Expedia, Inc. v. Cubicle Liquidators, Inc. / william murray
Claim Number: FA2002001882875
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Cubicle Liquidators, Inc. / william murray (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <officefurnitureexpedia.com> and <officefurniturexpedia.com> (‘the Domain Names’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <officefurnitureexpedia.com> and <officefurniturexpedia.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2020 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@officefurnitureexpedia.com, postmaster@officefurniturexpedia.com. Also on February 12, 2020, 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 March 6, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark EXPEDIA, registered, inter alia, in the USA for Internet related travel services as of 1996.
The Domain Names registered in 2012 are confusingly similar to the Complainant’s famous and federally registered EXPEDIA mark because each contains Complainant’s mark in its entirety. Respondent’s addition of the generic and/or descriptive phrase “office furniture,” either in full or with the final letter “E” overlapping with EXPEDIA, is insufficient to distinguish the Domain Names because the dominant portion of each is Complainant’s EXPEDIA mark.
The Respondent has no rights or legitimate interests in the Domain Names and is not authorized by the Complainant.
The registrant is listed as william murray on the WhoIs data and is trading as Cubicle Liquidators and so is not commonly known by the Domain Names.
<officefurnitureexpedia.com> has been used for a commercial site offering office furniture. <officefurniturexpedia.com> has been used for commercial pay per click links not related to the Complainant and a holding page which enquires if Internet users would like to buy that domain name. Neither of these uses are a bona fide offering of goods or services or a legitimate noncommercial fair use. Offering a domain name for sale suggests a lack of rights or legitimate interests.
First, Respondent’s registration and use of the Domain Names constitute bad faith under UDRP Policy ¶ 4(b)(iv) because Respondent uses the Domain Names to intentionally attract Internet users by creating a likelihood of confusion with Complainant’s EXPEDIA mark as to the source, sponsorship, affiliation, and endorsement of the websites associated with the Domain Names. Regardless of whether Respondent attempts to profit directly or indirectly, the confusingly similar Domain Names trade on Complainant’s goodwill to the benefit of Respondent and to the detriment of Complainant, and thus Respondent’s activities constitute bad faith.
Second, Respondent’s registration and use of the Domain Names constitute bad faith under UDRP Policy ¶ 4(b)(iii) because Respondent disrupts Complainant’s business by using the Domain Names to unfairly compete with Complainant for Internet traffic and by interfering with Complainant’s ability to control use of its registered EXPEDIA mark. Respondent’s activities in opposition to Complainant are sufficient to define Respondent as a competitor under the UDRP.
Third, Respondent’s registration of the two Domain Names that are confusingly similar to Complainant’s EXPEDIA mark constitutes a bad-faith pattern under UDRP Policy ¶ 4(b)(ii).
Fourth, Respondent’s bad faith under UDRP Policy ¶ 4(b)(i) is shown by his use of one Domain Name for a website that displays the invitation “Would you like to buy this domain?” and links to GoDaddy’s website offering its domain brokerage services.
Finally, there is no question that Respondent registered the Domain Names in bad faith with knowledge of Complainant’s rights in its EXPEDIA mark given the longstanding and widespread fame of Complainant’s mark, particularly in the U.S. where Respondent is located, and the fact that the Domain Names contain Complainant’s mark in its entirety. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark EXPEDIA, registered, inter alia, in the USA for Internet related travel services as of 1996.
The Domain Names were registered in 2012 several years after the Complainant’s mark had become well known. <officefurnitureexpedia.com> has been used for a commercial site offering office furniture. <officefurniturexpedia.com> has been used for commercial pay per click links not related to the Complainant and a holding page which enquires if Internet users would like to buy that domain name. The real name of the Respondent’s business used when customers call the number of the web site attached to <officefurniturexpedia.com> is Cubicle Liquidators.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Names consist of the Complainant’s EXPEDIA mark (which is registered in USA for Internet related travel services as of 1996), the generic words ‘office’ and ‘furniture’ or a misspelling of that word without an ‘e’ and the gTLD “.com” which do not distinguish the Domain Names from the Complainant’s mark.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a sign confusingly similar to the Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks).
The gTLD “.com” does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is evidence that shows that in commerce the Respondent is commonly known by the name Cubicle Liquidators and is not, therefore, commonly known by the Domain Names.
The web site attached to <officefurnitureexpedia.com> is a commercial site unconnected to the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. It is also competing in the sense that it draws traffic away from the Complainant by use of the Complainant’s well-known name, instead of the Respondent’s real name Cubicle Liquidators which would be an obvious choice for a domain name for the Respondent’s business and no explanation has been given to explain this. As such on the balance of the evidence presented the Panelist finds that this is not a bona fide offering of goods and services. (See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise commercial services unconnected with the Complainant's business did not constitute a bona fide use of goods and services).
The web site attached to <officefurniturexpedia.com> is a holding page featuring pay per click links and an enquiry as to whether Internet users want to buy that domain.
There is a suggestion that <officefurniturexpedia.com> is for sale generally on the Internet. Attempts to sell a disputed domain name for more than out of pocket costs of acquisition of a domain name may be evidence that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017).
The Respondent has used the site attached to <officefurniturexpedia.com> for links offering commercial services not connected with the Complainant. He does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing and, as such, does not amount to the bona fide offering of goods and services. See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The uses of the Domain Names are commercial and so cannot be a legitimate noncommercial fair use.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not responded to the Complaint or explained why it has chosen to register two domain names containing the well-known Complainant’s EXPEDIA mark rather than use the Respondent’s actual business name ‘Cubicle Liquidators’. Accordingly on the evidence presented the Panelist believes that the Respondent has registered the Domain Names containing the famous trade mark of another with actual knowledge of that mark and its attractive goodwill to draw traffic to the Respondent’s own commercial web sites without any reasonable or logical explanation.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of those web sites likely to disrupt the business of the Complainant. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
With regard to <officefurniturexpedia.com> the holding page attached to it suggests that that domain name is for sale to Internet users generally. Evidence of a respondent attempting to sell a disputed domain name may be evidence of bad faith per Policy 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name were registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iii) and 4(b)(iv) for both Domain Names and additionally under ¶ 4(b)(i) in relation to <officefurniturexpedia.com>. There is no need to consider any further allegations of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officefurnitureexpedia.com> and <officefurniturexpedia.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 9, 2020
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