonly known by the names pursuant to Policy ¶ 4(c)(ii).
Complainant asserts Respondent has no rights or legitimate interests in <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> because Respondent has not made a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain. Complainant argues Respondent’s <expediamoves.com> and <0rbitzmoving.com> resolves to its own commercial websites unrelated to Complainant’s business. “Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.” Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017). Furthermore, Complainant argues that Respondent’s <expediaremovals.com>, <expediarentals.com>, and <expediarentals.net> redirect users to webpages hosting hyperlinks to websites also unrelated to Complainant’s business. “Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.” Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015). The Panel here finds that Respondent lacks rights and legitimate interests in <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> pursuant to Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends Respondent registered and used <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> in bad faith. Complainant argues Respondent registered multiple disputed domain names infringing on Complainant’s EXPEDIA and ORBITZ marks. Additionally, Respondent has had prior adverse UDRP decisions against it, thereby evincing a pattern of bad faith registration. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”). The Panel here finds that Complainant has established that Respondent has a pattern of bad faith registrations.
Next, Complainant asserts that Respondent’s <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> disrupts Complainant’s business by diverting internet users to websites and links unrelated to Complainant’s business. The respondent does not have to be a commercial competitor to disrupt the complainant’s business. The respondent may be “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). Complainant further contends that Respondent’s <expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> intentionally attract internet users to websites unrelated to Complainant’s business, presumably for commercial gain, by creating a likelihood of confusion of Respondent’s affiliation with Complainant. The registration and use of a domain name, confusingly similar to a complainant’s mark, to direct internet traffic to a commercial links page to profit from click-through fees or other revenue sources, constitutes bad faith under Policy ¶ 4(b)(iv). T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006). Moreover, if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the<expediamoves.com>, <expediaremovals.com>, <0rbitzmoving.com>, <expediarentals.com>, and <expediarentals.net> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 22, 2017
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