Expedia, Inc. v. Yong Li
Claim
Number: FA0502000429084
Complainant is Expedia, Inc. (“Complainant”), represented
by Angela K. Steele of Pattishall, McAuliffe, Newbury, Hilliard and Geraldson LLP, 311 South Wacker Drive, Suite 5000,
Chicago, IL, 60606. Respondent is Yong Li (“Respondent”), P.O. Box 904,
Beijing 100029, China.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <expendia.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
22, 2005; the National Arbitration Forum received a hard copy of the Complaint February
24, 2005.
On
February 23, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain name <expendia.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 verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.com registration agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
February 25, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 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@expendia.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <expendia.com>, is confusingly similar to
Complainant’s EXPEDIA marks.
2. Respondent has no rights to or legitimate
interests in the <expendia.com> domain name.
3. Respondent registered and used the <expendia.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Expedia, Inc., provides numerous services by
the Internet, including access to airline, hotel and rental car reservations,
as well as special rates for these services.
Complainant also offers travel, entertainment and education information
and online retail services featuring travel-related goods and services and
restaurant services.
Complainant holds numerous registrations with the United States Patent
and Trademark Office (“USPTO”) for its EXPEDIA (Reg. No. 2,168,097 issued June
23, 1998) and EXPEDIA.COM (Reg. No. 2,610,319 issued August 10, 2002) marks
(collectively “EXPEDIA marks”).
Additionally, Complainant holds registrations for its EXPEDIA (Reg. No.
1,129,253 issued November 21, 1997) mark in China, Respondent’s purported place
of residence. Complainant has used its
EXPEDIA mark since October 1996.
Respondent registered the <expendia.com> domain name June 24, 2000, four years
after Complainant’s first use of its EXPEDIA marks and two years after
Complainant’s registration of its EXPEDIA mark with the USPTO. Respondent is using the disputed domain name
to redirect Internet users to websites that feature a pop-up advertisement for
an online casino and offer a variety of goods and services, including goods and
services that compete 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 will
draw such inferences as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established by extrinsic proof in this proceeding that it has rights in the
EXPEDIA marks through registrations with the United States Patent and Trademark
Office as well as other countries, including Respondent’s purported residence
of China. Respondent has not disputed
Complainant’s prima facie case of rights; therefore, the Panel finds
that Complainant has rights in the mark for purposes of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); 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); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
The <expendia.com>
domain name that Respondent registered differs from Complainant’s EXPEDIA mark
only by the addition of the letter “n” between two letters of the mark. A long line of Panel Decisions hold that
under the Policy, the addition of only one letter to a complainant’s registered
mark is inadequate to distinguish the disputed domain name from the mark. Therefore, the Panel concludes that the
disputed domain name is confusingly similar to Complainant’s marks pursuant to
Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth “w”
or the omission of periods or other such generic typos do not change
respondent’s infringement on a core trademark held by the complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights to and legitimate interests in the domain name that
contains in its entirety Complainant’s protected mark. Complainant alleged that Respondent has no
such rights. Respondent failed to
respond to the allegations set forth by Complainant in the Complaint. In this circumstance, the Panel is entitled
to accept all reasonable allegations and inferences in the Complaint as
true. See 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); see also
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Complainant
asserts that Respondent has no rights to or legitimate interests in the domain
name that contains in its entirety Complainant’s protected mark. On its face, the <expendia.com>
domain name contains Complainant’s EXPEDIA mark in its entirety, differing only
in a common misspelling. Once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it has rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). However,
Respondent has not responded to Complainant’s allegations and has presented no
proof of Respondent’s rights or legitimate interests. Therefore, due to Respondent’s failure to respond to the
Complaint, the Panel will assume that Respondent lacks rights and legitimate
interests in the disputed domain name. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); 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).
The <expendia.com>
domain name resolves to a website that contains links to various websites,
including websites of Complainant’s competitors, as well as a pop-up
advertisement for an online casino. The
Panel infers that Respondent receives commissions through referral fees for
directing Internet traffic intended for Complainant to various third-party
websites. Thus, the Panel finds that
Respondent’s use of the disputed domain name to divert Internet users away from
Complainant to Respondent’s website for Respondent’s commercial benefit is not
a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). Therefore, Respondent lacks rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat.
Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain
name, a simple misspelling of Complainant’s mark, to divert Internet users to a
website that featured pop-up advertisements and an Internet directory, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); see also TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that Respondent’s diversionary use of Complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services).
Complainant also
asserts that Respondent is not commonly known by the <expendia.com>
domain name and has not acquired any trademark or service mark rights in the
domain name. Furthermore Complainant
alleges that Respondent is not licensed or permitted to use Complainant’s
EXPEDIA marks or any variations thereof.
Respondent has offered no evidence to refute these allegations that it
is not commonly known by the disputed domain name or authorized to use
Complainant’s marks. The Panel finds
that Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleged that Respondent acted in bad faith in registering and using the <expendia.com>
domain name in an attempt to gain profit.
Respondent intentionally attempts to attract Internet users interested
in locating Complainant’s EXPEDIA products and services but who accidentally
type an “n” while entering Complainant’s <expedia.com> domain name. Respondent presumably derives commercial
benefit from these intentional diversions through referral fees from
redirecting Internet users to other commercial websites, some of which offer
competing travel services. The Panel
concludes that Respondent’s attempts to divert Internet users for commercial
gain by attracting Internet users to Respondent’s website through a likelihood
of confusion with Complainant’s EXPEDIA marks is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, 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); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
Furthermore,
while the situations listed under Policy ¶ 4(b) are circumstances in which
there may be a finding of bad faith registration and use, it is widely understood
under the Policy that this list is not intended to be exhaustive. Therefore, the Panel has decided to examine
additional factors in making its determination of bad faith registration and
use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that, in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent is
engaging in the practice of “typosquatting” by taking advantage of a common
typographical error made by Internauts intending to reach Complainant’s website
at the <expedia.com> domain name, but who mistakenly type the letter “n”
before the letter “d.” The Panel
determines that Respondent’s use of typosquatting to attract Internet users to
its website is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii)
because the name was merely a typosquatted version of Complainant’s ZONEALARM
mark); see also Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
complainant’s DERMALOGICA mark and stating that “[t]yposquatting itself is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”).
Respondent also
has registered a domain name that contains a confusingly similar version of
Complainant’s EXPEDIA marks and used it to resolve to a website that diverts
Internet users to goods and services in competition with Complainant. This suggests that Respondent chose the
disputed domain name based on the distinctive and well-known qualities of
Complainant’s famous mark. Furthermore,
Complainant’s registration of its EXPEDIA marks with the USPTO bestows
constructive knowledge on Respondent even if Respondent did not actually know
of Complainant’s marks. Registration of
a domain name that includes a mark that Respondent reasonably should have known
belonged to Complainant is evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”); see also Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains
Complainant’s mark in its entirety, (2) the mark is a coined word, well-known
and in use prior to Respondent’s registration of the domain name, and (3)
Respondent fails to allege any good faith basis for use of the domain name); see
also 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.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <expendia.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
April 7, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National
Arbitration Forum