Expedia, Inc. v. Leisure Tours Intl c/o
John Sullivan
Claim Number: FA0412000381271
PARTIES
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 Leisure Tours Intl c/o John Sullivan (“Respondent”), 107 Fairview Avenue, Bridgeport, CT
06606.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <expediaspringbreak.com>,
registered with Register.com.
PANEL
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.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
14, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 15, 2004.
On
December 15, 2004, Register.Com confirmed by e-mail to the National Arbitration
Forum that the domain name <expediaspringbreak.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.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 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 10, 2005 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@expediaspringbreak.com by e-mail.
A
timely Response was received and determined to be complete on January 10, 2005.
On January 14, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Jacques A. Léger, Q.C. as Panelist.
On
January 31, 2005, the Panel notified the parties that, due to exceptional
circumstances, the time period within which it would render its Decision was
extended to February 1, 2005.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
alleges that, long prior to Respondent’s registration of the disputed domain
name, <expediaspringbreak.com>, it has adopted and continuously
used since that adoption, the EXPEDIA trademark for travel-related goods and
services. Complainant adds that it does
business primarily through the Internet, and that it has invested many hundreds
of millions of dollars in its EXPEDIA mark.
It claims that as a result of these extensive marketing efforts, the
EXPEDIA mark has become famous and represents valuable goodwill owned by
Complainant.
Complainant
contends that Respondent registered the disputed domain name, <expediaspringbreak.com>,
on or about April 20, 2004, long after the EXPEDIA mark became famous. It adds that the disputed domain name
currently hosts a holding page that features both a search engine and links to
several websites offering travel services, including Complainant’s website.
Complainant
argues that the disputed domain name is confusingly similar to the
EXPEDIA mark because it incorporates the entirety of Complainant’s EXPEDIA mark
with the generic travel term “spring break”, leading to the alleged probability
that Internet users will believe that it is either the official website for
Complainant’s spring break vacation packages, or that it is somehow affiliated
with Complainant.
Complainant
also argues that Respondent has no rights or legitimate interests
in the disputed domain name, since Respondent is not known by the EXPEDIA mark
and has not acquired any trademark or service mark rights in the EXPEDIA
mark. Moreover, Complainant has not
licensed or otherwise permitted Respondent to use the EXPEDIA mark in any
way. Moreover, Complainant claims that
Respondent is attempting to disrupt Complainant’s business by using the
disputed domain name to provide consumers with links to websites of
Complainant’s competitors.
Finally,
Complainant claims that Respondent registered and is using the disputed domain
name in bad faith because, in addition to having actual knowledge,
Respondent allegedly has constructive notice of Complainant’s trademark rights
in the EXPEDIA mark as a matter of law.
Because of this knowledge, Complainant argues, Respondent could not have
registered the disputed domain name with the intention of using it
legitimately. Complainant also adds
that Respondent has attempted to sell the disputed domain name to Complainant
for valuable consideration far in excess of any out-of-pocket costs, and that
such act creates an inference of bad faith use in violation of the
Policy. Moreover, Complainant argues
that Respondent is using the disputed domain name to intentionally attract
Internet users to a website that provides links to Complainant’s direct
competitors, and that such use constitutes bad faith use in violation of
the Policy.
B.
Respondent
In
its Response, Respondent claims that the allegations of Complainant to the
effect that the disputed domain name was registered in bad faith and
that Respondent has no rights or legitimate interests in said
domain name are untrue because he specializes in the business of selling spring
break trips.
Respondent
also claims that since registration, the website located at the disputed domain
name has never been activated or directed to a live website. Respondent claims no wrongdoing in the registration
of the disputed domain name, and concludes that he would be willing to accept
the transfer of said disputed domain name to Complainant for a sum of $500.
FINDINGS AND DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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;
(2)
Respondent
has no rights or legitimate interests in respect to the domain
name; and
(3)
the
domain name has been registered and is being used in bad faith.
As it appears
from Exhibit A of the Complaint, Complainant owns the registrations for the
following trademarks with the United States Patent and Trademark Office
(“USPTO”) Federal Principal Register: EXPEDIA TRAVELS, EXPEDIA, EXPEDIA TO GO
and EXPEDIA.COM.
By virtue of
these registrations, Complainant asserts that it has rights in these trademarks
and that they are distinctive, and so the Panel finds. It has been widely recognized that a
trademark registration with the USPTO Principal Register constitutes prima facie
evidence of validity, which creates a presumption, albeit rebuttable, to the
effect that the mark is inherently distinctive and that its registered owner
has rights in it. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that 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 has the burden of refuting this assumption). In the present case, Respondent has not even
attempted to rebut this presumption.
