Expedia, Inc. v. John Alvarez
Claim Number: FA2105001947589
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is John Alvarez (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediahomes.com>, <expediahomesllc.com>, <expediahomes.info>, <expediahomeslending.com>, <expediahomeshml.com>, <expediahomeshardmoneyloans.com>, <expediahouses.com>, <expediahomesloanservice.com>, <expediacapitalproup.com>, <expediahomescapital.com>, <expediahomescapitalproup.com>, <expediahomesfunding.com>, <expediahomesrealestate.com> and <partnerwithexpediahomes.com> (the “Domain Names”), 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2021. The Forum received payment that day.
On June 01, 2021, Godaddy.Com, Llc confirmed by e-mail to the Forum that the 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 June 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2021 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@expediahomes.com, postmaster@expediahomesllc.com, postmaster@expediahomes.info, postmaster@expediahomeslending.com, postmaster@expediahomeshml.com, postmaster@expediahomeshardmoneyloans.com, postmaster@expediahouses.com, postmaster@expediahomesloanservice.com, postmaster@expediacapitalproup.com, postmaster@expediahomescapital.com, postmaster@expediahomescapitalproup.com, postmaster@expediahomesfunding.com, postmaster@expediahomesrealestate.com and postmaster@partnerwithexpediahomes.com. Also on June 8, 2021, 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 July 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant is one of the world’s largest travel agencies. Complainant has rights in the EXPEDIA mark through numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Each of the Domain Names is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and is not and has never been a licensee of Complainant or authorized by Complainant to use its EXPEDIA mark, which is famous. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names offer competing services or resolve to pages with links related to the services offered by Complainant and its competitors. Further, Respondent offers the Domain Names for sale.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainant’s rights in the famous EXPEDIA mark, to prevent Complainant from reflecting the mark in corresponding domain names and to disrupt Complainant’s competing business. Respondent uses the Domain Names in bad faith intentionally to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant’s EXPEDIA mark as to the source, sponsorship, affiliation and endorsement of his websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 as 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”).
Complainant has shown that it has rights in the EXPEDIA mark through numerous registrations of the mark with the USPTO, including Reg. No. 2,224,559 registered on February 16, 1999. The Panel finds each of the Domain Names to be confusingly similar to Complainant’s mark because each incorporates the EXPEDIA mark in its entirety and adds generic terms which do nothing to distinguish any of the Domain Names from the mark, together with the inconsequential “.com” or “.info” generic top-level domains, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered long after Complainant has shown that its EXPEDIA mark had become famous, as follows:
<expediahomes.com> July 31, 2018
<expediahomesllc.com> July 31, 2018
<expediahouses.com> August 11, 2018
<expediahomes.info> August 12, 2018
<expediahomeslending.com> September 24, 2019
<expediahomeshml.com> December 28, 2019
<expediahomeshardmoneyloans.com> September 9, 2020 <expediahomesloanservice.com> September 24, 2020
<expediacapitalproup.com> September 24, 2020
<expediahomescapital.com> September 24, 2020
<expediahomescapitalproup.com> September 24, 2020
<expediahomesfunding.com> September 24, 2020
<expediahomesrealestate.com> September 24, 2020
<partnerwithexpediahomes.com> September 24, 2020.
On July 1, 2020 and August 26, 2020 Complainant sent Respondent cease-and-desist letters objecting to his registration and use of those of the Domain Names of which Complainant was then aware. The Panel notes that eight of the Domain Names were registered after those letters were sent, seven being on the same day.
The domain names <expediahomes.com>, <expediahomesllc.com>, <expediahomes.info> and <expediahomeslending.com> resolve to websites that advertise real estate services related to buying, selling, and financing properties. The Panel notes that Complainant says it has been in the business of renting homes, condos, villas and cabins since 2015.
The domain names <expediahouses.com>, <expediahomesloanservice.com>, <expediahomeshardmoneyloans.com>, <expediacapitalproup.com>, <expediahomescapital.com>, <expediahomescapitalproup.com>, <expediahomesfunding.com>, <expediahomesrealestate.com>, <partnerwithexpediahomes.com> and <expediahomeshml.com> resolve to pay-per-click websites displaying search links that connect to pages of sponsored-link advertisements for various commercial websites, including Complainant’s own “www.expedia.com” website and directly competing travel websites. Most of the pay-per-click websites also display “Get This Domain” buttons that link to pages of GoDaddy’s website offering its domain brokerage services for the Domain Names, which Complainant says strongly suggests that Respondent intends to sell the Domain Names.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of the Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known EXPEDIA mark when Respondent registered each of the fourteen Domain Names, including those registered prior to Complainant’s cease-and-desist letters, and did so in bad faith for the purposes set out in paragraphs 4(b)(ii) and (iii) of the Policy. The fourteen Domain Names constitute a pattern for the purposes of paragraph 4(b)(iii).
The Panel is also satisfied that, by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and of the services promoted on his websites. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv).
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediahomes.com>, <expediahomesllc.com>, <expediahomes.info>, <expediahomeslending.com>, <expediahomeshml.com>, <expediahomeshardmoneyloans.com>, <expediahouses.com>, <expediahomesloanservice.com>, <expediacapitalproup.com>, <expediahomescapital.com>, <expediahomescapitalproup.com>, <expediahomesfunding.com>, <expediahomesrealestate.com> and <partnerwithexpediahomes.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 5, 2021
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