Expedia, Inc. v. Freeman Dickson
Claim Number: FA2301002028288
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia. Respondent is Freeman Dickson (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediagroupcareer.com>, registered with NameCheap, Inc.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 19, 2023; Forum received payment on January 19, 2023.
On January 19, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <expediagroupcareer.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2023 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@expediagroupcareer.com. Also on January 24, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the EXPEDIA and EXPEDIA GROUP marks established by its ownership of the trademark and service mark registrations described below and its extensive use of the marks including on its websites at including at <www.expedia.com> and at <www.careers.expediagroup.com>.
Complainant submits that it in addition to its extensive use of the EXPEDIA mark it also offers travel services under the marks including TRAVELOCITY, HOTELS.COM, HOTWIRE, ORBITZ, VRBO, that feature the world’s broadest supply portfolio, encompassing more than 200 travel booking sites in more than 70 countries covering 3,000,000+ properties, 500+ airlines, and 220,000+ activities.
Complainant further specifically submits that as one of the world’s largest providers of travel services, it operates full-service online travel agency services through its EXPEDIA-branded websites at <www.expedia.com> and localized EXPEDIA websites in more than 40 countries, adding that over the years, Complainant’s commercial success has been tremendous, with revenues were approximately $8,598,000,000 in 2021, $5,199,000,000 in 2020, and $12,067,000,000 in 2019.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s famous and federally registered EXPEDIA mark, because it contains Complainant’s mark in its entirety and panels established under the Policy have consistently held that a domain name containing a mark in its entirety is confusingly similar to the mark at issue. See, e.g., Expedia v. Stamate Forum Case FA1411001588623 (“Complainant claims the <expedia-flights.net> domain name is confusingly similar to Complainant’s EXPEDIA mark because the disputed domain name incorporates the mark in its entirety. . . . It seems evident Respondent’s <expedia-flights.net> domain name is confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶4(a)(i). The Panel finds Policy ¶4(a)(i) satisfied.”).
Complainant further contends that the additional terms “career” and “group” within the disputed domain name heighten the confusingly similarity with Complainant’s mark, because such terms directly relate to Complainant’s business, namely, Complainant’s corporate name and federally registered mark EXPEDIA GROUP, its domain name <expediagroup.com>, and the URL <www.careers.expediagroup.com>
Furthermore, Complainant submits that panels established under the Policy have routinely held that a generic Top-Level Domain name (“gTLDs”) such as <.com> in a domain name is irrelevant to the analysis of confusing similarity under the Policy. Citing Expedia v. Escobar Forum Case FA0602000638204) (finding <expediagetaways.com> confusingly similar to Complainant’s EXPEDIA mark because “[r]espondent’s domain name incorporates Complainant’s mark in its entirety, adding the travel-related term ‘getaways’ and the generic top-level domain ‘.com.’ Respondent’s addition of these features to Complainant’s mark does not avoid the creation of confusing similarity between the disputed domain name and Complainant’s mark, especially because the term ‘getaways’ is directly related to Complainant’s travel services business.”).
Complainant next alleges that Respondent has no rights or legitimate interest in the disputed domain name, arguing that Respondent is not, and has not been commonly known by the disputed domain name, that nothing in Respondent’s WhoIs information for the disputed domain name registration or the record demonstrates that Respondent is commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use its EXPEDIA mark. Citing Expedia v. Giang Forum Case FA2103001936854 (“Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name [<expediacares.com>]: when a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). . . Here, the WHOIS information for the disputed domain name lists the registrant as ‘Jacky Giang’. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).”).
Complainant refers to a copy of an exchange of messages between a third party and one of Complainant’s employees, which has been exhibited in an annex to the Complaint, wherein Complainant submits, the third party notified Complainant of his belief that he had been the subject of an attempted “job scam” involving Respondent attempting to pass itself off as Complainant and soliciting or phishing for users’ personal confidential information.
