WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. European Travel Network

Case No. D2001-0329

 

1. The Parties

The Complainant is Expedia, Inc., a corporation organized and existing under the laws of the State of Washington, United States of America, having its principal place of business at Bellevue, Washington, United States of America. The Respondent is European Travel Network, an entity of unknown characteristics with an address in Miami, Florida, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is: <expediatravel.org>, which domain name is registered with Network Solutions Inc. ("NSI"), a registrar based in the State of Virginia, United States of America.

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 7, 2001, in electronic form. The hard copy of the Complaint was received by the WIPO Center on March 9, 2001. The WIPO Center acknowledged receipt of the Complaint on March 7, 2001.

On March 13, 2001, a Request for Registrar Verification was transmitted to NSI. NSI replied on March 14, 2001.

A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center Case Administrator and completed on March 16, 2001. The Panelist has independently reviewed the Requirements and agrees with the assessment of the WIPO Center Case Administrator that the Complainant is in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid by the Complainant on time and in the required amount.

No formal deficiencies having been recorded, on March 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 4, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís Whois confirmation, by post/courier to the indicated postal address and by facsimile to the indicated facsimile number. Having reviewed the communications records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."

On April 11, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default using the same contact details and methods as were used for the Commencement Notification.

On April 21, 2001, the WIPO Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2001-0329 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horningís Statement of Acceptance and Declaration of Impartiality and Independence was received on April 23, 2001. On April 30, 2001, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The Projected Decision Date was May 14, 2001.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules and without the benefit of any Response from Respondent.

 

4. Factual Background

Complainant is the owner of record of various U.S. trademarks, which it has used in connection with the operation of an on-line travel service business since June, 1993. The Complainant has provided evidence of the registration of the following marks, which have been adopted and used in this regard:

Registered Marks:

A.

EXPEDIA

Registration Number:

Goods & Services:



Date Registered:

US PTO 2,168,097

Computer software for providing geographic maps, travel route information and recommendations and travel information guides, in International Class 9.

6/23/98

B.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,220,719

Travel agency services, in International Class 39.

January 26, 1999

C.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,224,559

Travel agency services, in International Class 42.

February 16, 1999

D.

EXPEDIA

Registration Number:

Goods & Services:



Date Registered:

US PTO 2,240,373

Providing bulletin board services and chat room services over computer networks and global communication networks for use by travelers, in International Class 42.

April 20, 1999

E.

EXPEDIA.COM

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,405,746

Travel agency services, in International Class 39.

November 21, 2000

Each of the above registered marks except Expedia.com was registered by Microsoft and transferred by assignment to Complainant (Complaint, Annexes D and E).

Pending Marks:

A.

EXPEDIA TRAVELS

Registration Number:

Goods & Services:


Date Filed:

Serial No. 78/013400

Publications, namely books, newsletters, magazines, in the fields of travel.

June 19, 2000

B.

EXPEDIA.COM TRAVEL CLUB

Registration Number:

Goods & Services:

Date Filed:

Serial No. 75/955081

Restaurant services.

March 6, 2000

Complaint, Annex E.

The Respondent registered the domain name <expediatravel.org> on March 31, 1999 (Complaint, Annex A). At the time of the submission of the dispute to the Panelist the "expediatravel.org" website registered by Respondent resolved to a site containing an "Under Construction" legend and a statement indicating that the domain had been registered with NSI.

Respondentís regular line of business, discount travel services, is operated at the <etn.nl> domain.

The Complainant wrote to Respondent by letter dated December 14, 2000, advising Respondent that, in its view, Respondentís registration was an attempt to trade on Complainantís good will (Complaint, Annex C). There is no record of a response.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall 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."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical (Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679) or confusingly similar (Marriott International, Inc. v. John Marriot, NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219) to Complainantís marks.

Complainant has alleged and Respondent has failed to deny that it has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011. Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. The Panelist finds that Respondent has no rights or legitimate interest in the domain name.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(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; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 Complainantís 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.

Complainant has alleged and the Panelist finds that Respondentís use of the domain name at issue, to resolve to a website which is stated to be "Under Construction," constitutes bad faith registration and use under the Policy under the circumstances of this particular dispute.

Respondentís ownership and use of the subject domain name to link to an "Under Construction" site containing an advertisement for Network Solutions, Inc. has the potential of confusing Complainantís customers and prospective customers.

Respondentís registration of the domain name also prevents Expedia from reflecting the mark in a corresponding domain name, thus preventing Complainant from making full commercial use of its trademarks.

There is also proof in the record that Respondent has engaged in a pattern of registering domain names reflecting the trademarks of travel-related businesses. In addition to <expediatravel.org>, Respondent also registered <xpediatravel.com>. This domain name was transferred to Complainant in decision D2000-0137. Respondent has also registered domain names which reflected trademarks owned by commercial airlines, resulting in five decisions transferring a total of nine domain names to the rightful owners of the trademark expressed in the domain name.

Domain Name

Trademark Owner

Case No.

Result

klm.org

Royal Dutch Airlines, known internationally as KLM

D2000-0963

Name Transferred

martinair.org
martinair.net

Martinair Holland

D2000-0964

Names Transferred

transavia.org
transavia.net

Transavia Airlines

D2000-0965

Names Transferred

xpediatravel.com

Expedia

D2000-0137

Name Transferred

singaporeairlines.org
singaporeair.net
singaporeair.org

Singapore Airlines
Limited

D2000-0641

Names Transferred

 

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires that the registration of the domain name <expediatravel.org> be transferred to the Complainant.

 


 

Richard Allan Horning
Sole Panelist

Dated: May 13, 2001