Expedia, Inc. v Compaid
Claim Number: FA0507000520654
PARTIES
Complainant
is Expedia, Inc. (“Complainant”),
represented by Sanjiv D. Sarwate and Kristen S. Knecht, Esq., of Pattishall, McAuliffe, Newbury, Hilliard &
Geraldson, LLP, 311 South
Wacker Drive, Suite 5000, Chicago, IL 60606.
Respondent is Compaid (“Respondent”),
Warrington, Cheshire WA4 4ENWA4, GB, and Michael W. Mansfield, Urb Les Fonts
85, Benitachell, 03726,(Alicante), Spain, the domain name owner .
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain name at issue is <expediate.com>,
registered with Network Solutions, Inc.
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.
Richard
DiSalle is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 22, 2005.
On
July 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <expediate.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
July 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 15,
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@expediate.com by e-mail.
A
timely Response was received and determined to be complete on August 5, 2005.
A
timely Additional Submission was received from Respondent and determined to be
complete on August 9, 2005.
A timely Additional Submission was received from
Complainant and determined to be complete on August 10, 2005. On August 16, 2005, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Long
prior to the Respondent’s registration of the Infringing Domain Name, Expedia
adopted, and has continuously used since that adoption, the inherently
distinctive EXPEDIA mark for the EXPEDIA goods and services described above, in
the United States and around the world.
Expedia does business primarily over the Internet and is the most
successful travel service on the Internet.
Expedia has invested many millions of dollars in advertising and
promoting the EXPEDIA mark and has sold or licensed many hundreds of millions
of dollars in its EXPEDIA goods and services under the EXPEDIA mark, including
entertainment and travel-related goods and services. In addition to its inherent distinctiveness, and as a result of
Expedia’s extensive marketing efforts, substantial sales and the resulting
success of its EXPEDIA goods and services, the EXPEDIA mark has become famous
and represents extraordinarily valuable goodwill owned by Expedia. Furthermore, Expedia offers numerous
travel-related services in connection with Europe, including Great Britain,
where Respondent is located, and Spain, where Respondent’s administrative
contact is located.
The
Infringing Domain Name is confusingly similar to the EXPEDIA mark because the
Infringing Domain Name incorporates the entirety of Expedia’s EXPEDIA mark.
Respondent
is not known by the EXPEDIA mark and has not acquired any trademark or service
mark rights in the EXPEDIA mark.
Expedia has
not licensed or otherwise permitted Respondent to use the EXPEDIA mark or to
apply for or use any domain name incorporating the mark. Any rights Respondent might have had to use
the EXPEDIA mark did not exist at the time Respondent registered the Infringing
Domain Name and were later terminated when Respondent’s affiliate status was
ended because of Respondent’s infringing use of the EXPEDIA mark on its web
pages.
B. Respondent
Expedia
registered their domain name on November 25, 1995 (Expedia, Inc v. Venta,
D2001-1222 (WIPO Dec. 19, 2001)). Expedia Travel did not commence until
November 2000. The EXPEDIA.COM service
mark was registered in November 2000 (Expedia, Inc. v. Pennella,
D2001-1416 (WIPO Mar. 14, 2002)). Expedia,
Inc. v. Venta establishes that they did not possess a web travel
reservation business until November 21, 2000.
Prior to this date they were exclusively involved in software, user guides and clothing.
The
<expediate.com> domain
name was first registered on December 30, 1998. From the outset, the business has dealt with information
technology and publishing. The
information technology and publishing business has exclusively and continuously
used this website domain name, <expediate.com>.
Expedia
was created and publicly hosted with msn.com, until November 21, 2000, see
Appendix B. This means that it was not
generally known or commonly accessible as a high level domain name in its own
right as Expedia.com until this date.
Moreover it was initially entitled “Expedia Travel” (2 words) and did
not become titled “Expedia.com” as an independent high level domain name until
November 21, 2000.
Expediate.com
hosts on behalf of its clients nineteen separate and active commercial websites
and management of an additional nine web sites hosted separately but supported
as part of the IT services proved by Expediate.com (trading as Nueva Vista
Mediterraneo SL, formally Compaid Ltd in UK).
The owner of the domain name, <expediate.com> is the sole
employee/director of the business and has used this web site as its only web
contact.
Expediate.com
also offers remote backup services of website content for offsite backup and
recovery for websites not hosted by Expediate.com as an additional client
service.
That
Expediate.com has acted throughout in good faith is demonstrated by the
existence of continuous core business usage and an affiliation contract signed
between the two enterprises on or about October 28, 2002. The signing of this contract proves that
Expedia.com accepted the existence of Expediate.com and indeed benefited,
financially and perhaps otherwise, from the links which it knowingly and
willingly established, providing supporting graphics and trademarks. That
Expedia.com latter terminated unilaterally this arrangement can in no way be
admitted as proof that Compaid acted in bad faith.
