World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Matias Luque

Case No. D2012-0921

1. The Parties

The Complainant is Expedia, Inc. of Washington, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is Matias Luque of Córdoba, Argentina.

2. The Domain Name and Registrar

The disputed domain name <expediaturismo.com> is registered with Dattatec.com de Irazoqui Veronica Palmira (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Registrar did not reply to the Center’s registrar verification request, despite the Center’s several attempts to contact the Registrar by email, fax and phone. Therefore, the Center sent a communication to the Registrar on May 25, 2012, copied to ICANN, stating that it would proceed on the assumption that the information gathered from the Complaint and the public WhoIs database was correct.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2012.

The Center appointed Luca Barbero as the sole panelist in this matter on July 17, 2012. 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

The Complainant is an online travel company which operates more than 100 travel booking sites in more than 60 countries around the world, including the online travel brand EXPEDIA.COM, with localized web sites in more than 25 countries, as well as other well-known online travel brands as HOTELS.COM, HOTWIRE, EGENCIA and ELONG.

The Complainant is based in the United States of America but operates, either itself or through its affiliates, retail spaces, call centers, and subsidiaries throughout the world. In particular, the Complainant has a subsidiary in Argentina, Expedia Argentina S.R.L., which operates call centers in many countries, including the Philippines, El Salvador, and Egypt, among others.

The Complainant submitted, amongst others, certificates for the following trademarks: United States Trademark No. 2610290 for EXPEDIA (word), registered on August 20, 2002, in International class 35; United States Trademark No. 2612384 for EXPEDIA (word), registered on August 27, 2002, in International classes 39 and 41; United States Trademark No. 2633295 for EXPEDIA (word), registered on October 8, 2002, in International class 42; United States Trademark No. 3704230 or EXPEDIA (word), registered on November 3, 2009, in International classes 38, 39, 41, 42 and 43; Argentinian Trademark Nos. 2238186 for EXPEDIA (word), filed on November 9, 2007, in class 39; 2238185 for EXPEDIA (word), filed on November 9, 2007, in class 41; 2340696 for EXPEDIA (word), filed on August 28, 2009, in class 9.

The Complainant also provided evidence, inter alia, of ownership of the following trademark registrations:

United States Trademark No. 2405746 for EXPEDIA.COM (word), registered on November 21, 2000, in International class 39;

United States Trademark No. 3919339 for logo, registered on February 15, 2011, in International classes 35, 39, 41, 43 and 45.

United States Trademark No. 3919338 for logo, registered on February 15, 2011, in International classes 35, 39, 41, 43 and 45.

United States Trademark No. 3919340 for logo, registered on February 15, 2011, in International classes 35, 39, 41, 43 and 45.

The Complainant is the owner of the domain name <expedia.com>, which was registered on November 25, 1995, and of many other domain names, including <expedia.com.ar>, <expedia.es>, <expedia.mx> , <expedia.co.uk>, <expedia.co.in>, <expedia.com.au>, <expedia.com.sg>, <expedia.com.hk>.

According to the WhoIs database, the disputed domain name was created on May 15, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been using the trademark EXPEDIA, either standing alone or in combination with other word and/or design elements, for its travel-related services since as early as 1996. For more than 15 years, Complainant or its predecessors-in-interest, themselves or through their authorized licensees, affiliates, or partners, have continuously advertised and offered services and products under the EXPEDIA name and mark.

The Complainant also informs the Panel that it has seen an increasing demand for Argentina as a travel destination, with approximately 80% growth in the number of hotel reservations in Argentina in 2011 as compared with 2010, as indicated in some articles regarding Complainant’s business attached to the Complaint.

The Complainant highlights that it has extensively promoted its EXPEDIA services and web sites throughout the world through online, print, and television advertising campaigns, email communications, and its multiple well-known brand web sites, including EXPEDIA.COM, which received the “Webby Award” in 2006 for the best travel web site.

