WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v Dotsan
Case No. D2001-1220
1. The Parties
The Complainant in this administrative proceeding is Expedia, Inc., a Washington corporation, with its principal place of business at Eastgate Way, Ste. 400, Bellevue, WA in the United States of America, represented by Seann W. Hallisky of the Law Offices of Christensen OíConnor Johnson Kindness PLLC. The Respondent is "Dotsan", of 35-37 Sunder Mahal, Mumbai, India.
2. The Domain Name and Registrar
The domain name in issue is <expedeia.com> ("the Domain Name"), the Registrar of which is BulkRegister.com of 7 East redwood Street, Baltimore, MD2 in the United States of America ("Bulkregister.com").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received, on October 8, 2001, an electronic version of the Complaint and on October 11, the Center received a hard copy of the Complaint accompanied by all annexures. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the UDRP"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center.
On October 15, 2001, the Center transmitted to Bulkregister.com by e-mail a request for registrar verification in connection with this case. On October 19, 2001, Bulkregister.com transmitted via e-mail to the Center its Verification Response, confirming that the registrant is "Dotsan", the Respondent herein, and stating that the Administrative Contact is R.S. Potdar, of the same address as the Respondent, the Technical Contact is the same R.S. Potdar and that the UDRP applies to the Domain Name.
On October 22, 2001, the Center formally notified the Respondent by email to the Respondentís registered email address that this administrative proceeding had been commenced, and provided a copy of the Complaint with full information concerning the lodgment of the Complaint and information regarding the provision of a Response, making clear that the final date for lodging that Response was November 11, 2001. October 22, 2001, is the formal date of the commencement of this administrative proceeding.
There is nothing to suggest that the e-mail delivery failed.
The Center also attempted to send notification of the Complaint to the Respondent and to the Administrative and Technical Contacts by courier (with all accompanying exhibits). The courier was unable to deliver the Complaint because the address given in the registration details was incorrect.
No Response has been filed by the Respondent. Notification of Default was sent by e-mail to the parties on November 13, 2001.
On December 10, 2001, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality.
4. Factual Background
(a) The Complainant is the registered proprietor, inter alia, of United States Trademarks Nos.:
2,168,097, in international class 9, in respect of computer software for providing maps, travel route information and recommendations, and travel information guides (registered since June 23, 1998);
2,383,732, in international class 16, in respect of various stationery items in the field of computers, computer networks and global communication networks, computer programs and related topics (registered since September 5, 2000);
2,402,434, in international class 25, in respect of various clothing items (registered since November 7, 2000);
2,220,719, in international class 39, in respect of travel agency services, providing information concerning travel and travel-related topics and other such services, including by means of computer networks and global communication networks (registered since January 26, 1999);
2,240,373, in international class 42, in respect of bulletin board services and chat room services over computer networks and global communication networks, for use by travelers (registered since April 20, 1999);
2,224,559, in international class 42, in respect of travel agency services (registered since February 16, 1999),
in respect of the word "EXPEDIA"; and
2,405,746, in international class 39, in respect of travel agency services, providing information concerning travel and travel-related topics and other such services, including by means of computer networks and global communication networks (registered since November 21, 2000) in respect of "EXPEDIA.COM". ("EXPEDIA" and "EXPDEIA.COM" are herein referred to as "the Trademark").
(b) Several of these registrations, namely 2,168,097 (class 9), 2,402,434 (class 25)2,220,719 (class 39) and 2,240,373 (class 42), are in fact recorded in the name of Microsoft Corporation, but the Complainant alleges that these have been assigned, whilst not providing a copy of this assignment. However, here the Panel notes the website of the United States Patent and Trademark Office indicates that an assignment has been lodged, and the fact that the remaining marks are registered in the name of the Complainant distinguishes this case from that in Autobytel.com Inc v Sand WebNames Decision No. D2001-0076. In the absence of challenge from the Respondent, the Panel accepts that the Complainant has rights in the Trademark.
