Expedia, Inc. v. Expedia Inc
Claim Number: FA0610000819788
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Expedia Inc (“Respondent”), 13081 SE Eastgate Way Ste 400, Bellevue, WA 98005.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <epxedia.com>, <expedial.com> and <expeida.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 18, 2006.
On October 18, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <epxedia.com>, <expedial.com> and <expeida.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@epxedia.com, postmaster@expedial.com and postmaster@expeida.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <epxedia.com>, <expedial.com> and <expeida.com> domain names are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <epxedia.com>, <expedial.com> and <expeida.com> domain names.
3. Respondent registered and used the <epxedia.com>, <expedial.com> and <expeida.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is a online provider of a wide variety
of goods and services, predominantly in the travel services industry. Complainant has used its EXPEDIA mark since
1996 and has obtained a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the EXPEDIA mark (Reg. No. 2,220,719 issued
January 26, 1999, filed April 9, 1996).
Complainant also operates a website at <expedia.com>.
Respondent registered the <epxedia.com>and <expeida.com> domain names on May 5, 1999 and the <expedial.com> domain name on March 6, 1999. Respondent’s disputed domain names resolve to websites that display search engines and hyperlinks to third-party websites, 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 draw such inferences it 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 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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the EXPEDIA mark. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <epxedia.com>and <expeida.com>
domain names are confusingly similar to Complainant’s EXPEDIA mark as the
disputed domain names invert two letters in the mark, which takes advantage of
a common typing error. The Panel thus
finds that the <epxedia.com>and <expeida.com> domain
names are confusingly similar to Complainant’s EXPEDIA mark under Policy ¶
4(a)(i). See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”); see also
Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name
<peir1.com> is confusingly similar to the complainant's PIER 1 mark).
Additionally, the <expedial.com> domain name contains Complainant’s mark in its entirety with the addition of the letter “l” at the end of the mark. In Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000), the panel found that the <oicq.net> and <oicq.com> domain names were confusingly similar to the complainant’s mark, ICQ. See Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain name, <americanonline.com>, is confusingly similar to the complainant’s famous AMERICA ONLINE mark). Accordingly, the Panel finds that the addition of the letter “l” to Complainant’s mark does not negate the confusing similarity between the Complainant’s mark and the disputed domain name.
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <epxedia.com>, <expedial.com> and <expeida.com> domain names. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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. Furthermore, although Respondent appears to be commonly known by the disputed domain names, there is no other evidence that Respondent is known by the <epxedia.com>, <expedial.com> and <expeida.com> domain names. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent is using the disputed domain names to operate websites that display search engines and hyperlinks to third-party websites, some of which are in direct competition with Complainant, presumably for the commercial benefit of Respondent through the accrual of click-through fees. The Panel finds that such diversion 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering the <epxedia.com>, <expedial.com> and <expeida.com>
domain names. Respondent is using the
disputed domain names to redirect Internet users to websites that contain a
series of links to third-party websites, some of which are in direct
competition with Complainant. The Panel
finds that such use constitutes a disruption of Complainant’s business and is
evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See
EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also 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)).
Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for the links displayed on the websites that resolve from
the disputed domain names. Such
commercial benefit constitutes bad faith registration and use under Policy ¶
4(b)(iv). Additionally, the Panel finds
that Respondent’s disputed domain names are capable of creating a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the <epxedia.com>,
<expedial.com> and <expeida.com> domain names, which
is further evidence of bad faith registration and use. See Kmart v. Khan, FA 127708 (Nat. Arb.
Forum Nov. 22, 2002) (finding that if the respondent profits from its
diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epxedia.com>, <expedial.com> and <expeida.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 1, 2006
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