The Complainant concludes that, in light of the Complainant’s longstanding use and promotion of the EXPEDIA marks, the consuming public and the trade recognize and associate the EXPEDIA marks with the Complainant and such marks have acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality services and products offered by the Complainant, and embody valuable reputation and goodwill belonging exclusively to the Complainant.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s well-known trademark, as it incorporates the EXPEDIA mark in its entirety. The Complainant underlines that the Respondent’s use of the word “turismo” – which translates into English as “tourism” and is descriptive of the Complainant’s services -, suggests to Internet users that the disputed domain name is related to the Complainant and its services.

With reference to rights or legitimate interest in the disputed domain name, the Complainant states that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name since:

i) there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s EXPEDIA marks;

ii) the dispute domain name is not a legitimate name of the Respondent, since the use made by the Respondent of the name “Expedia Turismo” clearly infringes the intellectual property rights of the Complainant and was purportedly chosen due to the notoriety of the EXPEDIA mark and the business and services for which the Complainant uses the EXPEDIA mark;

iii) the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name;

iv) the Respondent provides services competing with the Complainant’s ones, since it offers on the web site corresponding to the disputed domain name travel services such as booking of airline tickets, hotels, and car rentals, and vacation packages; and

iv) in view of the extensive use and recognition of the Complainant’s EXPEDIA marks and of the fact that the Respondent has no rights in them, the Respondent has not registered and is using the disputed domain name not for any legitimate noncommercial or fair use purpose, but rather to profit from intentionally redirecting Internet users away from the Complainant’s legitimate EXPEDIA web sites.

With reference to bad faith requirement, the Complainant states that the Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and reputation associated with the Complainant’s mark. The Complainant underlines that the Respondent was fully aware of Complainant’s rights in its EXPEDIA mark when it registered the disputed domain name since i) the EXPEDIA mark has been used extensively for years and is one of the most recognized and valuable trademarks in the travel booking or travel agency industry; ii) the dispute domain name was acquired by the Respondent well after the Complainant’s EXPEDIA mark became well-known; iii) the services offered at the web site corresponding to the disputed domain name are nearly identical to those offered by the Complainant under its EXPEDIA mark. The Complainant therefore concludes that the Respondent registered or acquired the disputed domain name to capitalize on the hard-earned and valuable goodwill associated with the Complainant’s marks.

As to the use of the disputed domain name, the Complainant contends that the Respondent, by using the disputed domain name to provide the main services offered by the Complainant, has intentionally attempted to attract, for commercial gain, Internet users to the web site published at the disputed domain name, by creating a likelihood of confusion with the Complainant’s EXPEDIA marks as to the source, sponsorship, or endorsement of or affiliation with the Respondent’s web site. Furthermore, the Complainant highlights that the Respondent has not posted any disclaimer on its web site that would clarify to Internet users who are led to the Respondent’s web site that it is not in fact associated with or sponsored or endorsed by the Complainant. The Respondent has, indeed, added figurative elements, such as an airplane logo, to further strengthen an association with the EXPEDIA name and trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “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:

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Preliminary issue: Registrar Conduct

The Panel notes that the concerned Registrar did not respond to the Center’s request aimed at ascertaining whether the registrant’s contact information was correct, at insuring that the disputed domain name registration had been locked and at confirming (or otherwise) the language of the registration agreement and the jurisdiction to which the domain name registrant had submitted in its Registration Agreement.

In similar cases where registrars failed to timely respond to the Center’s requests, such as, amongst others, Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited & Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED,, WIPO Case No. D2008-1675, Automobiles Peugeot v. PrivacyProtect.org / Domain Administrator, Domain Tech Enterprises, WIPO Case No. D2011-1002, Onduline v. Private Registration Do, WIPO Case No. D2011-1129 and Autodesk, Inc. v. Private Registration (EXP), WIPO Case No. D2011-1860, the repeated failure by the concerned registrar to timely respond to the Center verification requests was one of the factors that lead to the panel inviting the Center to bring the registrar’s conduct to the attention of ICANN with a view to ICANN taking such further steps as it considered necessary.