(c) The Complainant asserts, but provides no information in support of the assertion, that the Trademark is also the subject of numerous pending applications worldwide. This assertion is not contradicted by the Respondent, and is accepted by the Panel.
(d) The Complainant operates a website at <www.expedia.com> which offers travel-industry related information and access to travel agency services.
(e) The Domain Name was registered on July 8, 2001.
(f) The Domain Name is not in use in its own right, but presently points directly to <www.priceline.com>, a website operated by a competitor of the Complainant, priceline.com, Inc., which also offers travel-industry related information and access to travel agency services.
(g) There is no connection whatsoever between priceline.com, Inc. and the Respondent.
(h) Prior to issuing the Complaint, the Complainant attempted to identify and contacted the Respondent, using the details then current on BulkRegisterís registry, by letter dated August 20, 2001, to this address. This letter was returned as undeliverable.
5. Partiesí Contentions
(a) In accordance with paragraph 4(a) of the UDRP, the Complainant asserts, inter alia, as follows:-
(i) that the Domain Name is confusingly similar to the Trademark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain has been registered and is being used in bad faith.
(b) In respect of (i), the Complainant asserts that a consumer seeking travel-related services may reasonably believe that entering the Domain Name will direct the consumer to the website of the Complainant, there to find his or her inquiry satisfied by the competing services of <priceline.com>, Inc. The Complainant also points out that "expedia" is an invented word, and one which clearly has been in use by the Complainant from before the time of registration of the Domain Name.
(c) In support of (ii), the Complainant contends that:
(i) the Domain Name is not being use for any purpose other than to direct inquiries to the Complainantís competitor, and the Complainant asserts the Domain Name has never been used for any other purpose;
(ii) there is nothing in the name or other details of the Respondent to indicate that it is known by or uses "EXPEDEIA" as a trademark or otherwise for any purpose;
(iii) the confusion asserted to occur as a result of the use of the Domain Name by the Respondent tarnishes or devalues the Trademark
and also notes that the Respondent is not licensed or authorized by the Complainant to use the Domain Name.
(d) In support of (iii), the Complainant asserts that bad faith is evidenced by:
(i) registration of the Domain Name in order to prevent the owner of the Trademark from reflecting the Trademark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the UDRP); and
(ii) use of the Domain Name with the intention of attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of the Respondentís website or location or of a product on the Respondentís website or location (paragraph 4(b)(iv) of the UDRP).
As noted above, no Response has been filed.
Onus of proof
(a) The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.
(b) However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the UDRP.
(c) Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see WIPO Decision No. D2000-0007 Alcoholics Anonymous World Services, Inc. v Raymond; WIPO Decision No. D2000-0011 Ronson Plc v Unimetal Sanayi ve Tic A.S. among numerous other decisions.
(d) As to element (i) of paragraph 4(a) of the UDRP, the Panel notes that the determination of confusing similarity is a factual one which must be satisfied by the Panelist making a side-by-side comparison of the Trademark and the Domain Name, taking into account the degree of aural, visual, or similarity between the two, and the inherent or acquired distinctiveness of the Trademark, as well as issues relevant to language; see WIPO Decision No. D2001-0079 Tchibo Frisch-Röst-Kaffee GmbH v Hans Reischl.
(e) This is not a decision made pursuant to the law in relation registered (or unregistered) trademarks of any one country, although the common experience of many courts in many countries in similar situations will of course be a guide; see WIPO Decision No. D2000-1428 Club Méditerranée S.A. v Clubmedical; WIPO Decision No. D2000-1623 News Group Newspapers Ltd and News Network Ltd v Momm Amed Ia. In particular, it is noted that cases such as these may be guided by a recognition of the human frailty of imperfect recollection, particularly in relation to invented words.
