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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc v. Ammar Bakheet
Case No. D2002-0456
1. The Parties
The Complainant is Expedia, Inc. whose principal place of business is at Bellevue, WA, United States of America.
The Complainant is a corporation incorporated in Washington State, United States of America. The Complainant is represented by Messrs Christensen O'Connor Johnson Kindness of Seattle, Washington, United States of America. The respondent is Ammar Bakheet of Riyadh, Saudi Arabia.
2. The Domain Name and Registrar
The domain name the subject of the complaint is <expediamiddleeast.com>. The registrar is Register.com Inc. of 575 Eighth Avenue, 11th Floor New York, New York 10018, United States of America.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (the Policy) was submitted to the WIPO Arbitration and Mediation Center (the Center) on May 11, 2002. The Center requested Registrar verification on May 15, 2002. On May 28, 2002, Register.com responded confirming that it was the registrar and that the Respondent, Ammar Bakheet, is the current registrant of the domain name <expediamiddleeast.com>.
On May 29, 2002, notification of the Complaint and the commencement of the administrative proceeding was given to the Respondent by e-mail, by fax and by post. The e-mail transmissions were addressed to the Respondent and to the Administrative, Technical and Zone contacts for the disputed domain name, and to Iyad Al-Zaru who was named in the Complaint as a further contact for the Respondent. On May 29, 2002, Iyad Al-Zaru of Rehlat Travel responded, indicating inter alia that he found the e-mail from the WIPO Center "to be intimidating". The Panel has also seen a copy of the fax transmission reports confirming the transmission to Rehlat Travel. On this evidence the Panel finds that the notification of the Complaint to the Respondent was effective.
No further response appears to have been received either from or on behalf of the Respondent.
Notification of the Respondent's default was given by e-mail on June 18, 2002, and appears not to have been responded to. Accordingly an administrative panel consisting of a sole panelist, Mr. Clive Duncan Thorne was appointed on the June 24, 2002, with a decision date of July 8, 2002.
The Panel has filed a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that all necessary fees have been paid by the Complainant. No further submissions have been made to the Panel since its appointment. The language of the proceedings is English.
4. Factual Background
The Complainant Expedia, Inc. offers travel related services under the mark "EXPEDIA". The mark "EXPEDIA" was first registered by the Complainant's predecessor in interest Microsoft Corporation and assigned to the Complainant by Microsoft by a written assignment. Exhibited at Annex F to the Complaint were a number of US registered trade marks for "EXPEDIA" including registration number 2168097 registered on the June 23, 1998, in class 9 for "computer software for providing geographic maps, travel route information and recommendations, and travel information guides". The Complainant also submits that it has numerous pending applications worldwide for the registration of "Expedia" marks and other marks owned by the Complainant.
Additionally, a letter of August 17, 2001, sent by Christensen O'Connor Johnson Kindness to the Respondent stated, on behalf of the Complainant, that "the Complainant is the owner of the trade mark, service marks and trade names "EXPEDIA" and "EXPEDIA.COM" around the world and owns registrations for these marks issued in the USA and numerous other countries around the world. Because of the breadth of the services provided by Expedia in association with its name and mark, the mark Expedia is now an asset that represents substantial goodwill owned by our client."
The Panel finds that the Complainant owns trade mark rights for "EXPEDIA" and also that the Complainant owns substantial goodwill resulting from use of the mark "EXPEDIA". No evidence to the contrary has been given by or on behalf of the Respondent.
The history of the current Complaint is that, having become aware of the Respondent's registration of the domain name in dispute the Complainant arranged for Christensen O'Connor Johnson Kindness to send the letter of August 17, 2001, to the Respondent. The purpose of the letter was stated as being to advise the Respondent that the Complainant would be monitoring his activities and use of the domain name <expediamiddleeast.com> to "ensure that your use of the domain name and your activities associated with that domain name will not be likely to cause confusion as to the source, sponsorship or affiliation of the origin of goods or services sold in associate with that domain name."
The August 17, 2002, letter was responded to by e-mail dated September 7, 2001, from Mr. Iyad Al-Zaru. In that e-mail he indicated:
i. That they (Rehlat Travel) do not have the intention to use the name for any purpose without the written consent of Expedia.
ii. That they will not sell the name to a third party.
iii. They are a leading travel agency in Saudi Arabia and are developing the first dynamic interactive website in Saudi Arabia for travel products.
iv. That the Complainant is on the top of their list of potential partners and they plan to approach the Complainant’s management with a proposal for cooperation.
That e-mail was not responded to by Messrs. Christensen O'Connor Johnson Kindness until a letter of March 8, 2002, in which they indicated the Complainant's objection to the registration and intended use of the domain name and requested an immediate transfer of the domain name to the Complainant. No response appears to have been received to the March 8, 2002, letter.