Respondent’s
suggestion that his use of <expediate.com> occurred prior to the
use of EXPEDIA by Expedia and its predecessor is contradicted by the materials
that Respondent attached as Appendices B and E to his Response. Accepting these materials as true and
accurate, both demonstrate use of the EXPEDIA mark in connection with
travel-related services by Microsoft Corporation, Expedia’s predecessor, at
least as early as 1996, i.e. before
the January 30, 1998 date on which Respondent claims to have registered <expediate.com>. Respondent’s claim that the business
conducted under the EXPEDIA mark was limited to “software, user guides, and
clothing” is contradicted by the very materials upon which it relies.
Expedia’s
direct predecessor applied to register the EXPEDIA mark in the United States on
April 9, 1996, and in the European Community on September 24, 1996. The EXPEDIA mark was actually used in
commerce at least as early as October 22, 1996. (Complaint, Ex. E). All
of these dates are well prior to the January 30, 1998 date on which Respondent
claims to have registered the Infringing Domain Name.
“Expediate”
includes the EXPEDIA mark in its entirety.
The addition of “te” to the famous EXPEDIA mark does not sufficiently
distinguish the Infringing Domain Name from Expedia’s mark, and the Infringing
Domain Name is and remains confusingly similar to the famous EXPEDIA mark.
Respondent’s
arguments that he has rights or legitimate interests in the <expediate.com>
domain name rely heavily, and inappropriately, on his participation in the
Expedia Affiliate Program (“EAP”).
However, Respondent’s enrollment in the EAP does not constitute
endorsement or approval by Expedia.
Respondent
accepted an agreement that Expedia could modify at its sole discretion by
posting notice of any changes on the Expedia website. (Response at Appendix C, ¶11.)
Continued participation in the EAP constituted acceptance of any such
changes, including the prohibition on promoting competing travel agencies. Thus, Respondent’s protest that he “never
signed” the agreement attached to the Complaint is meaningless because
Respondent continued participating in the EAP.
D. Respondents Additional
Submission
The
whole case for the priority of Expedia’s name over Expediate’s comes down to
their filing for registration on February 10, 1998, in a completely different
line of activity, i.e. balls,
coasters, cards, vests, wrist bands, pencils, greeting cards, books, etc. to
that of Expediate. It is questionable
whether the weight of their argument is really augmented by the addition of
this load of balls and vests.
The
affiliation contract signed by Respondent and Expedia permitted Respondent to
place the logos of Expedia’s competitors on its website, a fact which can be
proved by the simple expedient of reading the original contract (submitted by
respondent) and comparing it with the document which Expedia has submitted to
the arbitrators.
FINDINGS
The Domain name registered by Respondent
is confusingly similar to a trademark or service mark in which Complainant has
rights.
Respondent has no rights or legitimate
interests in respect of the domain name.
The Domain name has been registered and
is being used in bad faith.
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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 established common law rights in the EXPEDIA.COM mark dating back to
October 1996 in connection with travel agency services provided through
EXPEDIA.COM’s websites. Under Policy ¶
4(a)(i), a complainant need not hold a registered trademark to establish rights
in a mark. Complainant has established
common law rights in the mark because the mark has acquired secondary meaning
as a source indicator for Complainant’s travel agency service business. Thus, Complainant has demonstrated secondary
meaning associated with the mark, and therefore, Complainant’s common law
rights are sufficient for satisfying Policy ¶ 4(a)(i). See
SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)
(finding that the Rules do not require that the complainant’s trademark or
service mark be registered by a government authority or agency for such rights
to exits); see also British Broad. Corp.
v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does
not distinguish between registered and unregistered trademarks and service
marks in the context of abusive registration of domain names” and applying the
Policy to “unregistered trademarks and service marks); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28,
2001) (“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law).
Respondent’s
<expediate.com> domain name is
confusingly similar to Complainant’s EXPEDIA.COM mark, as the domain name
incorporates the mark entirely and merely adds the letters “te” to the
mark. Such a minor alteration to
Complainant’s registered mark is insufficient to negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Reuters Ltd. V. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive).
Once
Complainant makes a prima facie case
for Policy ¶4(a)(ii), the burden shifts to Respondent to establish rights or
legitimate interests in the disputed domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the
complainant has asserted that the respondent does not have rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once the complainant asserts that the
respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claims of rights and legitimate interests in the domain
name).
Respondent is neither commonly known by
the <expediate.com> domain name, nor authorized to register a domain name
featuring any version of Complainant’s EXPEDIA.COM mark. Thus, Respondent has not established rights
or legitimate interests in the <expediate.com> domain name pursuant to
Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. ComUnion Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
Respondent
is using the <expediate.com>
domain name, which is confusingly similar to Complainant’s EXPEDIA.COM mark, to
redirect Internet users to a website featuring links to travel services such as
Travelocity and Lastminute.com that directly complete with Complainant’s
business. Such use constitutes
disruption and is 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 the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶4(b)(iii)).
Respondent
commercially benefits when Internet users searching under Complainant’s mark
are diverted to Respondent’s website.
Respondent is capitalizing on the confusing similarity of its domain
name to benefit from the valuable goodwill that Complainant has established in
its mark. Thus, Respondent registered
and used the domain name in bad faith under Policy ¶4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that the respondent registered and used the domain name
in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad
faith where the respondent registered and used an infringing domain name to
attract users to a website sponsored by the respondent).
DECISION
The
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 <expediate.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: August 30, 2005
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