The third-party complained that Respondent used the disputed domain name as an email address for purposes which he believed to be, and which Complainant alleges were, fraudulent activities. Complainant submits that such fraudulent activities do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Complainant argues that such passing off and fraudulent activities have been consistently held to demonstrate a lack of legitimate interest under Policy ¶¶ 4(b)(i) and 4(b)(iii). Citing Twentieth Century Fox Film Corporation v. Ian (Forum Case FA1802001772894) (holding respondent’s use of the domain name <foxgroup-okta.com> for a fraudulent phishing scheme “obviously does not give rise to rights or legitimate interests under the Policy.”).
Additionally referring to a screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant argues that the screen capture illustrates Respondent’s use of the disputed for a pay-per-click website which constitutes further evidence that Respondent has no legitimate interest under Policy ¶¶ 4(b)(i) and 4(b)(iii).
Complainant submits that panels established under the Policy have consistently found no legitimate interest in the use of trademark-related domain names for pay-per-click websites and/or similar websites featuring advertisements. Citing Expedia v. Singh Forum Case FA2012001924758) (“Respondent uses the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click hyperlinks, including to directly competing travel websites. Using a confusingly similar domain name to host pay-per-click hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that given the international fame of Complainant’s mark, which is a coined word, it is indisputable that Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s rights in its EXPEDIA mark.
Complainant contends that Respondent’s selection and registration of the disputed domain name that contains Complainant’s EXPEDIA mark in its entirety, and Respondent’s fraudulent and competing activities, constitute bad faith registration and use.
Complainant submits that the registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy. See Expedia v. Khan Forum Case FA1808001802571) (“. . . Complainant’s EXPEDIA mark has created significant good will and consumer recognition around the world and was first used by Complainant in 1996. . . Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights when the disputed domain names [<expediapak.com> and <expediapakistan.com>] were registered and subsequently used.”).
Arguing that the disputed domain name is being used in bad faith, Complainant contends that Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s EXPEDIA mark as to the source, sponsorship, affiliation, and endorsement of the website associated with the disputed domain name. Citing Expedia, Inc. v. Singh Forum Case FA2012001924758) (“. . . Respondent uses the <myretroexpedia.com> and <theretroexpedia.com> domain names to host pay-per-click hyperlinks, including to directly competing travel websites. This is indicative of bad faith registration and use. . . . Therefore, the Panel finds that Respondent registered and uses the <myretroexpedia.com> and <theretroexpedia.com> domain names in bad faith per Policy ¶ 4(b)(iii) and/or (iv).”).
Complainant further submits that Respondent is disrupting Complainant’s business by (a) using the disputed domain name for fraudulent and competing activities, (b) competing with Complainant for Internet traffic, and (c) by interfering with Complainant’s ability to control use of its famous and federally registered EXPEDIA mark, and therefore Respondent’s activities in opposition to Complainant are sufficient to define Respondent as a competitor under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of travel services and is the registered owner of the EXPEDIA trademark for which it holds a portfolio of registrations which include the following:
· United States of America, registered trademark EXPEDIA, registration number 2,224,559, filed April 9, 1996, registered on the Principal Register on February 16, 1999, for services in International Class 42;
· United States of America, registered trademark EXPEDIA, registration number 2,220,719, registered on the Principal Register on January 26, 1999, for services in International Class 39
· United States of America, registered trademark EXPEDIA, registration number 2,610,290, registered on the Principal Register on August 20,2002, for services in International Class 35;
· United States of America, registered trademark and service mark EXPEDIA GROUP, registration number 6,428,611,290, registered on the Principal Register on July 20, 2021 for goods and services in International Classes 9, 35, 36, 39, 41, 42, and 43.
Complainant has an established Internet presence and maintains a number of websites including at <www.expedia.com>, a corporate website at <www.expediagroup.com> and a website dedicated to careers within Complainant’s group at <www.careers.expediagroup.com>.
The disputed domain name < expediagroupcareer.com> was registered on June 21, 2022. It resolves to a parking page maintained by the Registrar which has links to categories of websites that include employment opportunities, recruitment, coaching and schools. It has also been used by Respondent to establish an email account from which emails have been sent in the course of attempting to perpetrate a fraudulent phishing scheme.
