Expedia, Inc. v. Expedia Inc
Claim Number: FA0611000839813
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME(s)
The domain name at issue is <exoedia.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 13, 2006.
On November 10, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the National Arbitration Forum that the <exoedia.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 November 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 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@exoedia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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. Respondent’s <exoedia.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <exoedia.com> domain name.
3. Respondent registered and used the <exoedia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc. has been in the business of providing a variety of goods and services primarily related to the travel industry since October of 1996. Complainant has registered numerous marks with the United States Patent and Trademark Office (“USPTO”) under its EXPEDIA mark (including, but not limited to Trademark Registration Nos. 2,778,113; 2,664,569; and 2,220,719).
Respondent’s <exoedia.com> domain name, which was registered in May of 1999, resolves to a web site that contains a search engine and links to travel and other consumer related web sites.
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. 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 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 established rights in the EXPEDIA mark
through registration of the mark with the USPTO. See 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.”); 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.”).
In registering its <exoedia.com> domain name, Respondent merely replaced the “p” in Complainant’s EXPEDIA mark with an “o.” Such action is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also 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).
In light of the foregoing analysis, the Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <exoedia.com> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See 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, despite the presumptive effect of
Respondent’s inaction, the Panel chooses to analyze the relevant factors under
Policy ¶ 4(c).
In connection with registering the
disputed <exoedia.com> domain name, Respondent simply listed “Expedia, Inc.” as the registrant.
While the record clearly indicates that Respondent performed this
mandatory and perfunctory task, it is void of any other attempt by Respondent
to establish that he is commonly known by the disputed domain name. Merely listing a
name in association with registering a domain name is not enough to establish
that one is commonly known by that name.
Moreoever, the record is void
of any attempt by Respondent to use the <exoedia.com> domain name
in a legitimate noncommercial or fair manner under Policy ¶ 4(c)(iii), or in
connection with a bona fide offering of goods or services persuant to
Policy ¶ 4(c)(i). Respondent’s site does
nothing more than resolve to a page that contains a search engine and provides
links to travel related web sites.
Without any evidence to the contrary, it can be reasonably inferred that
Respondent used a confusingly similar version of Complainant’s EXPEDIA mark in
its <exoedia.com> domain name purely for commercial gain,
presumably in the form of click-through fees.
See Wells Fargo & Co. v.
Lin Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); Golden Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”). Indeed,
it is unlikely that Respondent registered the <exoedia.com> domain
name for any other reason than to profit off of unsuspecting internet users who
mistakenly type an “o” in place of a “p.”
See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110,
114 (D. Mass. 2002) (finding that, because the
respondent's sole purpose in selecting the domain names was to cause confusion
with the complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use). The Panel notes that the close proximity of
the “o” and “p” keys on the standard keyboard factors into its analysis.
In any event, the Panel accepts
Complainant’s contention that Respondent falsified its registration information
when it registered the <exoedia.com> domain name. The Panel finds the documentary evidence
compelling and sufficient in this regard.
See Home
Builders Inst. v. Nat’l Inst. of Home Builders, Inc., FA 166011 (Nat. Arb. Forum Oct.
3, 2003) (holding that listing the respondent’s trade name, The National
Institute of Homebuilders, Inc., as the administrative contact in the WHOIS
contact information for <homebuilderinstitute.com>, failed to establish
that the respondent was commonly known by the domain name because the
respondent could list any administrative contact it desired). Further, it appears
as if Respondent has registered its <exoedia.com> domain name in
the absence of any license agreement with the Complainant (the real Expedia,
Inc.). Absent permission from
Complainant, Respondent’s argument that it has rights or legitimate interests
in the disputed <exoedia.com> domain name must fail. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest 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).
In light of the foregoing
analysis, the Panel finds that Respondent has failed to show any rights or
legitimate interests in the disputed domain names under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶
4(a)(ii).
The record indicates that Respondent sought to redirect consumers who attempted to reach Complainant’s <expedia.com> site by registering the disputed <exeodia.com> domain name and resolving that name to a site that offered a search engine and links to web sites in the travel industry. These travel related web sites presumably compete with Complainant’s <expedia.com> service. Respondent’s incorporation of a name that is confusingly similar to Complainant’s EXPEDIA mark into its <exoedia.com> domain name is indicative of bad faith pursuant to Policy ¶ 4(b)(iv). The presumed commercial gain (see discussion of rights and legitimate interests, above) only furthers this finding. 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); 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)
Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and has thus satisfied the requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <exoedia.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 28, 2006
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