Expedia, Inc. v. Fookin Ventures c/o Gerhardt Schlumpf
Claim Number: FA0607000744567
Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Fookin Ventures c/o Gerhardt Schlumpf (“Respondent”), 11 Schreberstrasse, Berlin, GA 14167 DE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwexpeida.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 July 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 10, 2006.
On July 7, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwexpeida.com> domain name is 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 July 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 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@wwwexpeida.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2006, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwexpeida.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.
2. Respondent does not have any rights or legitimate interests in the <wwwexpeida.com> domain name.
3. Respondent registered and used the <wwwexpeida.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Expedia, Inc., has utilized the EXPEDIA mark in connection with its offering of a wide variety of goods and services, specifically travel agency services, since 1996. Complainant offers its Internet travel services through its website, located at the <expedia.com> domain name. Complainant holds valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark, and also holds numerous Community Trademark registrations throughout the European Union. Complainant first registered its EXPEDIA mark with the USPTO on January 26, 1999 (Reg. No. 2,220,719).
Respondent, Fookin Ventures c/o Gerhardt Schlumpf, registered the <wwwexpeida.com> domain name on January 13, 2003. Respondent was previously enrolled in an affiliate marketing program offered by Complainant, but Respondent’s participation in the program has since been terminated. Respondent is no longer affiliated or related to Complainant in any way, and is not licensed by Complainant or otherwise authorized to use Complainant’s EXPEDIA mark. Respondent’s disputed domain name resolves to a website featuring a search engine, as well as links to Complainant’s website and to several third-party websites that offer travel agency services in 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 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 asserts and provides evidence of valid trademark registrations for the EXPEDIA mark with the USPTO and throughout the European Union. The Panel finds that Complainant’s registration of the EXPEDIA mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
The Panel also finds that Respondent’s <wwwexpeida.com> domain name is confusingly similar to Complainant’s EXPEDIA mark under Policy ¶ 4(a)(i). Respondent’s <wwwexpeida.com> domain name consists of a misspelling Complainant’s mark, with the transposition of the letters “i” and “d” of Complainant’s mark, and the addition of the letters “www” and the generic top-level domain (“gTLD”) “.com.” Prior panels have found that the transposition of the letters of a complainant’s mark does not negate the creation of confusing similarity between the domain name and the complainant’s mark. In Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) the panel found that the domain name <peir1.com> was confusingly similar to the complainant's PIER 1 mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Moreover, panels have previously held that the addition of the letters “www” and a gTLD do not sufficiently distinguish a domain name from a mark. In Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002), the panel held that the respondent's <wwwdana.com> domain name was confusingly similar to the complainant's registered DANA mark because the complainant's mark remained the dominant feature. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also 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). Therefore, the Panel in the present case finds that Respondent’s <wwwexpeida.com> domain name is confusingly similar to Complainant’s EXPEDIA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests with respect to the disputed domain name. Nevertheless, once Complainant establishes a prima facie case, the burden of proof shifts to Respondent, and Respondent must demonstrate that it has rights or legitimate interests in connection with the disputed domain name under 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 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).”). The Panel finds that Complainant has established a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record fails to indicate that Respondent is commonly known by the <wwwexpeida.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant avers that Respondent is no longer affiliated with Complainant, and is not authorized by Complainant to use the EXPEDIA mark or to register domain names incorporating Complainant’s mark. The evidence also fails to suggest that Respondent has maintained any form of association with Complainant. Additionally, Respondent’s WHOIS information does not suggest that Respondent is known by the <wwwexpeida.com> domain name, as the WHOIS information indicates Respondent is known as “Fookin Ventures” or “Gerhardt Schlumpf.” Therefore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the <wwwexpeida.com> domain name pursuant to Policy ¶ 4(c)(ii). 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); 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).
Furthermore, the Panel finds that Respondent is using the <wwwexpeida.com> domain name to operate a website featuring a search engine, as well as links to both Complainant’s website and third-party websites that directly compete with Complainant’s Internet travel agency services business. Consequently, the Panel finds that Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Additionally, the Panel finds that Respondent is utilizing the <wwwexpeida.com> domain name to divert Internet users to Respondent’s website by taking advantage of common typing errors. Thus, the Panel finds that Respondent is engaged in typosquatting, and that such activity serves as further evidence of Respondent’s lack of rights or legitimate interests in the <wwwexpeida.com> domain name pursuant to Policy ¶ 4(a)(ii). See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s <wwwexpeida.com> domain name resolves to a website featuring links to Complainant’s website, as well as links to third-party websites offering Internet travel agency services in direct competition with Complainant’s business. As a result, the Panel finds that Respondent is taking advantage of the likelihood of confusion between Respondent’s <wwwexpeida.com> domain name and Complainant’s EXPEDIA mark and attempting to capitalize on the goodwill established by Complainant in the mark. Therefore, the Panel finds that such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel also finds that Respondent has engaged in typosquatting, registering and using the disputed domain name with the intent of diverting Internet users who commit a common typing error to Respondent’s website. Therefore, the Panel finds that Respondent’s typosquatting activity suggests bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc'ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum Jul. 15, 2005) (finding that the respondent's registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant's web site, given the fact that Complainant's website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad faith.”).
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 <wwwexpeida.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 18, 2006
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