The Panel however takes into account the e-mail addressed to the Center from Iyad Al-Zaru of May 29, 2002, in response to the Center’s notification of the Complaint, which reads as follows:
"I find the e-mail to be intimidating.
This is an absolute nonsense that we keep being bombarded with long and irrelevant e-mails concerning EXPEDIA domain.
If you have read my e-mails to Expedia concerning this matter, I was just asking the permission to use the name. All I was waiting for is an answer YES or NO. I guess this is simple isn't it.
So why making a big story out of nothing?
Please stop wasting your time and ours. I shall not use the name Expedia without the legal consent of the company. This should have been clear in the first place.
Now please let Expedia stop sending us e-mails and let them do whatever they want legally. Please rest assured that we shall not use it without the consent of Expedia. I hope this is clear and I do not want to hear about this issue anymore.
5. Discussion and Findings
In order to succeed in its Complaint and in accordance with paragraph 4(a) of the Policy the Complainant is required to show that:
i. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name was registered and is being used in bad faith.
The Panel proposes to deal with each of these elements in turn.
i. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Panel has found on the evidence that the Complainant is owner of trade mark rights and goodwill in the mark "EXPEDIA" in the United States.
The Complainant submits that the second level domain name "expediamiddleeast" of the top level domain ".com" is confusingly similar to the Expedia marks in appearance, sound, connotation and commercial impression. The Complainant argues that it has been using the marks "Expedia" and "Expedia.com" on or in connection with its travel related goods and services since at least as early as 1996 and that since its debut Expedia has become one of the most famous internet e-commerce brands. It further submits that because it offers travel related services in connection with the mark "Expedia" a consumer of travel related services from Expedia may reasonably believe that the domain name <expediamiddleeast.com> is sponsored and endorsed by or affiliated with Expedia. It argues that the addition of a common or generic term such as the phrase "middle east" following the mark does not create a new or different mark in which the Respondent has rights and that there is a likelihood of confusion with the Complainant’s mark "Expedia".
The Panel accepts these submissions. The term "middle east" is a common geographic term which connotes no more than that the domain name Expedia is being used in some way in association with the middle east.
There are no submissions to the contrary from the Respondent. The Panel therefore finds that the Respondent’s domain name <expediamiddleeast.com> is confusingly similar to the Complainant’s trade mark "Expedia" in which the Complainant has rights.
ii. The Respondent has no rights or legitimate interests with respect to the domain name <expediamiddleeast.com>
In support of its submission, the Complainant relies upon the fact (which appears to be admitted by the Respondent) that the domain name <expediamiddleeast.com> has been inactive since the time of its registration. The Complainant also relies upon the intention set out in the September 7, 2001, e-mail that the Respondent intends to develop an online travel site. There is no evidence that the Respondent intends to trade in relation to travel agency services online using the mark <expediamiddleeast.com> at least without the written consent of the Complainant. Despite this it is odd that the Respondent chooses to retain <expediamiddleeast.com> or, as put by the Complainant, continue "squatting on the subject domain name".
The Complainant also asserts that the Respondent is not commonly known by the mark "Expedia".
In these circumstances, the Panel is prepared to find that the Respondent has no rights or legitimate interests in respect of the domain name.
iii. The domain name was registered and is being used in bad faith
The Complainant submits that the Respondent's bad faith in registering <expediamiddleeast.com> is evidenced by the fact that the Respondent registered the domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. It submits that the circumstances are governed by paragraph 4(b)(ii) of the Policy which provides that evidence of the registration and use of domain name in bad faith includes evidence that:
"You have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".
The Complainant submits that the registration of the domain name by the Respondent combined with the geographic term "middle east" prevents the Complainant from expressing its mark in a domain name and that therefore this constitutes bad faith.
It also relies upon the fact that Mr. Al-Zaru indicated (in the September 7, 2001, e-mail) that he planned to approach the Complainant's management with a proposal for cooperation. It submits that this can be taken as evidence of "the intent to extort Expedia, Inc. into doing business with the Respondent".
The Panel does not find this latter submission compelling and finds that the Respondent’s conduct falls short of an "intent to extort".
The Panel nevertheless accepts that the Respondent's registration has the effect of preventing the Complainant from reflecting its mark in a corresponding domain name. In addition, the Respondent has (according to the September 7, 2001, e-mail) registered the domain name for the purpose of a planned proposal for a joint venture with the Complainant. The Respondent was therefore fully aware of the Complainant's activities and rights in registering and maintaining the domain name. Taking these circumstances into account and bearing in mind that there is no formal Response filed by the Respondent, the Panel is prepared to accept there is evidence of registration and use in bad faith.
The Panel finds for the Complainant under this head.
The Panel decides that the Complainant has succeeded in its case. Accordingly it orders that the domain name <expediamiddleeast.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: July 8, 2002