Expedia, Inc. v Steve Kerry c/o North West Enterprise, Inc.
Claim Number: FA0605000713702
Complainant is Expedia, Inc. (“Complainant”), represented by Kristen S. Knecht of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL, 60606. Respondent is Steve Kerry c/o North West Enterprise, Inc. (“Respondent”), 22915 Telegraph Rd., Santa Fe Springs, CA, 90670.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com>, registered with OnlineNIC, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge 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 May 23, 2006; the National Arbitration Forum received a hard copy of the Complaint May 25, 2006.
On May 24, 2006, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com>, domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc. 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 June 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 26, 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@expediacom.net, postmaster@expediia.net, postmaster@expediar.com, postmaster@expediar.net, postmaster@expedias.net, postmaster@expedla.net, postmaster@expeda.org, postmaster@expedya.net, postmaster@expedoa.net, postmaster@expeda.net, postmaster@expedai.net, postmaster@expedua.net, postmaster@wwwexpediar.com and postmaster@wwwexpediacom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 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, <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com>, are confusingly similar to Complainant’s EXPEDIA and EXPEDIA.COM marks.
2. Respondent has no rights to or legitimate interests in the <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com> domain names.
3. Respondent registered and used the <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., provides access to airline, hotel and rental car reservations for destinations in the United States and around the world through its website. In connection with its services, Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the marks EXPEDIA (Reg. No. 2,633,295 issued Oct. 8, 2002) and the EXPEDIA.COM (Reg. No. 2,610,319 issued Aug. 20, 2002).
Respondent registered disputed domain names accordingly: <expediar.com> on July 2, 2000; <expedla.net> on May 4, 2004; <expediacom.net> on July 20, 2004, <expedias.net> and <expediar.net> on November 18, 2004; <expeda.org> on November 29, 2004; <wwwexpediacom.com> on January 18, 2005; <expedoa.net>, <expeda.net>, <expedai.net>, and <expedua.net> on January 21, 2005; <expediia.net> and <expedya.net> on February 14, 2005; and the <wwwexpediar.com> domain name on February 22, 2005. These disputed domain names resolve to websites that display links to both Complainant’s site and third-party websites, which are in direct competition 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."
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.
The Panel finds that Complainant’s federal registrations
with the USPTO sufficiently establish Complainant’s rights in the EXPEDIA and
EXPEDIA.COM marks. 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 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.”).
The disputed domain names that
Respondent registered, <expediia.net>, <expediar.net>,
<expedias.net>, <expedla.net>, <expeda.org>,
<expedya.net>, <expedoa.net>, <expeda.net>,
<expedai.net> and <expedua.net>, are confusingly
similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i) as they are
misspelled variations of Complainant’s mark and are phonetically similar to
Complainant’s mark. See 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); see also YAHOO! Inc. v. Murray,
D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com>
is confusingly similar to the complainant’s YAHOO mark).
Additionally, the <expediacom.net>, <expediar.com>, <wwwexpediar.com> and <wwwexpediacom.com> domain names are confusingly similar to Complainant’s EXPEDIA.COM mark, pursuant to Policy ¶ 4(a)(i), as the domain names contain the dominant features of Complainant’s mark and make minor changes, including adding a generic top-level domain name, adding letters and/or adding a “www” to the mark. Such changes are not enough to negate the confusing similarity between the disputed domain names and a Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established with extrinsic proof in this proceeding that has rights to and legitimate interests in the marks contained within the disputed domain names. Complainant has alleged that Respondent lacks such rights to or legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and 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) (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”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c). Complainant asserts that Respondent is not
authorized to use Complainant’s marks, and that Respondent is not associated
with Complainant in any way.
Respondent’s WHOIS information does not suggest that Respondent is
commonly known by any of the disputed domain names. Further, no evidence in the record to suggests that Respondent is
or has ever been known by any of the disputed domain names. Consequently, the Panel finds that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See 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); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
In addition, the evidence on
record indicates that Respondent is using the disputed domain names to operate
websites, which display links to third-party websites that offer goods and
services that are in direct competition with Complainant as well as display
links to Complainant's website. The
Panel finds that such use is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); see also Seiko
Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith by registering and using the disputed domain names. Based on the uncontested evidence on record, the Panel finds that Respondent is using the disputed domain names to redirect Internet users to websites that display links to third-party websites that are in direct competition with Complainant. In Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003), the panel found that the respondent registered a domain name confusingly similar to the complainant's mark to divert Internet users to a competitor's website, and that from such use it was a reasonable inference that the respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Therefore, the Panel finds, pursuant to Policy ¶ 4(b)(iii), that Respondent’s use of the disputed domain names constitutes disruption and is evidence of bad faith registration and use.
Moreover, based on the uncontested evidence presented by
Complainant, the Panel infers that Respondent receives click-through fees for
diverting Internet users to websites featuring links to competing third-party
businesses. Additionally, Respondent’s
disputed domain names are capable of creating confusion as to Complainant’s
affiliation with the disputed domain names and resulting websites. In Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003), the panel found that the respondent’s
prior use of the <mailonsunday.com> domain name was evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to the
complainant's competitors and the respondent presumably commercially benefited
from the misleading domain name by receiving click-through-fees. See
Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
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 <expediacom.net>, <expediia.net>, <expediar.com>, <expediar.net>, <expedias.net>, <expedla.net>, <expeda.org>, <expedya.net>, <expedoa.net>, <expeda.net>, <expedai.net>, <expedua.net>, <wwwexpediar.com> and <wwwexpediacom.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 12, 2006.
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