Expedia, Inc. v. Albert Jackson
Claim Number: FA0311000214461
Complainant is Expedia, Inc. (“Complainant”) represented
by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 South Wacker Drive, Suite 5000,
Chicago, IL 60606. Respondent is Albert
Jackson, P.O. Box 2014, George
Town, Grand Cayman, Cayman Islands, British West Indies (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <expediairfares.com> registered with Iholdings.com,
Inc. d/b/a Dotregistrar.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.
James A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 25, 2003; the Forum received a hard copy of the
Complaint on December 1, 2003.
On
November 26, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <expediairfares.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
December 4, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 24, 2003 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@expediairfares.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 30, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Crary 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."
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 makes the following assertions:
1. Respondent’s <expediairfares.com>
domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or
legitimate interests in the <expediairfares.com> domain name.
3. Respondent registered and used the <expediairfares.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
a number of trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the EXPEDIA mark, including Reg. No. 2,224,559 (registered
on February 16, 1999) related to travel agency services.
Respondent
registered the <expediairfares.com> domain name on June 13, 2003.
Respondent is using the domain name as a search engine that features links to
several websites offering travel services, including Complainant’s website and
Complainant’s competitors’ websites.
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.
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
demonstrated that it has rights in the EXPEDIA mark through registration with
the USPTO.
Complainant
contends that Respondent’s <expediairfares.com> domain name is
confusingly similar to Complainant’s EXPEDIA mark because the disputed domain
name appropriates the entire mark and adds the generic term “airfares” to the
mark. The addition of the generic term does not sufficiently differentiate the
domain name from the mark pursuant to Policy ¶ 4(a)(i) because the added term
relates directly to Complainant’s services. The fact that the EXPEDIA mark and
added term “airfares” share the letter “a” in the <expediairfares.com>
domain name is not material. See Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of confusing
similarity); see also L.L.
Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000)
(finding that combining the generic word “shop” with Complainant’s registered
mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid
the confusing similarity aspect of the ICANN Policy); see also Nat’l Ass’n
for Stock Car Auto Racing, Inc. v. Shacklette, D2001-1350 (WIPO Feb. 4,
2002) (finding the <nascaracing.com> domain name confusingly similar to
Complainant’s NASCAR trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been established.
Respondent has
failed to come forward to contest Complainant’s allegations. Therefore, the
Panel accepts all reasonable allegations and inferences in the Complaint as true.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
to or legitimate interests in the disputed domain name. When Complainant
asserts a prima facie case against Respondent, the burden shifts to
Respondent to show that it has rights or legitimate interests under Policy ¶
4(a)(ii). See Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name).
Respondent is
using the <expediairfares.com> domain name as a search engine that
features links to several websites offering travel services, including
Complainant’s website and Complainant’s competitors’ websites. Respondent’s use
does not demonstrate 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002)
(finding no “bona fide” offering of goods or services where Respondent used
Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors); see also Nat’l
Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000)
(finding that domain names used to sell Complainant’s goods without
Complainant’s authority, as well as others’ goods, is not bona fide use).
Complainant
asserts that it has not licensed or otherwise permitted Respondent to use the
EXPEDIA mark, or to use any domain name incorporating the mark. Furthermore,
Respondent has proffered no evidence and the record does not suggest that
Respondent is commonly known by the <expediairfares.com> domain
name. Accordingly, the Panel finds that Respondent has failed to demonstrate
any rights to or legitimate interests in the disputed domain name with regard
to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat.
Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that Respondent was not “commonly known
by” the name GIRLS GON WILD or <girlsgonwild.com>); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s
unauthorized commercial use of the <expediairfares.com> domain
name, a domain name confusingly similar to Complainant’s EXPEDIA mark, to offer
links to both Complainant’s and Complainant’s competitors’ websites
demonstrates Respondent’s bad faith with regard to Policy ¶ 4(b)(iv) because
Respondent presumably profits from the Internet traffic that “clicks through”
the website at the disputed domain name. See Kmart v. Kahn, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website).
Moreover, based
on Respondent’s use of the disputed domain name to offer links to both
Complainant’s and Complainant’s competitors’ websites, the Panel presumes that
Respondent had actual or constructive knowledge of Complainant’s rights in the
EXPEDIA mark. The registration and use of a domain name that appropriates a
trademark holder’s mark despite actual or constructive knowledge of the
trademark holder’s rights establishes bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Yahoo! Inc. v. Ashby, D2000-0241
(WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any
plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name).
Accordingly, the
Panel finds that Complainant has established 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 <expediairfares.com> domain name be TRANSFERRED
from Respondent to Complainant.
James
A. Crary, Panelist
Dated:
January 13, 2004
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