Expedia, Inc. v. lwiding perez
Claim Number: FA2011001919439
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is lwiding perez (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expedia.website>, registered with Domain.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 4, 2020; the Forum received payment on November 4, 2020.
On November 4, 2020, Domain.com, LLC confirmed by e-mail to the Forum that the <expedia.website> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 November 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@expedia.website. Also on November 5, 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 formal, compliant response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent submitted two email correspondences on November 5, 2020.
On November 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 formal, compliant response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant offers online travel booking services throughout the world.
Complainant has rights in the EXPEDIA mark through its multiple registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <expedia.website> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.website” generic top-level domain (“gTLD”) to the end.
Respondent lacks rights and legitimate interests in the <expedia.website> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant permitted Respondent to use its EXPEDIA mark. Further, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and divert internet users to the domain name’s website where Respondent offers competing travel booking services.
Respondent registered and uses the <expedia.website> domain name in bad faith. Respondent’s registration and use of the at-issue domain name disrupts Complainant’s business for commercial gain by Respondent passing itself off as Complainant and diverting internet users to the at-issue domain name’s website where Respondent offers travel related booking services competing services. Respondent registered the domain name with actual knowledge of Complainant’s rights in the EXPEDIA mark.
B. Respondent
Respondent failed to submit a formal response in this proceeding. However, Respondent nevertheless responded via email correspondence to the dispute resolution provider. Such email response, although informal, is part of the record and may thus be considered by the Panel in reaching its decision.
In its emails, Respondent contends that the website at <expedia.website> has been retired and proposes that if Complainant wants the domain it “must assume the cost of building [the <expedia.website>] website and domain, and some promotion.” Respondent further declares that “[It] was not trying to confused people [and] was trying to work with an affiliate programs, and respect of logo [sic], the designer of the building put it on it, it was not my fault, so [it was] decided to retire the website…” Respond concludes by announcing that it is waiting for a response if Complainant wants the domain.”
Complainant has trademark rights in EXPEDIA.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s EXPEDIA mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in EXPEDIA.
Respondent passes itself off as Complainant and diverts internet users to the at-issue domain name’s website where Respondent offers competing travel booking services for Respondent’s commercial benefit.
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 formal, compliant 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the EXPEDIA mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <expedia.website> domain name is composed of Complainant’s entire EXPEDIA trademark followed by the generic and descriptive top-level domain name “.website.” The slight difference between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <expedia.website> domain name is confusingly similar to Complainant’s EXPEDIA trademark under Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as ““lwiding perez” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <expedia.website> domain name. The Panel therefore concludes that Respondent is not commonly known by the <expedia.website> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the at-issue domain name to address a website where Complainant’s EXPEDIA mark is prominently displayed along with a logo similar to Complainant’s logos and where Respondent offers travel booking services competing with those services offered by Complainant. Such use of the confusingly similar domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First and as mentioned above, Respondent uses the confusingly similar <expedia.website> domain name to pass itself off as Complainant and divert internet traffic to Respondent’s <expedia.website> website where Respondent displays Complainant trademark and a logo similar to Complainant’s official logos, and where Respondent offers services that directly compete with those services offered by Complainant. Respondent’s use of the at-issue domain in this manner is clearly disruptive to Complainant’s business and misappropriates the goodwill in Complainant’s EXPEDIA trademark thereby demonstrating Respondent’s bad faith registration and use in the domain name under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also, CAN Financial Corporation v. William Thomson / CNA Insurance, FA1541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Additionally, Respondent had actual knowledge of Complainant’s rights in the EXPEDIA mark when it registered <expedia.website> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s world prominent EXPEDIA trademark, from Respondent’s display of the mark on Respondent’s <expedia.website> website, and from Respondent’s use of the domain name and its associated website to offer online services that directly compete with services offered by Complainant. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name in itself shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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.website> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 30, 2020
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