DECISION

 

Expedia, Inc. and Orbitz, LLC v. Orbitz ma

Claim Number: FA2310002068349

 

PARTIES

Complainant is Expedia, Inc. and Orbitz, LLC ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Orbitz ma ("Respondent"), Morocco.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <orbitzexpediagroup.com>, registered with Genious Communications SARL/AU.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 27, 2023; Forum received payment on October 27, 2023.

 

On October 31, 2023, Genious Communications SARL/AU confirmed by e-mail to Forum that the <orbitzexpediagroup.com> domain name is registered with Genious Communications SARL/AU and that Respondent is the current registrant of the name. Genious Communications SARL/AU has verified that Respondent is bound by the Genious Communications SARL/AU 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 October 31, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@orbitzexpediagroup.com. Also on October 31, 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 November 21, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint,"  while Forum Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."

 

In the instant proceeding, there are two identified Complainants: Expedia, Inc. and Orbitz, LLC. The Complaint filed by the two enterprises asserts that Expedia, Inc. is the parent company of Orbitz, LLC, and that, while Expedia, Inc. owns the EXPEDIA GROUP mark, Orbitz, LLC owns the mark ORBITZ.  Because both of these marks are embedded in the challenged <orbitzexpediagroup.com> domain name, it can fairly be said that each of the two mark holders can credibly claim rights in that domain name.

 

For that reason, and in view of the fact that there is no dispute in the record before us that the two companies are affiliated as alleged in the Complaint, we conclude that they may together prosecute the present claim. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.

 

Therefore, there being no objection from Respondent, on the facts before us the allegations of the Complaint are deemed sufficient to establish a nexus between Expedia, Inc. and Orbitz, LLC justifying that they be permitted to proceed as a single complainant for all purposes in this proceeding. Accordingly, throughout the remainder of this proceeding, the two will be referred to collectively as "Complainant."   

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Expedia, Inc., is the parent company of Complainant Orbitz, LLC, and both enterprises are extensively engaged in the online travel services industry.

 

Complainant Expedia, Inc. holds a registration for the trademark and service mark EXPEDIA GROUP, which is on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 6,428,611, registered July 20, 2021.

 

Complainant Orbitz, LLC holds a registration for the service mark ORBITZ, which is on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 2,858,685, registered June 29, 2004, and renewed as of June 13, 2014.

 

Respondent registered the domain name <orbitzexpediagroup.com> on January 19, 2023. 

 

The domain name is confusingly similar to both the ORBITZ and EXPEDIA GROUP marks.

 

Respondent has not been commonly known by the domain name.

 

Complainant has not authorized Respondent to use any of its marks.

 

Respondent employs the domain name to impersonate Complainant online for the purpose of attempting to trick Internet users into prepaying for fake discounts on future travel under the mistaken impression that Respondent is affiliated with Complainant.

 

Respondent has neither any rights to nor any legitimate interests in the domain name.

 

Respondent knew of Complainant when it registered the domain name.

 

Respondent both registered and now uses the domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain name registered by Respondent is confusingly similar to a trademark and 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.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent's failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 and/or Confusingly Similar

By virtue of its registration of the ORBITZ and EXPEDIA GROUP marks with a national trademark authority, the USPTO, Complainant has established that it has rights in those marks 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, Liberty Global Logistics, LLC v. damilola emmanuel, FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

This is true without regard to whether Complainant's rights in its marks arise from registration of the marks in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Morocco). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):

 

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

 

Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <orbitzexpediagroup.com> domain name is confusingly similar to both of Complainant's ORBITZ and EXPEDIA GROUP marks. The domain name incorporates both of the marks in their entirety, with only deletion of the space between the terms of one of them and the addition of the generic Top Level Domain ("gTLD") ".com."  These alterations of the mark, made in creating the domain name, do not escape the realm of confusing similarity under the terms of the Policy.

See, for example, The Hoover Co. v. Anti-Globalization Domains, FA 206360 (Forum Dec. 18, 2003) where the panel found the domain name <hooverwindtunnel.com> confusingly similar to a UDRP complainant's HOOVER and WINDTUNNEL marks in that: 

 

Respondent's combination of Complainant's two marks, which are used to identify Complainant's goods and services, only adds to the likelihood that Internet users will be confused by Respondent's domain name.

 

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 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.

                                                         

Further see Gurney's Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003):

 

[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.

 

Rights or Legitimate Interests

Policy ¶ 4(a)(ii) requires that Complainant make a prima facie showing that Respondent has neither rights to nor legitimate interests in the <orbitzexpediagroup.com> domain name, 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 Aug. 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 Sept. 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 note first that Complainant contends that Respondent has not been commonly known by the contested <orbitzexpediagroup.com> domain name, and that Complainant has not authorized Respondent to use either of the ORBITZ or EXPEDIA GROUP marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name as "Orbitz ma," only a part of which resembles a modest portion of the domain name. And, importantly, although afforded an opportunity to do so, Respondent has not offered any evidence that it has been commonly known by the disputed domain name. On this record, we conclude that Respondent has not been commonly known by the contested 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 Sept. 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 the Complaint filed in this proceeding asserts, without objection from Respondent, that Respondent employs the <orbitzexpediagroup.com> domain name to impersonate Complainant online for the purpose of attempting to deceive Internet users into prepaying for sham discounts on future travel under the mistaken belief that Respondent is affiliated with Complainant. This use 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, Expedia, Inc., Orbitz, LLC, et al. v. 林 凡 / 雪 林, FA2021004 (Forum Dec. 27, 2022):

                                                           

Respondent uses … the disputed domain names to pass off as or as affiliated with Complainant through fraudulent websites, attracting Internet traffic for commercial benefit and fraud: …. Previous Panels have held that use of a domain name to impersonate a complainant and profit from the resulting confusion is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶4(c)(i) or (iii).

 

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

We are persuaded by the evidence presented with the Complaint that Respondent's use of the <orbitzexpediagroup.com> domain name 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, National Geographic Partners v. Chadwick , FA 1785643 (Forum June 21, 2018):

 

A respondent's use of a … domain name to impersonate a complainant in furtherance of fraudulent activities can be indicative of bad faith per Policy ¶ 4(b)(iii) .... Here, Complainant contends that Respondent has used the [d]omain [n]ames … to send emails in which it has falsely represented itself as an employee of … [Complainant] …, then operates a theft scam in which it falsely represents to offer to sell a car, and solicits and accepts payment but does not actually deliver any such car to the buyer…. Therefore, the Panel finds that Respondent registered and uses the … domain names in bad faith pursuant to Policy ¶ 4(b)(iii) ….

 

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <orbitzexpediagroup.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated: November 28, 2023