WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia Inc. and Hotels.com L.P. v. Arabia Horizons Tours LLC
Case No. DAE2014-0005
1. The Parties
The Complainants are Expedia Inc. of Bellevue, Washington, United States of America ("US") and Hotels.com L.P. of Dallas, Texas, US, represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is Arabia Horizons Tours LLC, of United Arab Emirates ("UAE"), internally-represented.
2. The Domain Names and Registry
The disputed domain names <expedia.co.ae> and <hotels.co.ae> are registered with AE Domain Administration (".aeDA").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2014. On September 17, 2014, the Center transmitted by email to .aeDA a request for registry verification in connection with the disputed domain names. On September 22, 2014, .aeDA transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
On September 22, 2014 the Center issued a Complaint Deficiency Notification to the Complainants indicating a formal deficiency with the Complaint. On September 23, 2014, the Complainants filed an Amended Complaint.
The Center verified that the Complaint, together with the Amended Complaint, satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for - UAE DRP approved by .aeDA (the "Policy"), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (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 proceeding commenced on September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. The Respondent filed its Response on October 12, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 22, 2014. 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 First Complainant, Expedia Inc., is one of the largest online travel companies in the world, holding an extensive brand portfolio featuring, inter alia,EXPEDIA and EXPEDIA.COM, the world's largest full service online travel agency operating localized websites in more than 30 countries. Its website at "www.expedia.com" was named the World's Leading Online Travel Agency Website at the 2013 World Travel Awards. The First Complainant operates over 150 travel booking sites in more than 70 countries across a portfolio of well-known travel brands including HOTELS.COM. Around 60 million unique visitors per month visit the First Complainant's various websites to research, plan and book travel. The First Complainant's website at "www.expedia.com" received more than 23 million visits during August 2014.
The First Complainant's EXPEDIA brand, used on a variety of websites including "www.expedia.com", serves both business and leisure travelers, providing them with airline tickets, lodging, car rentals, cruises and destination services. The First Complainant has a subsidiary in the UAE, where the Respondent is based. The First Complainant has been using the EXPEDIA mark in commerce since 1996.
The First Complainant is the owner of multiple registered trademarks for the word mark EXPEDIA including US registered trademark no. 2612384 registered on August 27, 2002 in International Classes 39 and 41, and UAE registered trademark no. 81636 registered on May 13, 2007 in Class 39.
The Second Complainant, Hotels.com L.P., is a wholly owned subsidiary of the First Complainant. The Second Complainant owns and operates "www.hotels.com", a world leading hotel accommodation booking website which currently operates 85 localized websites worldwide, including a site for the UAE and Middle East at "www.ar.hotels.com", offering customers a choice of more than 325,000 properties in hundreds of locations across the globe. According to Alexa, an Internet analytics company, "www.hotels.com" is among the 500 most popular websites and is the fifth most popular travel website in the world. The said site received more than 20 million visits during July 2014 and has taken over 40,000 bookings from consumers in the UAE in the past year. The said site previously used a logo featuring a stylized word "Hotels.com" in a typeface style with a "handwritten script" appearance, colored in white, followed by the words "wake up happy" in a grey colored serif-based typeface, both against a yellow background. The said logo was primarily featured on country and region specific websites including in the Middle East and is also the subject of a figurative European Community Trade Mark, no. 5848841, registered on January 21, 2009 in international classes 35, 39, 42 and 43, owned by the Second Complainant.
The Second Complainant is the owner of multiple registered trademarks for the word mark HOTELS.COM including US registered trademark no. 3015723, registered on November 15, 2005, in International Class 39.
The Respondent is a tour operator in Dubai which states that it is licensed under trade license no. 586370 issued by the Government of Dubai to sell hotel accommodation in the UAE. According to .aeDA, the disputed domain name <hotels.co.ae> was created on October 13, 2009 and the disputed domain name <expedia.co.ae> was created October 14, 2009.