(f) The UDRP does not call for proof of actual confusion, let alone deception, although evidence of either or both will of course be very persuasive. There is no such evidence here. Additionally, it is not necessary under element (i) of paragraph 4(a) of the UDRP to determine here whether the reason for this similarity having come about is "typo-squatting" or some other cause, nor whether the similarity is deliberate or not.
(g) Placed side-by-side, the similarity of the Trademark and the Domain Name is self-evident. Whether this is confusing similarity will not be determined by reference to the history of adoption or use of the Complainant and the Respondent, other than to note here the fact that the Complainantís use clearly predates the adoption of the Domain Name by the Respondent. The common experience of mis-typing any entry using a keyboard, especially when trying to type from memory a word which is invented, leads the Panel inexorably to the conclusion that it would be an easy and very likely mistake for users of browser software to type in an incorrect address if seeking <expedia.com>, although it is noted that, if search engines are used, confusion of the same kind is extremely unlikely.
Respondent has no legitimate interests in Domain Name
(h) It is clear from the evidence that the Trademark consists of an invented word "EXPEDIA", the commencement of use of which by the Complainant predates the registration of the Domain Name.
(i) In the absence of any explanation from the Respondent, it is impossible to know how the Respondent happened upon so similar a word, or how it could have any legitimate interest in it.
(j) Telling against the Respondent is the fact that the Domain Name points to a direct competitor of the Complainant, which surely cannot be ascribed to coincidence, but rather indicates that the Respondent knew of the Complainant and chose the Domain Name with that knowledge.
(k) In the circumstances, whilst in this case there is no evidence of any use of the Domain Name "for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark" of the Complainant (in the words of paragraph 4(c)(iii) of the UDRP), on the evidence presented the use being made of the Domain Name by the Respondent could hardly be called "legitimate noncommercial or fair use" of the Domain Name.
Registration and use in bad faith
(l) There is little here upon the basis of which the Panel may conclude that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name, but it is not necessary to make any finding in this regard because there is simply no evidence whatsoever provided by the Complainant that there is a "pattern of such conduct", which is the proviso for a finding under this paragraph 4(b)(ii) of the UDRP.
(m) Similarly, there is absolutely no evidence that the Respondent has "intentionally attempted to attract, for commercial gain, Internet users" to any website in the words of paragraph 4(b)(iv) of the UDRP. The evidence establishes the Respondent has no website of its own addressed by the Domain Name, and that there is no relationship between <priceline.com>, Inc whereby the Respondent might be compensated by drawing Internet users to that competitorís site. I also note the strong suggestion in paragraph 4(b)(iv) that it requires drawing of Internet users to a location controlled by the challenged registrant.
(n) The list of circumstances in paragraph 4(b) of the UDRP is non-exclusive. In this matter, the Panel is satisfied, principally from the facts that:
(i) the Domain Name is pointed to a direct competitor of the Complainant, with the competitorís site so similar that the linking could not be a coincidence;
(ii) the Respondent registered the Domain Name well after the Complainant commenced use;
(iii) the Respondent has recorded or maintained a false address in the registered details recorded by BulkRegister
that the Respondent intended to draw the attention to itself in the most vexing manner possible, with a view to being offered compensation to give up the Domain Name. Such conduct qualifies as "bad faith" within the meaning of paragraph 4(b)(i), but even if the Panel is wrong in such a finding, the conduct of the Respondent would in any event be within the general and accepted meaning of "bad faith"; see WIPO Decision No. D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows; WIPO Decision No. D2000-1428 Club Méditerranée S.A. v Clubmedical; WIPO Decision No. D2000-1342 Time Inc v Chip Cooper.
The Panel therefore concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 6 above, the Panel concludes that:-
- the domain name expedeia.com is confusingly similar to the trademark "EXPEDIA" and its variant "EXPEDIA.COM" of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name; and
- the domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the Domain Name expedeia.com be transferred to the Complainant, Expedia, Inc., in accordance with paragraph 4(i) of the UDRP.
William Peter Knight
Dated: December 18, 2001