WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Alvaro Collazo

Case No. D2003-0716

 

1. The Parties

The Complainant is Expedia, Inc., Bellevue, Washington, United States of America, represented by Seann W. Hallisky, Christensen OíConnor Johnson Kindness, PLLC, of United States of America.

The Respondent is Alvaro Collazo, Colonia, Oriental Republic of Uruguay.

 

2. The Domain Name and Registrar

The disputed domain name <expediua.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2003 (electronic version), and September 15, 2003 (hardcopy). On September 12, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On September 15, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 9, 2003.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on October 15, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant offers travel-related services in connection with the trademarks "EXPEDIA."

Complainant is the owner of the following trademark registrations:

TRADEMARK

REG. No.

Class

(Intíl)

DATE OF REGISTRATION

COUNTRY

EXPEDIA

2,168,097

09

June 23, 1998

USA

EXPEDIA

2,383,732

16

September 5, 2000

USA

EXPEDIA

2,402,434

25

November 7, 2000

USA

EXPEDIA

2,220,719

39

January 26, 1999

USA

EXPEDIA

2,240,373

42

April 20, 1999

USA

EXPEDIA

2,224,559

42

February 16, 1999

USA

EXPEDIA.COM

2,405,746

39

November 21, 2000

USA

Respondent registered the domain name <expediua.com> on May 17, 2003.

 

5. Partiesí Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant asserts that:

- It is the owner of the trademarks "EXPEDIA," first registered by its predecessor-in-interest Microsoft Corporation, which have been validly assigned to Complainant. That it has numerous pending applications worldwide for the registration of the trademarks "EXPEDIA" and other marks.

- The second level domain name "expediua" of the top level domain ".com" is confusingly similar to the trademarks "EXPEDIA" in appearance, sound, connotation and commercial impression.

- 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. That since its debut, "EXPEDIA" has become among the most famous Internet e-commerce brands.

- The "EXPEDIA" mark is an arbitrary term that has no meaning except as an identifier of Complainantís goods and services, which makes the said mark very strong and entitled to a broad scope of protection.

- A consumer of travel-related services from Expedia may reasonably believe that the domain name <expediua.com> is sponsored by, endorsed by or affiliated with Complainant.

- The addition of the letter "u" to the trademark "EXPEDIA" is likely to cause consumer confusion with Complainant and the said trademark, and cites U.S. trademark law (In re Corning Glass Works, 229 U.S.P.Q. 65 (TTAB 1985); In re Phillips - Van Heusen Corp., 228 U.S.P.Q. 949 (TTAB 1986)) to support its argument that, "if the dominant portion of both marks is the same, then confusion is likely notwithstanding peripheral differences."

- The addition of a "u" to the trademark "EXPEDIA" does not create a new or different mark in which the Respondent has rights.

- The fact that Respondent has added the letter "u" to the formative mark EXPEDIA to create the second-level domain name "expediua" creates a likelihood of confusion with Complainantís mark "EXPEDIA."

A.2 Respondentís lack of rights or legitimate interests in respect of the domain name

Complainant argues that:

- Respondent has no rights or legitimate interests to the contested domain name.

- The domain name <expediua.com> points to a series of pop-up advertisements for various goods and services, as well as a portal Web site.

- Respondent has not made a legitimate use of, nor has it made demonstrable preparations to legitimately use the subject domain name in connection with a bona fide offering of goods and services.

- Upon information and belief, Respondent is not commonly known by the domain name <expediua.com>, and has not acquired trademark or service mark rights in the said domain name.

- Since the contested domain name consists of Complainantís mark "EXPEDIA" with the addition of the letter "u," said domain name does not create a separate and distinct trade name or trademark by which the Respondent can be commonly known.

- Respondent is, upon information and belief, an individual and is not commonly known by the subject domain name.

- Respondentís ownership of the disputed domain name dilutes Complainantís trademarks "EXPEDIA"; Respondentís addition of the letter "u" to the trademark "EXPEDIA" dilutes the distinctive quality of the said mark.

- Respondent is neither licensed nor authorized by Complainant to use Complainantís name or marks.

A.3 Bad faith registration and use

Complainant states that:

- The disputed domain name contains a common typographical error of Complainantís trademark "EXPEDIA" (the word "EXPEDIA," plus a letter "u") .

- Typo-squatting has been held under the Policy to be evidence of bad faith registration of a domain name (and cites News Group Newspapers Limited and News Network Limited v. Momm Amed Fa, WIPO Case No. D2000-1623, (January 18, 2001); America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043, (December 14, 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); Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, (January 19, 2001); Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428, (January 25, 2001); Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, (August 10, 2000); AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447, (December 23, 2000)).

- Complainantís rights in its trademark "EXPEDIA" would extend to any confusingly similar mark, such as the contested domain name.

- Respondentís registration of a common typographical error of Complainantís mark prevents Complainant from expressing its mark in a domain name.

- Respondent publishes a portal Web site, which advertises, among other things, travel-related goods and services, all of which are of Complainantís competitors, and that therefore, the use of the disputed domain name in this manner trades upon the goodwill of Complainant by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Web site or location, as well as directing users who may have intended to find "www.expedia.com" but mistyped "expedia" as "expediua" and found Respondentís portal site and links to travel-related Web sites that are Expediaís competitors.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith."

