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Expedia, Inc. v. Steve Kerry c/o North West Enterprise, Inc
Claim Number: FA0605000713698
Complainant is Expedia, Inc. (“Complainant”), represented by Kristen S. Knecht of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is Steve Kerry c/o North West Enterprise, Inc (“Respondent”), 22915 Telegraph Rd, Santa Fe Springs, CA, 90670.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediar.org>, <expedias.org> and <expediacom.org>, registered with OnlineNIC, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 23, 2006; the National Arbitration Forum received a hard copy of the Complaint May 25, 2006.
On May 24, 2006, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediar.org>, <expedias.org> and <expediacom.org> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@expediar.org, postmaster@expedias.org and postmaster@expediacom.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain names that Respondent registered, <expediar.org>, <expedias.org> and <expediacom.org>, are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent has no rights to or legitimate interests in the <expediar.org>, <expedias.org> and <expediacom.org> domain names.
3. Respondent registered and used the <expediar.org>, <expedias.org> and <expediacom.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is an on-line company that offers a variety of goods and services, most notably in the travel industry. Complainant and its predecessors in interest have used their EXPEDIA mark since at least October 1996, and hold numerous international registrations for the mark along with registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark (Reg. No. 2,533,295 issued October 8, 2002) and for the EXPEDIA.COM mark (Reg. No. 2,610,319 issued August 20, 2002).
Respondent registered the <expediar.org> domain name February 23, 2005, the <expedias.org> domain name November 18, 2004, and the <expediacom.org> domain name June 2, 2005. These disputed domain names resolve to websites that display links to Complainant’s site, as well as links to other third-party sites, some of which are in direct competition with Complainant.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate, pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant’s federal registrations
internationally and domestically with the USPTO establish that Complainant has
rights in the EXPEDIA mark. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The disputed domain names that Respondent registered, <expediar.org>, <expedias.org> and <expediacom.org>, are confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i) as they use the Complainant’s mark in its entirety and add either “r,” “s” or “com” in addition to the generic top level domain name “.org.” The Panel finds that addition of generic letters or terms does not negate the confusing similarity between the disputed domain names and Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.").
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant initially must establish that it has rights to or legitimate interests in the mark in a disputed domain name and that Respondent lacks any rights or legitimate interests with respect to the marks and the disputed domain names, <expediar.org>, <expedias.org> and <expediacom.org>. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s EXPEDIA mark, and that Respondent is not associated with
Complainant in any way. Respondent’s
WHOIS information also does not suggest that Respondent is commonly known by
the disputed domain names and no evidence in the record suggests that
Respondent is or has ever been known by the disputed domain names. In Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the
panel found that there were no rights or legitimate interests where the
respondent was not commonly known by the mark and had never applied for a
license or permission from the complainant to use the trademarked name. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Accordingly, the Panel finds that Respondent is not commonly known by
the disputed domain names under Policy ¶ 4(c)(ii).
The evidence on record indicates
that Respondent is using the disputed domain names to operate websites, which
display links to third-party websites that offer goods and services, some of
which are in direct competition with Complainant; as well as to display links
to Complainant’s website. In TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002), the panel found that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website, which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services. See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel thus finds that Respondent’s use of the disputed domain names 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).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain names. Based on the uncontested evidence on record, the Panel finds that
Respondent is using the <expediar.org>, <expedias.org>
and <expediacom.org> domain names to redirect Internet users to
websites that display links to third-party websites, some of which are in
direct competition with Complainant.
The Panel finds that such use constitutes disruption and is evidence of
bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Disney Enters.,
Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Moreover, based on the uncontested evidence presented by
Complainant, the Panel infers that Respondent receives click-through fees for
diverting Internet users to websites featuring links to competing third-party
businesses. Further, Respondent’s
disputed domain names are capable of creating confusion as to Complainant’s
affiliation with the <expediar.org>, <expedias.org>
and <expediacom.org> domain names and resulting websites. Consequently, the Panel finds that the
disputed domain names were registered and are being used in bad faith pursuant
to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant satisfied Policy ¶ 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 <expediar.org>, <expedias.org> and <expediacom.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 13, 2006.
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