According to a WhoIs record dated August 13, 2014, the domain name <expediadubai.com>, which is not the subject of the Complaint, was created on September 12, 2009. Although the WhoIs record shows the registrant to be an individual, it features the same registrant email address as that shown on the WhoIs record of the disputed domain names. This email address uses the domain name <arabiahorizons.com>, which is also used for a corporate website associated with the Respondent's business. The WhoIs record for <expediadubai.com> also features the Respondent's telephone number, as supplied in the Response, although the former leaves out part of the area code.
The Complainants' screenshots of the Respondent's websites show a marked similarity of logos between those until recently used by the Respondent and those of the Complainants, as follows:
Source: Complainant's screenshot of website associated with disputed domain name <hotels.co.ae> taken on September 15, 2014, Exhibit to Complaint.
Source: Second Complainant's figurative European Community Trademark no. 5848841.
Source: Complainant's screenshot of website associated with disputed domain name <expedia.co.ae> taken on September 16, 2014, Exhibit to Complaint.
Source: Complainants' screenshot, taken from Complaint, of logo used by the First Complainant.
5. Parties' Contentions
The Complainants contend that the disputed domain names are confusingly similar to trademarks in which the Complainants own rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered or are being used in bad faith.
The Complainants provide a side-by-side comparison of the Parties' logos on their respective websites together with a side-by-side depiction of the "look and feel" of these websites. The Complainants assert that in addition to designing its sites to approximate the "look and feel" of those of the Complainants, the Respondent has copied images and text from the Complainants' sites, including various images and a "Best Price Guaranteed" offer and program that has been used by the First Complainant at "www.expedia.com".
The Complainants assert that the disputed domain name <expedia.co.ae> fully incorporates the First Complainant's EXPEDIA mark. The Complainants also submit that the disputed domain name <hotels.co.ae> is confusingly similar to the Second Complainant's HOTELS.COM mark by using the domain name suffix ".co.ae" to create a domain name that appears to be a <hotels.com> localized website for the UAE. The Complainants add that they employ country code Top-Level Domains ("ccTLDs") which include the element ".co" in appropriate jurisdictions including <hotels.co.uk> and <hotels.co.jp>.
The Complainants submit that their respective marks are so well-known and recognized in respect to travel-related services that there can be no legitimate use by the Respondent. The Complainants assert that the burden is on the Respondent to establish rights or legitimate interests in the disputed domain names and that the Respondent cannot do so. The Complainants add that there is no relationship between the Parties giving rise to any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainants' marks. The Complainants contend that the disputed domain names are not legitimate names of the Respondent, which operates under the name "Arabia Horizons Tours".
The Complainants assert that there can be no doubt that the Respondent selected the disputed domain names due to the notoriety of the Complainants' marks, given that the Respondent has created websites that copy the "look and feel" and content of those of the Complainants. The Complainants submit that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. The Complainants aver that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names because the Respondent has registered and is using them to generate revenue from a competing business at the expense of the Complainants' goodwill. The Complainants contend that the Respondent has used the disputed domain names to profit from intentionally redirecting Internet users away from the Complainants' websites and note that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.
The Complainants contend that bad faith is established because the Respondent has incorporated the Complainants' exact or virtually identical marks well after the Complainants' EXPEDIA and HOTELS.COM marks became well-known. The Complainants assert that the Respondent's knowledge and targeting of the Complainants is clear given that the Complainants' marks are among the most recognized and valuable trademarks in the travel agency industry and that the Respondent's websites at the disputed domain names copy the Complainants' logos and websites and offer similar services, suggesting bad faith.
The Complainants submit that the use of the disputed domain names leverages the notoriety of the Complainants' marks to attract users to the Respondent's websites where services competing directly with those of the Complainants are offered. The Complainants assert that this is consistent with a finding of registration or use in bad faith. The Complainants state that the Respondent has intentionally attempted to attract web traffic to its websites at the disputed domain names by creating a likelihood of confusion with the Complainants' EXPEDIA and HOTELS.COM marks as to the source, sponsorship, endorsement of or affiliation with the said websites.
