Expedia, Inc. v. Charlie Mike
Claim Number: FA2306002048262
Complainant is Expedia, Inc. (“Complainant”), USA, represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Charlie Mike (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <expediaqroup.com>, registered with NameCheap, Inc.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 8, 2023; Forum received payment on June 8, 2023.
On June 9, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <expediaqroup.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@expediaqroup.com. Also on June 12, 2023, the 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 July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates one of the world’s largest full-service online travel agencies through its EXPEDIA-branded websites. Complainant has rights in the EXPEDIA mark based upon numerous trademark registrations around the world including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,220,719 registered on January 26, 1999). The disputed domain name is confusingly similar to Complainant’s EXPEDIA mark because it contains Complainant’s mark in its entirety. The additional misspelled term “group” heightens the confusingly similarity of the disputed domain name.
ii) Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use its EXPEDIA mark. Respondent’s use of the disputed domain name for fraudulent activities does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Passing off and typosquatting activities do not make a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on September 19, 2022.
2. Complainant has established rights in the EXPEDIA mark based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 2,220,719 registered on January 26, 1999).
4. The disputed domain name’s resolving website is currently blocked by Google Safe Browsing as a deceptive site, and has been flagged by many online security vendors as malicious.
5. Respondent uses the disputed domain name for fraudulent, phishing, and passing off activities, competing with Complainant.
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”).
Complainant claims rights in the EXPEDIA mark based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 2,220,719 registered on January 26, 1999). Registration of a mark with the USPTO is a valid showing of rights in a mark. Since Complainant provides evidence of registration of the EXPEDIA mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).
Complainant contends that the disputed domain name <expediaqroup.com> is confusingly similar to Complainant’s EXPEDIA mark because it contains Complainant’s mark in its entirety. The additional misspelled term “group” heightens the confusingly similarity of the disputed domain name. The Panel observes that additional terms that relate to a complainant’s business heighten the confusing similarity of the domain name to the mark. See Expedia. v. Sameh Elsayed, FA 1941132 (Forum May 10, 2021) (“The disputed domain name <expedia-traveleg.com> incorporates Complainant’s registered EXPEDIA trademark, adding a hyphen, the generic term ‘travel,’ the geographic abbreviation ‘eg,’ and the ‘.com’ top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant’s mark.). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s EXPEDIA mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel notes that the unmasked WHOIS information identifies “Charlie Mike” as the registrant. Complainant asserts that nothing in the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its EXPEDIA mark. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name for fraudulent activities, namely, a phishing website, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Passing off and typosquatting activities do not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP. Fraudulent and phishing activities demonstrate a lack of legitimate interest under UDRP ¶¶ 4(c)(i) and 4(c)(iii). See Expedia v. Singh FA 2041902 (Forum May 23, 2023) (finding no legitimate interest in respondent’s use of the domain name <travelsexpedia.com> for fraudulent activities); see also Expedia v. chen tian yu FA 2038625) (Forum May 10, 2023) (“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).”). The Panel finds that Respondent’s use of the disputed domain name for fraudulent activities, namely, a phishing website, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel also finds that Respondent’s passing off and typosquatting activities do not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent’s use of the disputed domain name for fraudulent, passing off, and typosquatting activities constitutes independent grounds of bad faith under prior UDRP decisions. See Expedia v. chen tian yu FA 2038625 (Forum May 10, 2023) (“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 also Caterpillar v. Greenwhite Technologies FA 1841277 (Forum May 31, 2019) (“. . . Respondent’s passing off as and impersonating authorized dealers of Complainant is also, in and of itself, evidence of bad faith registration and use.”); see also Caterpillar v. Holding Account FA 1835712) (Forum April 21, 2019) (“In typosquatting, a respondent deliberately introduces typographical errors or misspellings into a trademark, or as here into a URL, and then uses the resulting string in a domain name, hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark, URL, or official domain name; and/or 2) in viewing the domain name will confuse it with its confusingly similar target. Here, in creating the at-issue <wwwcaterpillar.com> domain name Respondent drops the period/dot from the URL www.caterpillar.com, a legitimate URL for Complainant. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii).”).
The Panel notes that Respondent has used the disputed domain name for a fraudulent website that was a fake version of Microsoft’s OFFICE.COM website and solicited or phished for users’ Microsoft Office login credentials. The disputed domain name’s resolving website is currently blocked by Google Safe Browsing as a deceptive site, and has been flagged by many online security vendors as malicious. Furthermore, the disputed domain name <expediaqroup.com> replaces the letter “g” in Complainant’s own domain name <expediagoup.com> with the letter “q,” which is considered as a typical typosquatting. The Panel finds that Respondent’s use of the disputed domain name for fraudulent, passing off, and typosquatting activities constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant further contends that Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s rights in its EXPEDIA mark given the international fame of Complainant’s mark, Respondent’s selection and registration of the disputed domain name that contains Complainant’s EXPEDIA mark in its entirety, and Respondent’s fraudulent activities.
The Panel notes that as a result of the long commercial success of the EXPEDIA mark and Complainant’s extensive use, promotion, and registration of the EXPEDIA mark for many years, the EXPEDIA mark has long been famous worldwide and entitled to the broadest scope of protection. Even as early as 2003, the EXPEDIA mark was recognized as a “well-known” trademark by UDRP panels. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the EXPEDIA mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <expediaqroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 12, 2023
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