Expedia, Inc. v. chi da
Claim Number: FA2104001940108
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is chi da (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediashipworldwide.com>, registered with NameCheap, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2021; the Forum received payment on April 2, 2021.
On April 2, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <expediashipworldwide.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2021 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@expediashipworldwide.com. Also on April 6, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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
Expedia operates one of the world’s largest full-service online travel agencies through its EXPEDIA-branded websites comprised of the EXPEDIA.COM website and localized EXPEDIA websites in more than 40 countries. Complainant has rights in the EXPEDIA mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,220,719, registered January 26, 1999). Respondent’s <expediashipworldwide.com> domain name is confusingly similar to Complainant’s EXPEDIA mark as it includes the entirety of the EXPEDIA mark and merely adds the descriptive terms “ship” and “worldwide” as well as the generic top-level domain (gTLD) “.com”.
Respondent lacks rights or legitimate interests in the <expediashipworldwide.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to use the EXPEDIA mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent has attempted to pass off as the Complainant and has used the domain name in competition with Complainant.
Respondent registered and uses the <expediashipworldwide.com> domain name in bad faith. Respondent has used the disputed domain name to attract internet traffic for commercial gain and disrupt the Complainant’s business. Beyond this, the Respondent provided false contact information when it registered the domain name. Additionally, the Respondent failed to respond to multiple cease and desist letters sent to them from the Complainant. Finally, the Respondent also registered the disputed domain name with knowledge of the Complainant’s business and rights in the EXPEDIA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <expediashipworldwide.com> domain name.
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."
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”).
Complainant asserts rights in the EXPEDIA mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 2,220,719, registered January 26, 1999). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has demonstrated rights in the EXPEDIA mark per Policy ¶ 4(a)(i).
Complainant argues the <expediashipworldwide.com> domain name is identical or confusingly similar to Complainant’s EXPEDIA mark as it includes the mark in its entirety and merely adds the descriptive terms “Ship” and “Worldwide” and the gTLD, “.com”. The addition of generic terms and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain names] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). See also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <expediashipworldwide.com> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the EXPEDIA mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain names where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). See also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). The WHOIS information provided by the registrar lists the registrant as “chi da”. There is no evidence to suggest that Respondent was authorized to use the EXPEDIA mark and Respondent has provided no additional evidence of its identity. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <expediashipworldwide.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has attempted to pass off as the Complainant, or an affiliate thereof. Beyond this, Respondent has used the disputed domain name in competition with Complainant’s business. A respondent using a confusingly similar domain name in order to pass off as Complainant and pursue a competing use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that the <expediashipworldwide.com> domain name was created to confuse internet users into believing that the Respondent either was, or had a relationship with the Complainant. Additionally, Respondent uses the domain name to sell transportation services, which are closely related to the services offered by the Complainant. The Panel finds that 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) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant argues Respondent registered and uses the <expediashipworldwide.com> domain name in bad faith as Respondent has used the domain name to disrupt the Complainant’s business. A Respondent using a confusingly similar domain name in order to disrupt a Complainant’s business is evidence of bad faith per Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant argues that the Respondent has used the disputed domain name in order to offer transport services that are highly similar to the travel services that the Complainant offers. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant also argues Respondent registered and uses the <expediashipworldwide.com> domain name in bad faith as Respondent has used the domain name to attract internet users for commercial gain. A Respondent registering a confusingly similar in order to attract internet users for commercial gain is evidence of bad faith per Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."). See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant argues that the Respondent uses the disputed domain name in order to attract internet users for commercial gain by confusing internet users into believing they are visiting the Complainant’s website. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues Respondent registered and uses the <expediashipworldwide.com> domain name in bad faith as Respondent provided false contact info when they registered it. A Respondent providing false WHOIS information is evidence of bad faith per Policy ¶ 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Complainant argues that the Respondent registered the disputed domain name with false contact information. This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends Respondent registered and uses the disputed domain names in bad faith as Respondent registered the <expediashipworldwide.com> domain with actual knowledge of Complainant’s rights to the mark. A respondent’s use of a prominent mark can demonstrate a respondent’s actual knowledge of a complainant’s rights to the mark per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The disputed domain name is confusingly similar to Complainant’s EXPEDIA mark and Respondent’s use of the domain name establishes that Respondent registered the domain name with actual knowledge of the Complainant’s business and rights in the EXPEDIA mark. The Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <expediashipworldwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
May 7, 2021
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