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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. Seocho
Case No. D2001-1088
1. The Parties
13810 SE Eastgate Way, Ste. 400
Bellevue, WA 98008
2. The Domain Name and Registrar
Domain Name: <expeadia.com>
3. Procedural History
The Complaint was received by WIPO by email on September 1, 2001, and in hardcopy form on September 4, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <expeadia.com> ("the Domain Name") is registered with it and that Seocho ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On September 11, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was October 1, 2001.
No Response was filed. On October 3, 2001, WIPO issued to the Respondent a Notification of Respondent Default informing the Respondent of the consequences of his default.
On or about October 3, 2001, WIPO received a supplemental filing from the Complainant seeking to expand the Complaint by introducing another domain name held by the Respondent, namely <expecia.com>.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is November 14, 2001.
Before moving on it is convenient here to deal with the Complainant’s supplemental filing. While there is obvious sense in dealing with the two domain names together, the formalities, which have to be undertaken by WIPO in compliance with the Policy and the Rules, have only been undertaken in relation to the Domain Name, not <expecia.com>. Those formalities will have to be undertaken before the Complaint in relation to the Domain Name can proceed further. Given the inevitable trouble and expense that will be caused to the proceeding, the Panel takes the view that <expecia.com> should be dealt with in a separate complaint.
4. Factual Background
The Complainant is a US corporation having its principal place of business in Washington, USA.
The Complainant provides travel-related services via the Internet at the Complainant’s website at <www.expedia.com>.
The Complainant is the registered proprietor of a number of US trademark and service mark registrations for the word EXPEDIA claiming first use in commerce since 1996/7. The registrations cover a variety of goods and services including travel agency and related services.
The Complainant is also the registered proprietor of a US service mark registration for the name <expedia.com> claiming first use in commerce since 1996. The registration is dated November 21, 2000. The registration covers travel agency and related services.
On or about June 3, 2001, the Respondent registered/acquired the Domain Name.
On June 29, 2001, the Complainant’s attorneys wrote to the administrative contact for the Domain Name, a Mr. Vladimir Snezko of Moscow. The letter drew attention to the Complainant’s rights in the marks EXPEDIA and <expedia.com> in relation to travel related services, observed that the URL <www.expeadia.com> was pointing to the website <www.priceline.com>, a competitor of the Complainant, asserted a likelihood of confusion and requested, inter alia, transfer of the Domain Name.
On noticing the link to <priceline.com>, the Complainant’s attorneys contacted <priceline.com> who confirmed that the link was unauthorized and disabled the link.
By the time the Complainant came to lodge the Complaint in this administrative proceeding the Complainant found that the URL <www.expeadia.com> was pointing to the website <www.onetravel.com>, another competitor of the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trademarks EXPEDIA and <expedia.com>, which are among the most famous Internet e-commerce brands. It further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent’s name is SEOCHO, not EXPEADIA. It points out that the only active use, which seems to have been made of the Domain Name has been to use it as part of a URL linking to the travel sites of competitors of the Complainant. It points to the ease with which typing/typing errors can be made by Internet users and the consequential confusion that will inevitably arise when the visitor, intending to reach the complainant’s site reaches a competing travel site linked to the URL <www.expeadia.com>.
The Complainant asserts bad faith pursuant to sub-paragraphs (ii) and (iv) of the Policy. As to (ii) it claims that the registration of the Domain Name was undertaken with the intention of preventing the Complainant from reflecting the mark in a corresponding domain name. As to (iv) the Complainant refers to the redirection of traffic intended for the Complainant and the resultant confusion and loss of business.
The Respondent has not responded
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
How does the Respondent’s failure to respond impact on this administrative proceeding? By virtue of Rule 14(b) the Panel is entitled to draw such inferences as it deems appropriate from the failure to respond.
In the circumstances the Panel sees no reason not to accept the Complainant’s un-contradicted evidence as to the following ‘facts’, namely:-
1. the Domain Name originally connected to a web page of a competitor of the Complainant
2. subsequently the Domain Name connected to a web page of another competitor
3. The Respondent has no connection with the Complainant, whether by licence or otherwise.
4. The names EXPEDIA and <expedia.com> are among the most famous of all Internet e-commerce brands.
Identical or confusingly similar
The Complainant is the proprietor of registered and unregistered trademark/service mark rights in the marks EXPEDIA and <expedia.com>. The Complainant has very considerable goodwill in the business it conducts under and by reference to those marks.
