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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Dot Liban, Hanna El Hinn

Case No. D2002-0433

 

1. The Parties

The Complainant is Expedia, Inc., a corporation with its principal place of business in Bellevue, Washington, United States of America.

The Respondent is Dot Liban, Hanna El Hinn of P.O. Box 56002, Montreal, Quebec, Canada, H3Z 3G3.

 

2. The Domain Names and Registrar

The domain names which are the subject of this dispute are:

<expedioa.com>
<expediua.com>
<expedoia.com>
<expeduia.com>
<exped8a.com>

The Registrar with which the domain names are registered is eNom, Inc.

 

3. Procedural History

The Complainant initiated the proceeding by filing a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 4, 2002 and in hardcopy on May 6, 2002. The Complainant elected to have the dispute decided by a single-member Administrative Panel.

On May 14, 2002, the Registrar verified that the domain names were registered with it, that the Respondent is the current registrant of the domain names, the Respondent's full contact details and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain names.

On May 16, 2002, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of the Center ("the Supplemental Rules").

On May 16, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with attachments) and facsimile and e-mail (without attachments). The Center advised that a Response was due by June 5, 2002.

A Response was received from the Respondent by the Center, by e-mail on May 20, 2002 and in hardcopy on May 27, 2002.

Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties on June 7, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision Date was June 21, 2002. The Panelist sought an extension in accordance with Paragraph 10(c) of the Rules.

The Panelist's decision is based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is the owner of the trademark EXPEDIA, first registered by its predecessor-in-interest, Microsoft Corporation ("Microsoft"). The Complainant is the owner of the following US trademark registrations:

Trademark

Date of Registration

Class

EXPEDIA

June 23, 1998

Class 9

EXPEDIA

September 5, 2000

Class 16

EXPEDIA

November 7, 2000

Class 25

EXPEDIA

January 26, 1999

Class 39

EXPEDIA

April 20, 1999

Class 42

EXPEDIA

February 16, 1999

Class 42

EXPEDIA.COM

November 21, 2000

Class 39

In addition, the Complainant has numerous pending trademark applications worldwide for registration of the Expedia marks and other marks owned by the Complainant.

The Complainant offers travel-related services in connection with the mark EXPEDIA. The Complainant has been using the marks EXPEDIA and EXPEDIA.COM on or in connection with its travel-related goods and services since 1996. Expedia is a leading travel site on the Internet and conducts business throughout the United States and internationally (see <www.expedia.com>).

According to the WHOIS database maintained by eNom, Inc., the Respondent is the registrant and billing, administrative and technical contact for each of the domain names. The status of the domain names is "active". The domain names were all created on February 26, 2002.

The Complainant's attorneys, by letter sent by e-mail and Federal Express dated April 4, 2002, contacted the Respondent about the domain names in dispute. That letter said in part as follows:

"It has recently come to Expedia's attention that you have registered the Domain Names with eNom, Inc. You have pointed <expedioa.com>, <expediua.com>, <expedoia.com>, and <expeduia.com>to the expedia.com Web site. Further, the domain name <exped8a.com> points to a Web site for the business eStat. Moreover, as the Domain Names contain common typographical errors to the mark EXPEDIA, there is a likelihood of confusion that the Domain Names and any goods and services related thereto are sponsored by, affiliated with or endorsed by Expedia. Consequently, your registration and use of the Domain Names constitutes an act of trademark infringement and unfair competition. Therefore, Expedia must insist that you immediately transfer the registration of the Domain Names to Expedia."

The letter sought undertakings to that effect by April 19, 2002.

The Respondent responded to that letter by e-mail dated April 14, 2002, as follows:

"Further to your E-mail kindly note that the domain name <exped8.com> is now also pointing to your client's Web site <www.excite.com>. The fact that it was pointing to Estat was an error that is now corrected.

All the domain names in question are pointing to your client's Web site and will always be pointing to your client's web site, thus there is no infringement of anyone's trademark, no likelihood of confusion in destination, and no need for transfer."

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the subject domain names are confusingly similar to the Expedia marks in appearance, sound, connotation and commercial impression. In particular, the Complainant asserts that "the addition of the letters 'o' and 'u' and the number '8' to the mark EXPEDIA does not create new or different marks to which the Respondent has rights. The fact that the Respondent has added the letters 'o' and 'u' and the number '8' to the formative mark EXPEDIA to create the Subject Domain Names creates a likelihood of confusion with Complainant's Expedia Marks".

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the subject domain names.

