Expedia, Inc. v. Spiral Matrix
Claim Number: FA0602000637951
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv Sarwate of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave, P.O. Box 4276-30100, Eldoret 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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 1, 2006; the National Arbitration Forum received a hard copy of the Complaint February 3, 2006.
On February 2, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 2006, 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@expediaflight.com, postmaster@expediadiscount.com, postmaster@expediacoupon.com, postmaster@expediaus.com, postmaster@expediaextranet.com, postmaster@expediaair.com, and postmaster@expediadealcrawler.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2006, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com>, are confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent has no rights to or legitimate interests in the <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names.
3. Respondent registered and used the <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is an online travel agency providing access to airline, hotel and rental car reservations at discounted rates. Complainant also offers tickets to entertainment and sporting events and sells merchandise featuring the EXPEDIA mark.
Complainant is one of the most successful Internet travel service providers and has sold or licensed hundreds of millions of dollars in goods and services under the EXPEDIA mark. Complainant has been continuously and extensively promoting its travel services under the EXPEDIA mark since October 1996.
Complainant owns numerous trademark registrations worldwide and many with the United States Patent and Trademark Office (“USPTO”), including, but not limited to, Reg. No. 2,220,719 (issued January 26, 1999), Reg. No. 2,224,559 (issued February 16, 1999), and Reg. No. 2,240,373 (issued April 20, 1999). Complainant has also registered the EXPEDIA.COM (Reg. No. 2,405,746 issued November 21, 2000) and EXPEDIA TO GO (Reg. No. 2,512,312 issued November 27, 2001) marks with the USPTO.
Respondent registered the <expediacoupon.com> domain name May 12, 2005, the <expediaflight.com> domain name June 13, 2005, the <expediadiscount.com>, <expediaextranet.com>, and <expediaair.com> domain names July 11, 2005, the <expediaus.com> domain name July 22, 2005, and the <expediadealcrawler.com> domain name August 22, 2005. Respondent is using the disputed domain names to operate a search engine featuring links to Complainant’s competitors in the travel services industry. Respondent’s search engine also contains pop-up advertisements.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 with extrinsic proof in this
proceeding that it has rights in the EXPEDIA mark through registration of the
mark with the USPTO. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The disputed domain names, <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com>, are confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i), because each wholly incorporates Complainant’s mark and merely adds a generic word to the end of the mark. Panels have held that addition of generic terms to a complainant’s mark does not sufficiently distinguish a domain name from a mark. 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 the complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <expediaflight.com>,
<expediadiscount.com>, <expediacoupon.com>, <expediaus.com>,
<expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com>
domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will now examine the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c).
Respondent registered the domain names under the name
“Spiral Matrix” and no evidence in the record suggests that Respondent is
commonly known by the <expediaflight.com>, <expediadiscount.com>,
<expediacoupon.com>, <expediaus.com>, <expediaextranet.com>,
<expediaair.com>, and <expediadealcrawler.com> domain
names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031
(Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly
known by <aolcamera.com> or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video & Imaging
Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Moreover, Respondent is using the <expediaflight.com>,
<expediadiscount.com>, <expediacoupon.com>, <expediaus.com>,
<expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com>
domain names, which are confusingly similar to Complainant’s EXPEDIA mark, to
divert Internet users to a search engine featuring pop-up advertisements and
links to Complainant’s direct competitors in the travel industry. Such use of the disputed domain name for
Respondent’s commercial gain does not constitute 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). See Wells Fargo & Co.
v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that
the respondent’s use of “confusingly similar
derivatives of Complainant’s WELLS FARGO mark to divert Internet users to
websites featuring pop-up advertisements” was not a bona fide offering
of goods or services); see also TM Acquisition Corp. v. Sign
Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names, which are confusingly similar to Complainant’s EXPEDIA mark, to divert Internet users to a search engine displaying pop-up advertisements and links to Complainant’s competitors. The Panel infers that Respondent receives click-through fees for each consumer it diverts to other websites. Therefore, Respondent is taking advantage of the likelihood of confusion between Respondent’s domain name and Complainant’s mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use is indicative 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 the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Complainant satisfied 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 <expediaflight.com>, <expediadiscount.com>, <expediacoupon.com>, <expediaus.com>, <expediaextranet.com>, <expediaair.com>, and <expediadealcrawler.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 15, 2006
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