Expedia, Inc. v. Domain Explorer
Claim Number: FA0701000904266
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv
D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com>, registered with Enom, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2007.
On January 30, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2007 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@expediz.com, postmaster@3xpedia.com, postmaster@4xpedia.com, postmaster@expediq.com, postmaster@ex0edia.com, postmaster@expddia.com, postmaster@expsdia.com, postmaster@expexia.com and postmaster@exp4dia.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 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names are confusingly similar to Complainant’s EXPEDIA.COM mark.
2. Respondent does not have any rights or legitimate interests in the <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names.
3. Respondent registered and used the <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., is in the business of providing a wide variety of services over the Internet, but it is best known for providing discount travel services via the Internet. Complainant holds trademark registrations with the United States Patent and Trademark Office for the the EXPEDIA.COM mark (including Reg. No. 2,405,746 issued November 21, 2000 and Reg. No. 2,610,291 issued August 20, 2002).
Complainant has used the EXPEDIA.COM marks continuously and extensively since 1996 and has invested millions of dollars in advertising and promotions of its mark and has sold or licensed many hundreds of millions of dollars in goods and services associated with the EXPEDIA.COM mark.
Respondent registered the <expediz.com>, <3xpedia.com>, <4xpedia.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names on July 21, 2002 and registered the <expediq.com> domain name on March 5, 2003. The disputed domain names resolve to Complainant’s homepage at the <expedia.com> domain name.
Respondent was previously enrolled in Complainant’s associate program. Respondent’s participation in that program was terminated, and Respondent is no longer affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.
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.COM mark
through registration with the USPTO. The
Panel finds that such registration is sufficient to establish rights as
required by Policy ¶ 4(a)(i). 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.”).
Respondent’s <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>,
<ex0edia.com>, <expddia.com>, <expsdia.com>,
<expexia.com>, and <exp4dia.com> domain names are confusingly similar to Complainant’s EXPEDIA.COM
mark. The
disputed domain names contain the dominant features of Complainant’s mark and
omit letters and add letters or numbers in their place. The Panel finds that such alterations to
Complainant’s mark in order to create a misspelling of Complainant’s mark does
not overcome the confusing similarity between the disputed domain names and
Complainant’s mark 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); see also 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 the complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion establishes a prima facie case, thus shifting the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names as outlined in Policy ¶ 4(a)(ii). Respondent has the opportunity to submit a Response presenting evidence that it has rights or legitimate interests through using the domain names for a bona fide offering of goods and services, or a legitimate noncommercial or fair use or by being commonly known by the disputed domain names, as outlined in Policy ¶ 4(c). By failing to submit a Response, Respondent has not given the Panel any additional evidence with which to evaluate Respondent’s position, thus the Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks right or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Respondent’s failure to respond notwithstanding, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Due to Respondent’s affiliation with Complainant’s associate
program, Respondent’s registration makes it possible to impute that Respondent
may have registered the disputed domain names with the intention of taking
advantage of Complainant’s associate program by using the confusingly similar
domain names to redirect Internet users through Respondent’s domain names to
Complainant’s website, generating referral fees for Respondent. The panel finds that Respondent’s use of the
disputed domain names does not constitute a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial use
pursuant to Policy ¶ 4(c)(iii). See
Sports
Furthermore, there is no
evidence that Respondent is commonly known by the disputed domain
names. Respondent’s WHOIS
information identifies Respondent as “Domain Explorer.” Complainant
asserts that while Respondent was once a member of Complainant’s associate
program, Respondent is no longer affiliated or sponsored by Complainant and
Respondent does not now, nor did it ever, have permission to use Complainant’s
mark in a domain name. Thus, the Panel
finds that Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally registered domain names that are
confusingly similar to Complainant’s mark for Respondent’s commercial gain. The disputed domain names divert Internet
users who seek Complainant’s EXPEDIA.COM mark to Complainant’s
<expedia.com> homepage through the use of domain names that are
confusingly similar to Complainant’s marks.
Furthermore, Respondent is unfairly and opportunistically benefiting
from the goodwill associated with Complainant’s EXPEDIA.COM mark. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to Policy
¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb.
Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed
domain name to sell the complainant’s products without permission and mislead
Internet users by implying that the respondent was affiliated with the complainant);
see also Compaq Info. Techs. Group,
L.P. v. Waterlooplein Ltd., FA 109718 (Nat.
Arb. Forum May 29, 2002) (finding that the respondent’s use
of the <compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”); see also 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)).
Complainant has engaged in extensive advertising under the
EXPEDIA.COM mark, making the mark quite popular and commonly known. However, even if Respondent was unaware of
Complainant’s marks, once Respondent enrolled in Complainant’s associate
program, Respondent had actual knowledge of Complainant’s rights in the
mark. The Panel finds that Respondent’s
registration of the disputed domain names, despite knowledge of Complainant’s
rights in the mark, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
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 <expediz.com>, <3xpedia.com>, <4xpedia.com>, <expediq.com>, <ex0edia.com>, <expddia.com>, <expsdia.com>, <expexia.com>, and <exp4dia.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated:
March 19, 2007
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