There is no information available about Respondent, except for that provided in the Complaint as amended, the Registrar’s WhoIs for the disputed domain name and the information relating to the registration of the disputed domain name which has been provided by the Registrar in response to the request for the purposes of this proceeding.
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”).
Complainant’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the EXPEDIA and EXPEDIA GROUP marks, established by the ownership of the portfolio of trademark and service mark, registrations described above.
Furthermore the Complainant’s uncontested evidence is that it has established rights in the EXPEDIA mark by its use providing travel agency services through its <expedia.com> website and other localized websites in more than 40 countries with revenues approximating $8,598,000,000 in 2021, $5,199,000,000 in 2020, and $12,067,000,000 in 2019.
Confusing Similarity
The disputed domain name <expediagroupcareer.com> consists of Complainant’s EXPEDIA mark in its entirety in combination with the words “group” and “career” together with the gTLD extension <.com>.
Complainant’s EXPEDIA mark is the initial, dominant and only distinctive element in the disputed domain name.
The words “group” and “career” are descriptive and generic and their presence in the disputed domain name do not prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity, as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the EXPEDIA mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not, and has not been commonly known by the disputed domain name;
· nothing in Respondent’s WhoIs information or the record demonstrates that Respondent is commonly known by the disputed domain name;
· Complainant has not authorized Respondent to use its EXPEDIA mark;
· a copy of an exchange of messages between a third party and one of Complainant’s employees, which has been exhibited in an annex to the Complaint, illustrates that a third party notified Complainant of his belief that he had been the subject of an attempted “job scam” involving Respondent attempting to pass itself off as Complainant and soliciting or phishing for Internet users’ personal confidential information and such fraudulent activities, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
· such passing off and fraudulent activities have been consistently held to demonstrate a lack of legitimate interest under Policy ¶¶ 4(b)(i) and 4(b)(iii).
· a further screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, illustrates that the disputed domain name resolves to a pay-per-click website which constitutes further evidence that Respondent has no legitimate interest under Policy ¶¶ 4(b)(i) and 4(b)(iii);
· panels established under the Policy have consistently found no legitimate interest in the use of trademark-related domain names for pay-per-click websites and/or similar websites featuring advertisements.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the EXPEDIA, mark which predate the registration and first use of the disputed domain name on June 21, 2022.
The uncontested evidence is that in the years coming up to the registration of the disputed domain name Complainant had a well-established global business with revenues of approximately $8,598,000,000 in 2021, $5,199,000,000 in 2020, and $12,067,000,000 in 2019 and an established Internet presence.
On the balance of probabilities therefore, and in the absence of any response from Respondent, this Panel finds that when the disputed domain name was registered, the registrant had knowledge of Complainant’s rights in its EXPEDIA mark, which is a coined word, and is the dominant and only distinctive element in the disputed domain name.
Given the extent of the international reputation and goodwill of Complainant and its EXPEDIA mark, it is implausible that the disputed domain name was registered for any reason other than to take predatory advantage of Complainant’s reputation and goodwill.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant and its EXPEDIA mark in mind.
The uncontested evidence adduced by Complainant shows that the disputed domain name has been used to create an email account which has been used to create an address which was used in an attempt to perpetrate a scam against a third party. The third party contacted Complainant reporting that he had been contacted and offered a position by a person purporting to represent Complainant, but he suspected that he was victim of a scam attempt.
Respondent has not denied this allegation. Such use of a domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
Furthermore, the uncontested evidence is that Respondent is causing, permitting or allowing the disputed domain name to resolve to the Registrar’s parking page which contains pay-per-click links to third party websites offering employment opportunities. Such use of the disputed domain name that is confusingly similar to Complainant’s EXPEDIA and EXPEDIA GROUP, registered marks must on the balance of probabilities confuse unsuspecting Internet users and misdirect Internet traffic intended for Complainant. Such use of the disputed domain name also constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediagroupcareer.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________
James Bridgeman SC,
Panelist
Dated: February 21, 2023
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