Expedia, Inc. v. chen tian yu
Claim Number: FA2304002038625
Complainant is Expedia, Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is chen tian yu (“Respondent”), Hong Kong, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <expediauk.net>, <expediauk.org>, <expediauk.vip> and <expediauk.top>, registered with Gname.com Pte. Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on April 3, 2023; Forum received payment on April 3, 2023.
On April 6, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names are registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 10, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of May 1, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@expediauk.net, postmaster@expediauk.org, postmaster@expediauk.vip, postmaster@expediauk.top. Also on April 10, 2023, the Chinese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Notwithstanding that the Registration Agreement is written in Chinese, pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Expedia, Inc. is in the travel business.
Complainant asserts rights in the EXPEDIA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and otherwise.
Respondent’s
<expediauk.net>, <expediauk.org>,
<expediauk.vip>, and <expediauk.top> domain names
are confusingly similar to Complainant’s EXPEDIA trademark because they incorporate the mark in its entirety and add
letters or geographic term “uk” and the generic top-level domain names (“gTLD”)
“.net”, “.org”, “.vip”, and “.top”.
Respondent does not have rights or legitimate interests
in the at-issue domain names. Respondent is not licensed or authorized to use
Complainant’s EXPEDIA
mark and is not commonly known by the at-issue
domain names. Respondent also does not use the domain names for any bona
fide offering of goods or services or legitimate noncommercial or fair use.
Rather, Respondent attempts passing off as Complainant in furtherance of
a phishing scheme.
Respondent registered and uses the at-issue domain names in bad faith. Respondent disrupts Complainant’s business by operating a competing website. Respondent creates a likelihood of confusion by attempting to pass off as Complainant in furtherance of a phishing scheme. Respondent had actual or constructive knowledge of Complainant’s rights in the EXPEDIA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the EXPEDIA trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the EXPEDIA trademark.
Respondent uses the at-issue domain names to address websites that are designed to pass off as Complainant and facilitate phishing.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the EXPEDIA mark with the USPTO, as well any other bona fide trademark registration worldwide, sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names are each composed of Complainant’s entire EXPEDIA trademark followed by the generic geographic term “uk” with all followed by a either the “.net,” “.org,” “.vip,” or “.top” top-level domain name. The differences between Complainant’s trademark and Respondent’s domain names do nothing to distinguish any of the at-issue domain names from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names are each confusingly similar to EXPEDIA under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “chen tian yu” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either the <expediauk.net>, <expediauk.org>, <expediauk.vip>, or <expediauk.top> domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Respondent uses the domain names to pass itself off as Complainant and address websites flaunting Complainant’s trademark and logo. The websites thus give the deceptive impression that Complainant owns, operates, or is otherwise affiliated with Respondent’s domain names and related websites. Further, the websites provide login and registration forms which Respondent can use for collecting private data from internet visitors who falsely believe that they are dealing with Complainant. Respondent’s use of <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> to pass itself off as Complainant and to facilitate a phishing scheme indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”).
Given the forgoing Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each of the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> in connection with an email phishing scheme. As mentioned above regarding rights and legitimate interests, Respondent’s at-issue domain names are used to pose as Complainant so that Respondent can deviously employ related websites to collect private data from third parties. Respondent’s use of <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> in furtherance of fraud demonstrates Respondent’s bad faith registration and use of the <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names under the Policy. See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name).
Moreover, Respondent registered the <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names knowing that Complainant had trademark rights in EXPEDIA. Respondent’s actual knowledge of Complainant’s rights in EXPEDIA is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the confusingly similar domain names to pass itself off as Complainant as discussed elsewhere herein. Respondent’s prior knowledge of Complainant's EXPEDIA trademark indicates Respondent’s bad faith under the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed the disputed domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <expediauk.net>, <expediauk.org>, <expediauk.vip>, and <expediauk.top> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 10, 2023
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