Expedia, Inc. v. RAMESH SILAWAL / Global innovative group LLC
Claim Number: FA2307002052008
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is RAMESH SILAWAL / Global innovative group LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediaholiday.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on July 6, 2023; Forum received payment on July 6, 2023.
On July 7, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <expediaholiday.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@expediaholiday.com. Also on July 11, 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 August 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest full-service online travel companies.
Complainant holds a registration for the EXPEDIA service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,224,559, registered February 16, 1999, and renewed most recently as of February 27, 2019.
Complainant also has rights in the EXPEDIA mark acquired under the common law.
Respondent registered the domain name <expediaholiday.com> on or about April 4, 2019.
The domain name is confusingly similar to Complainant’s EXPEDIA mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the EXPEDIA mark.
Respondent does not use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent passes itself off online as being, or as being affiliated with, Complainant, including by pirating Complainant’s familiar airplane graphic symbol, in order to market travel services in the nature of package tours for destinations in Nepal, thus competing with the business of Complainant in that country.
Respondent offers to sell the domain name on an online domain name marketplace at a price of $25,000, which is far in excess of its cost of acquisition for the domain name.
Respondent has no rights to or legitimate interest in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name with knowledge of Complainant’s rights in the EXPEDIA mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the EXPEDIA service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy¶4(a)(i).
Turning to the core question posed by Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <expediaholiday.com> domain name is confusingly similar to Complainant’s EXPEDIA mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “holiday,” which can be taken to relate to an important facet of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy¶ 4(a)(i)).
Further see, to the same effect, The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).
Under Policy ¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <expediaholiday.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <expediaholiday.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the EXPEDIA mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “RAMESH SILAWAL / Global innovative group LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, and Respondent does not deny, that Respondent passes itself off online as being, or as being affiliated with, Complainant, including by pirating Complainant’s familiar airplane graphic symbol, in order to market travel services in the nature of package tours for destinations in Nepal, thus competing with the business of Complainant in that country. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum August 21, 2017):
Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy¶4(c)(i) nor a legitimate noncommercial or fair use under Policy¶4(c)(iii).
On the point, 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 … [in that]… Respondent is apparently using the disputed domain name to offer for sale competing services.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the
<expediaholiday.com> domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy ¶4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that a respondent’s registration and use of a domain name that was confusingly similar to the mark of a UDRP complainant to offer loan services in competition with the business of that complainant disrupted the complainant’s business and showed bad faith registration and use within the meaning of Policy ¶4(b)(iii)).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the EXPEDIA service mark when it registered the confusingly similar <expediaholiday.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s rights in a mark, and, therefore that respondent’s bad faith in registering a confusingly similar domain name] through the name used for the domain and the use made of it.
The Panel therefore finds that Complainant has met its obligations of proof under Policy ¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <expediaholiday.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Dated: August 10, 2023
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