DECISION

 

Expedia, Inc. v. Mohamed Salah

Claim Number: FA2401002079622

 

PARTIES

Complainant is Expedia, Inc. ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Mohamed Salah ("Respondent"), Egypt.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <expedia-trip.com>, registered with Name.com, Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 17, 2024; Forum received payment on January 17, 2024.

 

On January 18, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <expedia-trip.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2024 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-trip.com. Also on January 22, 2024, 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 13, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant operates one of the world's largest full-service online travel agencies through its EXPEDIA-branded websites. Complainant has rights in the "EXPEDIA" and "EXPEDIA in combination with an airline logo" marks based upon numerous trademark registrations around the world including registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,220,719 registered on January 26, 1999; Reg. No. 3,919,339 registered February 15, 2011). The disputed domain name is confusingly similar to Complainant's EXPEDIA mark because it contains Complainant's mark in its entirety adding non-distinguishing elements, namely, "trip", a hyphen, and the gTLD ".com."

 

ii) Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the EXPEDIA  marks.  Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is used to pass itself off as Complainant.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent capitalized on the goodwill associated with Complainant's mark for commercial gain. Respondent's use of the domain name for a website displaying the EXPEDIA mark in a manner that impersonates Complainant and mimics the appearance of a legitimate website demonstrates bad faith registration and use.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on June 21, 2023.

 

2. Complainant has established rights in the "EXPEDIA" and "EXPEDIA in combination with an airline logo" marks based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 2,220,719 registered on January 26, 1999; Reg. No. 3,919,339 registered February 15, 2011).

 

3. Respondent uses Complainant's EXPEDIA mark in the tagline "this is Expedia" and the trade name "Expedia Travel" on its website, including with an airplane logo. 

 

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:

 

(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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the "EXPEDIA" and "EXPEDIA in combination with an airline logo" marks based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 2,220,719 registered on January 26, 1999; Reg. No. 3,919,339 registered February 15, 2011). Complainant has for many years used distinctive airplane logos in connection with the EXPEDIA mark. Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the "EXPEDIA" and "EXPEDIA in combination with an airline logo" marks with the USPTO, the Panel finds that Complainant has established rights in the marks under Policy 4(a)(i).

 

Complainant contends that the disputed domain name <expedia-trip.com> is confusingly similar to Complainant's EXPEDIA mark because it contains Complainant's mark in its entirety. The additional non-distinctive elements, i.e., "trip," a hyphen, and the ".com" gTLD do not negate the confusingly similarity of the disputed domain name. The Panel observes that additional terms that relate to a complainant's business heighten the confusing similarity of the domain name to the mark. See Expedia. v. Sameh Elsayed, FA 1941132 (Forum  May 10, 2021) ("The disputed domain name <expedia-traveleg.com> incorporates Complainant's registered EXPEDIA trademark, adding a hyphen, the generic term 'travel,' the geographic abbreviation 'eg,' and the '.com' top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark."). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's EXPEDIA mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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.").

 

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). The Panel notes that the unmasked WHOIS information identifies "Mohamed Salah" as the registrant.  Complainant asserts that nothing in the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its EXPEDIA mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as Complainant. The Panel notes that passing off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant's MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).

 

Complainant highlights that Respondent uses Complainant's EXPEDIA mark in the tagline "this is Expedia" and the trade name "Expedia Travel" on its website, including with an airplane logo. The Panel finds that the disputed domain name's resolving website impersonates Complainant and its EXPEDIA mark, and thus Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent's use and registration of the disputed domain name constitutes bad faith because the disputed domain name resolves to a website displaying the EXPEDIA mark in a manner that impersonates Complainant and mimics the appearance of a legitimate website. The Panel finds that passing off as a complainant while offering to sell competing products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (b)(iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum December 22, 2017) ("Respondent's primary offering seem to be counterfeits of Complainant's toy car products. Respondent's use of the <magictrackscars.com> domain name is thus disruptive to Complainant's business per Policy ¶ 4(b)(iii)"); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant provides a screenshot of the disputed domain name's website, which prominently displays Complainant's EXPEDIA mark in the tagline "this is Expedia" and the tradename "Expedia Travel" on its website, including with an airplane logo. The Panel finds that such a use of the disputed domain name passes Respondent off as Complainant's website and/or as a website affiliated with or sponsored by Complainant. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant further contends that Respondent registered the disputed domain name in bad faith with knowledge of Complainant's rights in its EXPEDIA mark given the international fame of Complainant's mark, Respondent's selection and registration of the disputed domain name that contains Complainant's EXPEDIA mark in its entirety, and Respondent's passing off activities. The Panel notes that as a result of the long commercial success of the EXPEDIA mark and Complainant's extensive use, promotion, and registration of the EXPEDIA mark for many years, the EXPEDIA mark has long been famous worldwide and entitled to the broadest scope of protection. Even as early as 2003, the EXPEDIA mark was recognized as a "well-known" trademark by UDRP panels. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the EXPEDIA mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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-trip.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 14, 2024