The Complainants assert that bad faith is further established by the Respondent's use of logos on its websites imitating those used by the Complainants on its corresponding sites. The Complainants also point to the Respondent's alleged registration of <expediadubai.com> to offer competing services to those of the Complainants.
The Respondent requests the Panel to deny the remedies requested by the Complainants.
With regard to the disputed domain name <expedia.co.ae>, the Respondent states "we have suspended this website". The remainder of the Response addresses the disputed domain name <hotels.co.ae> and its corresponding website. The Respondent states that its website is completely different to the current website at "www.hotels.com" and that it has made several changes to color, logo, "look and feel" in an effort to further distance it. The Respondent offers to consider making further changes if required.
The Respondent notes that "hotels" is a generic word and asserts that this cannot be used as a brand. By way of illustration, the Respondent provides examples of some eight websites worldwide which it says are not operated or owned by the Complainants, including "www.hotels.nl", "www.hotels.gr" and "www.hotels.co.za". The Respondent adds that the Second Complainant does not have a trademark registration for the term in the UAE.
The Respondent points out the terms of its business license and says that it has the right to own and operate the disputed domain name <hotels.co.ae> and that the hotel apartments and excursions which it provides in the UAE are genuine products and services in accordance with such license. The Respondent explains that owning the relative disputed domain name is useful to it in terms of search engine optimization and points out that it clearly mentions that it is the owner of the relative website on the "about us" page. The Respondent adds that it has no intention to copy or interfere with any other company, business or customers.
With regard to the Complainants' comparison relating to the "Best Price Guarantee", the Respondent asserts that by this it means all of its listed services as offered on its website and that it is not copying anyone by use of this phrase. The Respondent states that many travel and hotel sites have the same offer and program, and produces various examples.
The Respondent states that the domain name <expediadubai.com> is not registered, producing a screenshot from the website of a popular domain name registrar by way of evidence.
6. Discussion and Findings
Paragraph 6(a) of the Policy provides that the Complainants must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered or are being used in bad faith.
Paragraph 6(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain names.
Paragraph 6(b) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration or use of the disputed domain names in bad faith.
A. Preliminary issue: consolidation of the Complainants
The present Complaint has been filed by two separate Complainants in respect of two different domain names. The Panel must therefore consider as a preliminary issue the question of whether the First Complainant and Second Complainant's respective disputes against the Respondent may be consolidated. Paragraph 10(e) of the Rules provides that a request by a Party to consolidate multiple disputes shall be decided in accordance with the Policy and Rules. Paragraph 6(f) of the Policy states that in the event of multiple disputes between a respondent and complainant, either party may petition to consolidate such disputes before a single administrative panel. In the present case, however, no such request has been placed before the Panel by either of the Parties.
In the absence of a specific request, the Panel may determine the question of consolidation in the present administrative proceeding in terms of its general powers under paragraphs 10(a) and 10(b) of the Rules. These provide that the Panel must conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and Rules, and that the Panel shall ensure both that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
The Panel is not aware of any decisions under the Policy relating to multiple complainants/multiple disputed domain names and a single respondent, although it is familiar with such circumstances arising under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The wording of the UDRP is substantively similar to that of the Policy in material respects and it therefore seems reasonable to the Panel to consider the relevant principles articulated by panels under the UDRP. These principles are identified in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which provides as follows:
"Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted."
Applying these principles to the present case, the Panel first considers the fact that there has been no express request for consolidation in the Complaint. This may perhaps be explained by the fact that the Second Complainant is a wholly owned subsidiary of the First Complainant such that the drafter of the Complaint has treated both Complainants as one and the same entity. In these circumstances, and bearing in mind its general powers as outlined above, the Panel does not consider that the failure to request consolidation per se should prevent the Panel so ordering, provided that the other criteria are met.
