Expedia, Inc. v. eSpedia, Inc. c/o James Cassidy
Claim Number: FA0512000612060
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 eSpedia, Inc. c/o James Cassidy (“Respondent”), 1670 Satin Leaf Court, Delray Beach, FL 33445.
The domain name at issue is <espedia.com>, registered with Moniker Online Services, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2005.
On December 29, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <espedia.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 January 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 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@espedia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <espedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <espedia.com> domain name.
3. Respondent registered and used the <espedia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., privides a wide variety of goods
and services, including travel agency services provided through the
Internet. Complainant provides access
to airline, hotel and rental car reservations for destinations throughout the
world.
Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for its EXPEDIA mark (i.e. Reg. No. 2,383,732 issued September 5, 2000).
Respondent registered the <espedia.com> domain name on December 5, 2005. The domain name resolves to a directory website that displays links to Complainant’s competitors.
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. 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.
Complainant has provided evidence of its registration of the EXPEDIA mark with the USPTO. The Panel determines that Complainant has, therefore, established rights in the marks under Policy ¶ 4(a)(i). 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 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.”).
The <espedia.com> domain name differs from Complainant’s EXPEDIA mark with the substitution of the letter “s” for the letter “x.” Changing one letter in Complainant’s registered mark does not create a domain name that is distinct from the mark. Additionally, the use of the generic top-level domain (“gTLD”) “.com” is irrelevant to the Panel’s similarity analysis under Policy ¶ 4(a)(i). Therefore, the Panel concludes that the domain name is confusingly similar to Complainant’s mark. Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant has satisfied the requirements under Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests). The Panel finds Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is in no way affiliated with Complainant or otherwise authorized to use any version of Complainant’s EXPEDIA mark. Respondent has not come forward with any evidence to affirmatively prove that it is operating a business under the <espedia.com> domain name or that it is otherwise commonly known by the domain name. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <espedia.com> domain
name to profit from click-through fees.
The domain name leads to a directory website that displays links to many
of Complainant’s competitors, presumably for the purpose of earning commissions
for diverting Internet users to the third-party businesses. The Panel does not find a bona fide
offering of goods or services under Policy ¶ 4(c)(i) where Respondent is using
a confusingly similar version of Complainant’s EXPEDIA mark to operate a
commercial website for Respondent’s benefit.
Furthermore, such use for Respondent’s commercial gain does not
constitute a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s
mark and the goodwill surrounding that mark as a means of attracting Internet
users to an unrelated business was not a bona fide offering of
goods or services).
Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).
Respondent’s use of the <espedia.com> domain name to divert Internet users searching for Complainant’s travel-related products and services to Respondent’s directory website offering links to similar services demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s mark. The registration and use of a confusingly similar domain name to divert Internet users for Respondent’s commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant has satisfied the requirements under 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 <espedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 13, 2006
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