The Domain Name differs from one of the Complainant’s service marks merely in that the former has an additional "a" after the second "e" and the Domain Name differs from the other by, in addition, the presence of the generic dot com suffix. Phonetically, the substantial elements of the Complainant’s marks on the one hand and the Domain Name on the other (EXPEDIA/EXPEADIA) are identical.
When addressing the issue of "confusing similarity", one often has to have regard to the context or potential context of use of the various marks/domain names. Here, the issue is straightforward. The Complainant’s marks are famous brands for Internet related travel services and the only identified use made to date of the Domain Name has been as a link to Internet related travel services.
The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in respect of which the Complainant has rights.
Rights or legitimate interest of the Respondent
The name EXPEDIA is an unusual one. It is peculiarly and exclusively referable to the Complainant. The Respondent has no connection with the Complainant and as is evident from the Domain Name ownership record the Respondent’s name is neither EXPEDIA nor EXPEADIA.
There is no evidence that the Domain Name has ever been connected to any active website which uses the name EXPEADIA. At an early stage it was connected to a site competing with the Complainant and latterly it was connected to another site competing with the Complainant. The Complainant asserts that the Respondent is not associated with either of those competitors and the Panel sees no reason not to accept that assertion.
In the view of the Panel the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which if shown to be present shall constitute evidence of the Respondent’s rights and/or legitimate interests in respect of the Domain Name. The Respondent has put nothing before the Panel and the Panel can think of no reason why the Respondent might reasonably be said to have any rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of bad faith registration and use of a domain name for the purposes of paragraph 4(a)(iii) of the Policy.
The only circumstances claimed by the Complainant to be relevant here are paragraphs 4(b)(ii) and 4(b)(iv). They read as follows:-
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location by using
Neither is particularly apt here. In the case of the former (4(b)(ii)), quite apart from the question of a pattern, the Panel interprets this clause as covering cases where the Domain Name is a name, which the Respondent knows the Complainant would want and the Respondent has deliberately registered it in order to prevent the Complainant from registering it. The Panel does not understand why the Complainant might have wanted to register the Domain Name. There is no evidence before the Panel that the Respondent has been trying to register mis-spellings of its brand names. In the case of the latter (4(b)(iv)), the Respondent’s conduct has to be motivated by a desire for ‘commercial gain’. While it is easy to see the potential damage for the Complainant and the potential commercial gain for the Complainant’s competitors at <www.priceline.com> and <www.onetravel.com>, the Complainant’s case was that neither of those competitors was connected to the Respondent. That being the case, the Panel does not find it easy to see how the Respondent intended to gain commercially.
However, the list of examples of bad faith registration and use set out in paragraph 4(b) of the Policy is a non-exhaustive list and the Panel has no hesitation in finding that the Respondent’s conduct in this case amounts to bad faith registration and use. The factors which have led to the Panel coming to this conclusion are the following:-
a. The Complainant’s marks EXPEDIA and <expedia.com> are very well-known to the Internet community at large
b. There can be no doubt that the Respondent was aware of the Complainant at all material times. The fact that it connected the Domain Name to competitors of the Complainant was no coincidence
c. The Domain Name itself (a deliberate mis-spelling of the Complainant’s name) and its connection to the sites of competitors of the Complainant was, at the very least, calculated to provoke the Complainant
d. In connecting the Domain Name to the sites of competitors, the Respondent must be taken to have desired that Internet users mis-spelling/mis-typing the Complainant’s name would have the opportunity of doing business with the competitors rather than with the Complainant
What the Respondent’s precise purpose may have been is not known. While the Complainant has not made the assertion, the Panel would have guessed that the purpose was as likely as not to attract a high offer from the Complainant for the Domain Name. Whether or not that is right, the Panel is of the view that, whatever else, the Respondent’s objective was to cause damage or disruption to the Complainant in one shape or form. Were it otherwise, the Respondent would not have connected the Domain Name to sites of competitors of the Complainant.
While the Complainant’s conduct does not fall easily within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy, it is the fact that the potential for harm to the Complainant stems from the Respondent’s abusive use of the Complainant’s trade/service marks in devising the Domain Name. The Panel is firmly of the view that this constitutes abusive conduct within the categories of bad faith conduct the Policy was designed to deal with.
Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
In light of the foregoing findings, namely that the Domain Name is confusingly similar to a trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Complaint succeeds.
Pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel directs that the Domain Name <expeadia.com> be transferred to the Complainant.
Dated: November 4, 2001