Out of curiosity, the Panel took it upon itself – as it is entitled to –
to conduct a dictionary search for the word “Expedia” and was unable to find a
meaning ascribed to this term, thus confirming it is a coined term and entitled
to a broader scope of protection.
Therefore, the Panel finds that Complainant has rights in the trademarks
listed in Exhibit D of the Complaint.
The Panel finds
that Respondent’s <expediaspringbreak.com> domain name is confusingly
similar to Complainant’s EXPEDIA.COM mark because the domain name
incorporates Complainant’s mark in its entirety and merely adds the generic
term “spring break.” See eBay,
Inc. v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001)
(finding that the <gayebay.com> domain name was confusingly similar
to Complainant’s EBAY mark because it incorporated it in its entirety). The expression “spring break” merely refers
to a vacation period popular with schools and universities throughout the
United States, and is clearly descriptive of this time period. The mere addition of generic and descriptive
terms to a Complainant’s registered trademarks is clearly not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with
a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic
Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s
domain names, which incorporated
Complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
As such, the Panel also agrees with Complainant that it is likely that
Internet users may be led to believe that the website hosted at the disputed
domain name is owned, sponsored, or affiliated with Complainant in connection
with spring break travel packages – particularly since Respondent is using the
disputed domain name to advertise and provide links to travel services and
several travel companies on the Internet, including Complainant. See L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (wherein the
Panel found that “combining a generic word with the Complainant’s registered
mark does not circumvent the Complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy”).
For these reasons, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s registered EXPEDIA and EXPEDIA.COM trademarks.
(2) Rights or Legitimate Interests
According to the
Policy, the Panel can rely on any of the following circumstances, but without
limitation, to find that a Respondent has rights or legitimate
interests in the domain name if:
(i)
Before any
notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona
fide offering of goods or services; or
(ii)
Respondent
(as an individual, business or other organization) has been commonly known by
the domain name, even if it has acquired no trademark or service mark rights;
or
(iii)
Respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue.
(See the Policy
¶¶ 4(c) (i) – (iii))
In this
regard, the Panel refers to its decision in Pivotal Corp. v. Discovery St.
Trading Co. Ltd., D2000-0648 (WIPO Aug. 14, 2000) where it was decided that
once a lack of legitimate interests or rights has been
sufficiently demonstrated by a Complainant, the failure of a Respondent to
adequately address this issue may allow the Panel to draw, in certain
circumstances, an adverse inference therefrom, since the Respondent is the sole
party able to provide satisfactory evidence concerning any one of the
above-mentioned circumstances.
Respondent having failed, in the present case, to provide such
satisfactory evidence, the Panel hereby draws an adverse inference and finds
that Respondent has no rights or legitimate interests in the
disputed domain name. Furthermore, if
there had been a doubt in the Panel’s mind, Respondent has, in virtue of the
admission it made to this effect in its Response, asserted that it has not
linked the disputed domain name to an active website – thereby confirming it
has no rights or legitimate interests in it.
Complainant
claims, and Respondent has not claimed nor provided evidence to the contrary,
that Respondent is not commonly known by the domain name. Therefore, Respondent cannot benefit from
Paragraph 4(c)(ii) of the Policy and claim it has rights or legitimate
interests in the disputed domain name.
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding no rights or legitimate interests where (1)
Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in
the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question).
Moreover,
Complainant asserts that the disputed domain name resolves to a website that
links to competing online travel companies, such as Orbitz and Hotwire, and so
the Panel finds. Such competing
commercial use of a domain name that is confusingly similar to another’s
mark does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or to a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to Respondent’s
competing website through the use of Complainant’s mark); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services). Respondent claims that the website hosted at
the disputed domain name is not active and that it does not link to other
websites. The Panel does not agree with
this. The website located at the <expediaspringbreak.com>
domain name clearly includes sponsored links and is connected to a search
engine where various travel terms and companies – including Complainant – are
pre-configured. This clearly constitutes use of the domain name, and the fact
that there is not a more substantial website operated there by Respondent is
immaterial.
Finally,
Complainant has not licensed or otherwise permitted Respondent to use the
EXPEDIA or EXPEDIA.COM marks or to apply for or use any domain name
incorporating those marks. See Telstra
Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)
(wherein Panel found that Respondent had no rights or legitimate
interests to use domain name in part because Respondent was not licensed or
otherwise permitted to use Complainant’s trademark); see also Alta
Vista Co. v. Gamache, FA 95249 (Nat. Arb. Forum Aug. 17, 2000) (wherein the
Panel found that Respondent was not licensed to use Complainant’s mark and
therefore had no rights or legitimate interests in the domain
name).