As far as the remaining criteria are concerned, it is clear from the terms of the Complaint both that the Complainants have a common grievance against the Respondent and that the Respondent's conduct as regards the Complainants' individual rights is common conduct affecting such rights in a similar fashion. The Complainants have set out a case which seeks to demonstrate that the disputed domain names were registered in close proximity of time, that the websites associated with the disputed domain names have been configured to show content which is designed to replicate material on the Complainants' respective websites and that the similarity of the disputed domain names and of the content on the associated websites is likely to confuse the Complainants' customers. The Panel notes that the Response does not address the issue of consolidation, and furthermore, the Panel cannot identify any prejudice which would arise to the Respondent from such consolidation.
In all of these circumstances, the Panel considers that it is procedurally efficient to permit the consolidation and that this is fair and equitable to all of the Parties. Accordingly, the Panel orders that the Complainants may proceed against the Respondent by way of a single Complaint.
This decision has a further consequence regarding the remedy sought in the Complaint. The Complainants request only that the disputed domain names be transferred "to Complainant" and do not specify to which of the Complainants each disputed domain name should be transferred. The Panel therefore assumes that in the event of the Complainants' success, the Complainants, as affiliates, may determine amongst themselves who will be the registrant of each disputed domain name.
B. Identical or Confusingly Similar
The Complainants have provided details of registered trademarks relative to the marks EXPEDIA, EXPEDIA.COM and HOTELS.COM. The Panel will disregard the first (".ae") and second (".co") levels of the disputed domain names for the purposes of comparison with the Complainants' marks on the grounds that these are required for technical reasons and as such are not generally of significance to that exercise. In these circumstances, by comparing alphanumerically the disputed domain names with the Complainants' marks the Panel finds that the disputed domain name <expedia.co.ae> is identical to the First Complainant's EXPEDIA mark and that the disputed domain name <hotels.co.ae> is confusingly similar to the Second Complainant's HOTELS.COM mark. In reaching this conclusion, the Panel notes that the test of identity or confusing similarity is a standing requirement with a relatively low threshold and furthermore that the Respondent did not seek to take issue with the Complainants' contentions on this topic.
Accordingly, the Panel finds that the Complainants have satisfied the requirement of paragraph 6(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel is satisfied that in respect of both disputed domain names the Complainants have established a prima facie casethat the Respondent has no rights or legitimate interests therein. In particular, the Panel notes that the Complainants assert that they have given no license, permission or other right by which the Respondent could own or use a domain name incorporating the Complainants' marks and that the Respondent has used the disputed domain names to copy of the "look and feel" of the Complainants' well-known and highly popular websites. The Panel accordingly turns to the Response to consider whether the Respondent has rebutted such prima facie case.
As far as the disputed domain name <expedia.co.ae> is concerned, the Respondent does not make any attempt to claim rights or legitimate interests therein. The Respondent merely states that it is no longer using the corresponding website. The Panel is satisfied in these circumstances that the Respondent has not rebutted the Complainants' prima facie case that the Respondent has no rights or legitimate interests in this particular disputed domain name.
With regard to the disputed domain name <hotels.co.ae>, the Panel notes that the essence of the Respondent's case is that the word "hotels" is generic, such that the Respondent is free to use this term in connection with its business of taking hotel and accommodation bookings. While the Panel can see the potential for use of the word "hotels" in a manner consistent with its generic meaning, the Panel reminds itself that the mere fact that the Respondent has selected a dictionary or generic word for the disputed domain name does not automatically mean it has rights or legitimate interests therein. The Panel must be satisfied that the Respondent registered and is using the disputed domain name with a view to taking advantage of its generic meaning and not with a view to taking advantage of any association with the business of another (see, for example, St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601, a case under the UDRP, and the consensus view of WIPO panels under the UDRP expressed in paragraph 2.2 of the WIPO Overview 2.0).