The Complainant contends that the Respondent has neither used nor made any demonstrable preparations to use the subject domain names before notice of the dispute in connection with a bona fide offering of goods and services. In support of this contention, the Complainant contends that the subject domain names have been pointed to the Complainant's <www.expedia.com> Web site since the time of their registration. The Complainant notes that the Respondent is neither licensed nor authorized by the Complainant to use the Expedia marks or to direct the subject domain names to the Complainant's Web site. The Complainant argues that, as the Respondent is squatting on the subject domain names, pursuant to the Policy, the Respondent should be considered as having no rights or legitimate interest with respect to the subject domain names.

The Complainant further contends that the Respondent is not commonly known by the subject domain names. The Complainant contends that the Respondent has merely added the letters "u" and "o" and the number "8" to the mark EXPEDIA to create the subject domain names. The Complainant contends that this is commonly known as "typo-squatting". The Complainant had previously asserted that the Complainant's mark is arbitrary with no meaning except as an identifier of the Complainant's goods and services. As such, the Complainant contends that the subject domain names do not create a separate and distinct trade name or trademark by which the Respondent can be commonly known.

The Complainant also contends that the Respondent is diluting the trademark and service mark rights of the Complainant as the addition of the letters and number referred to "dilutes the distinctive quality of the famous mark EXPEDIA".

Accordingly, the Complainant contends that pursuant to the Policy, the Respondent should be considered as having no rights or legitimate interests with respect to the subject domain names.

Lastly, the Complainant contends that the subject domain names were registered and are being used in bad faith. The Complainant asserts that these registrations have been effected "in order to prevent the Complainant from reflecting its mark in a corresponding domain name". The Complainant relies on Paragraph 4(b)(ii) of the Policy to the effect that bad faith will be made out if the Respondent has 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 the Respondent has engaged in a pattern of such conduct. The Complainant refers to authorities to support the proposition that typo-squatting has been held under the Policy to be evidence of bad faith registration of a domain name.

B. Respondent

The Respondent contends that it registered the domain names in issue in good faith and that, before any notice to the Respondent of the dispute, the Respondent was using the domain names in connection with a bona fide offering of goods or services. In particular, the Respondent contends that before any notice to the Respondent, the Respondent redirected the traffic from the five domain names to the Complainant's Web site thus demonstrating its registration of the domain names in good faith. The Respondent asserts that redirecting those surfers who mistype a certain domain name to their intended destination is a Good Samaritan act recognized and accepted on the Internet. In essence, the Respondent argues that the alleged evidence of bad faith as stated by the Complainant does not apply as the domain names were redirected to the Complainant's Web site by the admission of the Complainant without the surfer realizing that he or she mistyped the domain name such that the owner of the trademark (in this case the Complainant) was not prevented from reflecting its trademark in the five domain names. The Respondent contends that since the Complainant does not provide any valid proof of bad faith registration by the Respondent, the Respondent should keep the five domain names.

The Respondent made no submission in relation to whether the domain names are confusingly similar to the Complainant's trademarks or the Respondent has rights or legitimate interests in respect of the domain names.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to make out three elements.

A. The "domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights".

The domain names in issue are confusingly similar to a trademark or service mark in which the Complainant has rights. The differences between the domain names in issue and the Complainant's EXPEDIA and EXPEDIA.COM trademarks are immaterial (see Yahoo! Inc. Geo Cities v. Data Art Corp WIPO Case No. D2000-0587 (August 10, 2000); America Online, Inc. v. Intellectual-Assets.com, Inc. WIPO Case No. D2000-1043 (December 14, 2000); Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc. WIPO Case No. D2000-1259 (December 1, 2000); AT&T Corp. v. Global Net 2000, Inc. WIPO Case No. D2000-1447 (December 23, 2000); Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol WIPO Case No. D2000-1547 (January 12, 2001) and News Group Newspapers Limited and News Network Limited v. Momm Amed la WIPO Case No. D2000-1623 (January 18, 2001)).

B. The Respondent "has no rights or legitimate interests in respect of the domain name".

If the Panelist finds any of the matters set out in Paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name.

There is no evidence, before any notice to the Respondent of the dispute, of any use of, or demonstrable preparations to use the domain names, or names corresponding to the domain names, in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy. All but one of the domain names was forwarded to the Complainant's site. Any offering of goods or services does not appear to be by the Respondent.

Further, there is no evidence that the Respondent has been commonly known by the domain names, even though it acquired no trademark or service mark rights in terms of Paragraph 4(c)(ii) of the Policy.

Lastly, there is no evidence that the Respondent is making a legitimate non-commercial use of the domain names without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue in terms of Paragraph 4(c)(iii) of the Policy. The domain names have been used for a commercial site.

