WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia Inc. v. Polanski
Case No. D2001-1087
1. The Parties
The Complainant is Expedia, Inc., a corporation whose principal place of business is at 13810 SE Eastgate Way, Suite 400, Bellwevue, Washington 98008, USA.
The Respondent is "Polanski" of Ul. Dietla 13/2, Krakow, Poland 31-031.This is apparently a trade name, the Administrative and Technical Contact being Mr. Victor Lashenko, Register Help Co. Ul. Shevchenko 26, Kiev, UA 21100, Ukraine.
2. The Domain Name and Registrar
<expdia.com>, registered with BulkRegister.com, Inc. of 7 East Redwood Street, Baltimore, MD21202, USA.
3. Procedural History
(1) The Complaint in Case D2001-1087 was filed in hardcopy on September 4, 2001, and by e-mail on September 1, 2001. It was notified to the Respondent on September 11, 2001, by Courier to its address and separately by Courier to the Technical and Administrative Contact at the address given above. In each instance the Courier returned the Complaint notification to the WIPO Arbitration and Mediation Center.
(2) The WIPO Arbitration and Mediation Center has stated that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (UDNDRP);
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a), using the procedures referred to above;
- a Response to the Complaint was not filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The date scheduled for issuance of a decision is November 13, 2001.
(5) No extensions have been granted or orders issued in advance of this decision.
(6) The language of the proceedings is English.
4. Factual Background
(1) The Complainant offers travel-related services and associated goods. The marks, "Expedia" and "Expedia.com" have been used for this business since 1996, first by Microsoft Corp. and then, as successor-in-title, by the present Complainant.
(2) The Complainant is the proprietor of US trademark registrations for "Expedia" from various dates between June 23, 1998, and July 11, 2000, in respect of goods and services in Classes 9, 16, 25, 3and 42. From November 21, 2000, it is also registered in the US "Expedia.com" in respect of services in Class 39 (see Complaint, Annex F). It is in the process of applying for similar registrations in other countries.
(3) The domain name at issue was registered on September 27, 2000, in the name of "polanski",
5. Parties’ Contentions
The Complainant asserts the following:
(1) Since its debut, Expedia has become among the most famous Internet e-commerce brands. Its marks are accordingly very strong and are entitled to a broad scope of protection.
(2) The domain name <expdia.com> is confusingly similar to "Expedia", leading consumers to believe that the links which it has been used to make to competing e-commerce sites are authorised by the Complainant when they are not. The domain name was first used to direct users to <www.priceline.com>, a direct competitor of the Complainant. When this was drawn to Priceline's attention by the Complainant, the former took steps towards terminating that flow of traffic. The Respondent then used the equivalent technique to direct traffic to another competitor of the Complainant, <onetravel.com>, an activity which, so far as the Complainant can tell, was not authorised by that competitor.
(3) In consequence, before notice of the dispute, the Respondent had neither used nor made preparations to use the domain name at issue in pursuit of a right or legitimate interest;
(4) The Respondent's conduct tarnished the Complainant's trade and service marks; and
(5) The Respondent registered and used the domain name in bad faith, either by preventing the Complainant from reflecting its mark in a corresponding domain name as part of a pattern of such conduct; or by using the domain name to attract, for commercial gain, Internet users to its website and thence to competing businesses by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement.
The Respondent, although duly notified of this dispute, has not submitted a response.
6. Grounds for Decision
Under the UDNDRP, no complaint can succeed unless there is an applicable dispute in accordance with the three-fold test specified in Paragraph 4(a) and the Complainant satisfies the panel on all three grounds. The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the complainant has rights.
Given the summary nature of the Dispute Resolution procedure, there must be clear evidence that this is so. While the Complainant has not produced direct evidence of its business popularity, this is apparent from its correspondence with Priceline (Annex D) and is also suggested by the range of its US trademarks.
The Complainant's mark is not identical with the Respondent's domain name, since the essential word in the latter omits the second 'e'. But it remains highly likely that users of the Internet will mistake the latter for the former. The Complainant's mark carries attractive overtones for a travel business, being close both to 'expedition' and to 'expedient'. The Respondent's omission of the second 'e' makes the name slightly less memorable, but the variation is not enough to dispel the likelihood of confusion. Since the Complainant's business is on the Internet, it must be assumed that it has itself been using its address, <expedia.com>, as an address throughout its operation. Its acquisition of this expression as a registered mark, though it occurred after registration of the domain name in issue, confirms its earlier use. The chance of mistaking the same name without the second 'e' is in these circumstances particularly strong. Accordingly I find that a sufficient case has been made out by the Complainant on the first ground.
The evidence concerning the Respondent's linking activities is germane to both the second and third requirements for establishing a complaint under the UDNDRP, viz. the absence of any right or legitimate interest in holding the domain name, and bad faith in registering and using it. The Respondent has offered no explanation of his conduct and the assertions about it by the Complainant stand unchallenged. An innocent searcher for the Complainant's site may use the domain name in issue and thereby be linked to a site, which offers competing services and products. It is difficult to understand what right or legitimate interest in the domain name the Respondent could possibly have. Likewise, the Respondent must be taken to have acted in bad faith in obtaining and using the domain name in suit.
For these reasons, the Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4, that the domain name <expdia.com> should be transferred forthwith to the Complainant.
William R. Cornish
Dated: November 13, 2001