In the present case, as mentioned in the Procedural History, the Center notified the concerned Registrar that it would proceed on the assumption that the information gathered from the Complaint and the public WhoIs database was correct. The Panel notes that such communication was addressed in copy to ICANN and invites the Center to consider drawing to the attention of ICANN also the present Decision, in order for it to be informed of the persisting inaction of the Registrar and take the measures that it may consider appropriate.

B. Identical or Confusingly Similar

The Panel has established rights in the mark EXPEDIA based on several trademark registrations throughout the world, including in Argentina, where the Respondent is based according to the data made available in the public WhoIs database.

The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the word “turismo” (in English, “tourism”) does not exclude the likelihood of confusion between the disputed domain name and the Complainant’s EXPEDIA mark.

It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN); Expedia, Inc. v. European Travel Network, WIPO Case No. D2001-0329 (addition of the word “travel” to the trademark EXPEDIA); and Expedia, Inc. v. Jim West Cruises, WIPO Case No. D2003-0429 (addition of an hyphen and the word "cruise” to the trademark EXPEDIA).

More in particular, the addition of the word “turismo” is apt to increase the likelihood of confusion with the Complainant’s trademark in the context of the travel services.

The Panel concurs with the views expressed, inter alia, in Société Air France v. Michal/EXLET, Tomek/EXLET, WIPO Case No. D2007-0295, finding: “the disputed domain name also incorporates the word “travel” which is related to the main business activity of Complainant, one of the world’s major airline companies. In previous cases involving the use of the AIR FRANCE trademark together with the generic and descriptive terms “flights” and “reservations”, WIPO UDRP panels have already found the existence of confusing similarity. See Société Air France v. Spiral Matrix, supra; Société Air France v. Domain Active Pty Ltd., WIPO Case No. D2004-0993”.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

The Panel also notes that the use of the disputed domain name, confusingly similar to the Complainant’s well-known mark, to promote the Respondent’s offer of services in the same field of the Complainant, does not constitute a bona fide offering of goods or services, or a legitimate, non-commercial or fair use of the disputed domain name. Moreover, as stated, amongst others, in Expedia, Inc. v. Jim West Cruises, supra, “using another party’s trademark without permission to try to drive traffic to one’s site cannot be considered a legitimate interest in the domain name”.

Furthermore, the Panel finds that the Respondent, whose name is Matias Luque, has not shown that he is commonly known by the disputed domain name. The name “Expedia Turismo” used by the Respondent on the web site corresponding to the disputed domain name appears to have been purportedly chosen to profit from the notoriety of the EXPEDIA mark and cannot either be considered legitimate or justify the registration and use of the disputed domain name by the Respondent.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel notes that, in light of the extensive use of the trademark EXPEDIA since 1996 in connection with EXPEDIA travel services and in view of the well-known character of the Complainant’s trademark in the travel booking industry (recognized also by prior UDRP decisions, such as Expedia, Inc. v. Jim West Cruises (supra) and Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716), the Respondent was more likely than not aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

Furthermore, the redirection of the disputed domain name to a web site promoting travel services and the Respondent’s use of a logo which incorporates the EXPEDIA mark are additional elements further indicating that the Respondent was well-aware of the Complainant’s trademark.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868, “[...] it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

Since the Respondent operates in the same field of the Complainant, its registration of the disputed domain name interferes with the Complainant’s business and Internet users are likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435 and Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

With reference to the use of a domain name to generate confusion with competing activities, see e.g. Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested Domain Name for re directing Internet users, i.e., particularly customers and potential customers of the Complainant, from the Complainant’s website to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, NAF Claim No. FA95648 (bad faith where respondent registered the Domain Name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services […] identical to the services offered by the Complainant”).

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used [or allowed the use] of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

7. Decision

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

Luca Barbero
Sole Panelist
Date: July 28, 2012

 

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