There is no other evidence suggesting that the Respondent has rights or legitimate interests in respect of the domain names. The domain names have not been independently chosen. They have been registered without the licence or permission of the trademark owner. The fact that they have been used by the Respondent to redirect traffic to the Complainant's site supports the Complainant's contention as to the derivation of the domain names.

C. The "domain name has been registered and is being used in bad faith".

There must be evidence of both registration and use in bad faith.

If the Panelist finds evidence of any of the matters set out in Paragraph 4(b) of the Policy, that shall be evidence of registration and use of the domain names in bad faith.

The matters set out in Paragraph 4(b) are as follows:

(i) Circumstances indicating that the Respondent has registered or has acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. There is no evidence of this ground. The Respondent has declined to transfer the domain names to the Complainant.

(ii) The Respondent has registered the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. The Respondent's conduct has prevented the Complainant from reflecting its EXPEDIA and EXPEDIA.COM trademarks in corresponding domain names, albeit typographical variations of its trademarks. The multiple domain name registrations in issue here could constitute evidence of a "pattern" of such conduct. The Respondent, however, contends that it has not registered the domain names for this reason but to ensure that the Complainant's Internet traffic reaches its intended destination, namely, the Complainant's site. As such, the Respondent's conduct may have had this effect but not the intended purpose.

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. There is no evidence that the Respondent and the Complainant are competitors.

(iv) By using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's Web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's Web site or location, or of a product or service of the Respondent's Web site or location. Typo-squatting is ordinarily engaged in, by a respondent who seeks to redirect users who mistype a complainant's domain name, to a competing Web site of the respondent or a third party for personal gain. Such conduct has been found to constitute bad faith. There is no evidence of such gain here.

The matters set out in Paragraph 4(b) of the Policy are not exhaustive. They are illustrative examples of bad faith. This is not a case where the respondent has taken no active steps to use its domain name and bad faith can be inferred (see Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 18, 2000)). The Respondent claims that its conduct is the act of a Good Samaritan to ensure surfers reach their intended destination. The Panelist is not aware of any previous consideration of typo-squatting for "good Samaritan" reasons. The Panelist, however, notes the following:

- The Complainant's marks are well known. They have been the subject of other administrative proceedings involving other respondents and different facts:

Expedia, Inc. v. European Travel Network WIPO Case No. D2000-0137 (April 18, 2000)
Expedia, Inc. v. European Travel Network WIPO Case No. D2001-0329 (May 13, 2001)
Expedia, Inc. v. Seocho WIPO Case No. D2001-1088 (November 4, 2001)
Expedia, Inc. v. Dotsan WIPO Case No. D2001-1220 (December 18, 2001)
Expedia, Inc. v. hotels4cheap and Yosef Swird WIPO Case No. D2001-1221 (February 20, 2002)
Expedia, Inc. v. Venta, Leonard Bogucki WIPO Case No. D2001-1222 (December 19, 2001)
Expedia, Inc. v. Miles Pennella WIPO Case No. D2001-1416 (March 14, 2002)

- The Respondent has no connection with the Complainant.

- The Respondent does not contest that the domain names are mistyped versions of the Complainant's marks or that they were registered with knowledge of the Complainant's rights in those marks.

- The Respondent contends that its only purpose in registering the names is to re-direct traffic intended for the Complainant's site to that site. The Respondent, however, has not sought the Complainant's permission to do so or addressed whether the Complainant would wish such Internet traffic to be re-directed where its domain name is mistyped. Interestingly, the Respondent misdirected one of the names to the wrong site previously, suggesting why a complainant would want to control this activity.

- The Respondent seems to concede that it has no intention of using the domain names in connection with the bona fide offering of goods or services of the Respondent or a third party and, indeed, any such use would clearly be in bad faith given the Complainant's rights.

- The Respondent has declined a request by the Complainant to transfer the names in which the Complainant has rights. As any use of the names except to refer to the Complainant's site would cause confusion, the absence of an explanation for this blanket refusal is ultimately telling against the Respondent and its motives in effecting and maintaining registration.

In these circumstances, the Complainant has made out the burden of showing that the domain names have been registered and are being used in bad faith.

 

7. Decision

The Panelist finds that the domain names are confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names and that the domain names have been registered and are being used in bad faith in accordance with Paragraph 4(a) of the Policy. In accordance with that finding, the Panelist orders that the domain names be transferred to the Complainant

 


 

Mary Padbury
Sole Panelist

Dated: July 3, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0433.html

 

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