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As the Respondent has failed to submit a response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487, (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).

A. Identical or Confusingly Similar

Complainant has submitted sufficient evidence to prove that it holds exclusive rights to the trademarks "EXPEDIA" and "EXPEDIA.COM."

Complainantís trademark "EXPEDIA" is an arbitrary word. The word "EXPEDIA" does not exist in the English Language (spoken in the US, where Complainant comes from), or Spanish Language (Spoken in Uruguay, where Respondent allegedly lives). This fact, added to the presence, publicity and recognition that Complainantís trademarks have had in the Internet realm during the past years, makes said trademarks solid and distinctive. Respondentís addition of a letter "u" to Complainantís trademark "EXPEDIA" creates a term that is confusingly similar to such mark. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441, (July 13, 2000), in that "[t]he trademark REUTERS is not descriptive of anything, and is thus highly distinctive of the Complainantís business. The domain name which differs by only one letter from a trade mark has a greater tendency to be confusingly similar to the trade mark where the trade mark is highly distinctive. In the absence of any argument to the contrary from the Respondent, this administrative panel concludes that on balance, domain names (2)-(4) are confusingly similar to the Complainantís trade mark."

To carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) ".com," because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000) (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, (June 13, 2000); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, (March 23, 2000)).

In any event, Complainant is also the owner of a trademark registration for "EXPEDIA.COM."

The disputed domain name <expediua.com> is confusingly similar to Complainantís trademarks "EXPEDIA" and "EXPEDIA.COM," visually and phonetically. The addition of the letter "u" to the disputed domain name adds no distinctiveness to such domain name, as compared to the said trademarks.

Paraphrasing AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447, (December 23, 2000), this Panel finds that but for the addition of a letter "u," the subject domain name would be identical to Complainantís trademarks "EXPEDIA." It clearly is similar. It is also confusing.

Following VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446, (January 31, 2001), this Panel believes that "Respondent appears to have employed minor misspellings of Complainantís mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainantís Internet address from the web browser," i.e., that Respondentís conduct falls within the definition of Ė "typosquatting," which consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

According to Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, (August 10, 2000), "Ďtyposquatting,í is a practice that has been condemned and been found to be confusingly similar to the marks which they mimic."

In light of the above, the Panel finds that the domain name <expediua.com> is confusingly similar to the trademarks "EXPEDIA" and "EXPEDIA.COM" in which Complainant has rights. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, Paragraph 4c).

Respondent has not submitted any evidence showing any rights or legitimate interests in the disputed domain name. Complainant has denied having granted any license or authorization to Respondent, to use Complainantís marks "EXPEDIA" and "EXPEDIA.COM."

According to Complainant, the domain name <expediua.com> resolves to a series of pop-up advertisements for various goods and services, as well as a portal Web site; Complainant has also argued that Respondent offers travel-related goods and services, all of which are of Complainantís competitors.

Offering various goods and services, including those that are travel-related, at a site to which a domain name called <expediua.com> resolves, which is confusingly similar to the name and trademark of a well-publicized Internet travel company, and doing so by implementing a typosquatting practice, cannot constitute a bona fide conduct.

Complainant has stated that upon information and belief, Respondent is not commonly known by the domain name <expediua.com>, and has not acquired trademark or service mark rights in the said domain name. Respondent has not contested this argument.

Respondent is not making a legitimate noncommercial use of the disputed domain name. Respondent has engaged in a typosquatting practice to divert, for commercial gain, consumers looking for Complainantís travel services on the Internet. Consumers are diverted to a site where they are offered various goods and services, including those that are travel-related.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(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 proved that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom (see Point 6A supra). Respondent has submitted no justification for registering a domain name that is almost identical to Complainantís well-publicized trademarks "EXPEDIA" and "EXPEDIA.COM," but for the addition of a letter "u," which in a normal keyboard of the types that are used in the US or Uruguay is immediately adjacent the letter "i" from "EXPEDIA." Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (see News Group Newspapers Limited and News Network Limited v. Momm Amed Fa, WIPO Case No. D2000-1623, (January 18, 2001); America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043, (December 14, 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); Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594, (January 19, 2001); Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428, (January 25, 2001); Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, (August 10, 2000); AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447, (December 23, 2000)).

Respondent is trading on the goodwill of the Complainant and free-riding on the recognition that Complainantís trademarks enjoy among Complainantís customers of travel-related goods and services on the Internet. Respondent has intentionally attempted to attract, and indeed has attracted for commercial gain, Internet users to his pop-up advertisements for various goods and services, as well as his portal Web site where Respondent offers travel-related goods and services, all of which are of Complainantís competitors. Respondent has been able to achieve so, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service on Respondentís website or location, by taking advantage of a misspelling or typing error of Internet users who were looking for <expedia.com>, but mistakenly typed <expediua.com> (Paragraph 4(b)(iv) of the Policy).

In this sense, even if the user who arrives at Respondentís Web site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the [trade and] service mark to attract the user with a view to commercial gain. (Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, citing in turn National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118, (April 17, 2000)).

Complainant has thus established that the disputed domain name <expediua.com> has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <expediua.com> be transferred to Complainant.

 


 

Kiyoshi I. Tsuru
Sole Panelist

Dated: October 30, 2003