For
these reasons, the Panel concludes that Complainant has satisfactorily
discharged its burden of proving that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii).
Most of the time, it is quite difficult, if not impossible, to actually
show bad faith with concrete
evidence, particularly given the limited scope of the inquiry in these
proceedings; as a rule, one should not expect to find the “smoking gun.” At the same time, good faith is to be
presumed. However, it is the Panel’s
view that once Complainant has made a prima facie case in that
direction, it is then incumbent upon Respondent to either respond or explain
why its conduct should not be ascribed to bad faith. The Panel’s understanding of the Policy is
that although the initial burden to prove Respondent’s bad faith in the
registration or the use of the disputed domain name lies squarely on the
shoulders of Complainant, once a prima facie case of bad faith
has been made by Complainant, as the Panel finds in the present case, it is up
to Respondent to either justify its business conduct, explain it, or
demonstrate satisfactorily the contrary.
See Royal Bank of Scotland Group v. Lopez, D2002-0823
(WIPO Dec. 3, 2002); see also AT&T Corp. v. Linux Sec. Sys.,
DRO2002-0002 (WIPO Oct. 11, 2002).
Complainant has
argued, and so the Panel finds, that Respondent had, at the very least,
constructive knowledge of Complainant’s rights in the EXPEDIA.COM and EXPEDIA
marks because Complainant’s marks are registered with the USPTO, and this
constitutes legal notice of Complainant’s rights in said marks. See Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly
similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that
Respondent’s registration and use of an identical and/or confusingly
similar domain name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it). Moreover, Complainant’s marks having gained
international popularity through the years, the Panel finds that Respondent
knew or should have known that registering the disputed domain name would
infringe upon Complainant’s goodwill in its registered marks. See Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
("Given the uniqueness and the extreme international popularity of the
[ODIE] mark, Respondent knew or should have known that registering the domain
name in question would infringe upon the Complainant's goodwill."). In the Panel’s opinion, this evidence of
Respondent’s registration of the <expediaspringbreak.com> domain
name with actual or constructive knowledge of Complainant’s rights in the mark
constitutes a prima facie case of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii).
The Panel also
finds that Respondent’s offer to sell the domain name registration to
Complainant for $9,500, an amount that far exceeds any out-of-pocket costs
Respondent may have incurred, is further evidence that Respondent has
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(i). See Moynahan v. Fantastic Sites, Inc.,
D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where Respondent
offered to sell the Domain Name to Complainant for $10,000 when Respondent was
contacted by Complainant); see also Am. Online,
Inc. v. Prijic, FA 112639 (Nat. Arb. Forum
June 27, 2002) (“[I]n determining whether Respondent has sought consideration
in excess of its out-of-pocket costs, the Policy makes clear that only costs
related to the domain name are to be considered, and not those related to the
creation or maintenance of the connected website.”); see also Marrow
v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should
not “put much weight on the fact that it was the Complainant who contacted
Respondent to see if it was interested in selling the domain name”).
Moreover,
Complainant contends that Respondent’s commercial use of a domain name that is confusingly
similar to Complainant’s EXPEDIA.COM mark to create a likelihood of
confusion constitutes further evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See 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); see
also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) (finding that Respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to
its commercial website).
Additionally,
Complainant asserts that Respondent’s <expediaspringbreak.com>
domain name resolves to a website that links to competing online travel
services. The Panel finds that this
constitutes disruption and constitutes further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business); see also SR Motorsports
v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
Respondent’s claims in his Response, to the effect that there was no bad
faith on his part because he “specialized in the business of selling spring
break trips”, is rather unconvincing in this respect. If anything, Respondent’s specialization in the travel sector
makes it even more unlikely that he had never heard of Complainant’s marks, or
that he was unaware of the competitive relationship between Complainant and
several of its competitors which are featured on the website hosted at the
disputed domain name. In any case,
Respondent’s claims as to the absence of bad faith are highly lacking,
and he has failed to rebut the prima facie case of bad faith that
Complainant has made in its Complaint.
For
these reasons, the Panel finds that the disputed domain name was registered and
is being used in bad faith.
DECISION
The Complainant
having satisfactorily satisfied its burden with regard to all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <expediaspringbreak.com> domain name be TRANSFERRED
from Respondent to Complainant forthwith.
Jacques A. Léger, Q.C., Panelist
Dated: February 1, 2005
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