In the present case, all the indications before the Panel are that the Respondent registered both disputed domain names with the Complainants and their rights firmly in mind. In the first place, the Panel is satisfied from the similarities in the WhoIs record outlined in the factual background section above that the Respondent is linked to the registration of <expediadubai.com>, a domain name featuring the First Complainant's EXPEDIA trademark. This domain name was created one month before the creation date of the first of the disputed domain names. While the Panel would have expected the Respondent to address the apparent links between its business and the details in the WhoIs record for this particular domain name, the Response does no more than to assert that the domain name is no longer registered. This seems to the Panel to be disingenuous to say the least.
In the second place, the Panel notes the proximity in registration date between the two disputed domain names themselves. While <hotels.co.ae> may appear at first sight to have been selected by reason of its generic nature, it must be considered within the context that the day after its registration, the Respondent registered <expedia.co.ae>, a domain name which in the Panel's opinion unequivocally targets the First Complainant's EXPEDIA trademark. When the two domain names are taken together, therefore, the selection of <expedia.co.ae> taints the Respondent's assurance that its registration of <hotels.co.ae> was exclusively in pursuit of a generic meaning. Furthermore, an array of evidence has been put forward by the Complainants tending to show that, having registered the disputed domain name <hotels.co.ae>, the Respondent intentionally duplicated the "look and feel" of the older version of the Complainant's "www.hotels.com" website. In particular, the Panel notes the close similarity of the Respondent's "wake up happily" slogan and logo to that of the Second Complainant. These duplications lead to an inescapable conclusion in the Panel's mind that the Respondent registered <hotels.co.ae> with a view to taking advantage of its association with the Complainants' business.
In reaching this conclusion, the Panel has also taken note of the fact that the Respondent has declined in the Response to address to any material extent the Complainants' presentation of evidence of the blatant similarities between the Parties' logos and websites in general. The Respondent's position that it has removed such similarities and that its website is now substantively different from "www.hotels.com" cannot in the Panel's opinion retroactively confer any rights or legitimate interests upon it.
Nor is the fact that the Respondent is using the disputed domain name <hotels.co.ae> for an accommodation booking website of any particular assistance to its case. As the panel noted in St Andrews Links Ltd v. Refresh Design, supra, it does not matter that a respondent may be able to show that it has been using a domain name for an offering of services related to the generic meaning of that domain if its intention was to do this through a domain name that sought to take advantage of an association with the Complainants' business. In these circumstances, the use does not constitute a bona fide offering of services for the purposes of the Policy. Furthermore, the Panel is not persuaded by the Respondent's list of other websites using the word "hotels" in their respective domain names. It does not follow from the fact that third parties are or may be using the word "hotels" in the generic sense that the Respondent itself is doing so, or that the Respondent was not targeting the Complainants' business, particularly given the weight of evidence in the present case which contradicts those propositions.
In these circumstances the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and accordingly that the Complainants have satisfied the requirements of paragraph 6(a)(ii) of the Policy.
D. Registered or is Being Used in Bad Faith
As noted in the preceding section, the Panel is satisfied in the present case that the Respondent registered both of the disputed domain names with the Complainants' respective trademarks in mind. Although <hotels.co.ae> may appear to have been selected for its generic value at first glance, it is clear from the wealth of material produced by the Complainants, featuring the duplication of their content and logos by the Respondent, that the Respondent intended to target the Complainants' rights thereby rather than to take advantage of any generic meaning. Equally, as noted above, the fact that the Respondent registered and used the disputed domain name <expedia.co.ae>, which it does not seek to explain, the day after <hotels.co.ae> firmly points in the same direction, as does the earlier registration of <expediadubai.com>. The duplication of content or logos in this case goes well beyond mere coincidence which might have arisen from using common industry terms such as "Best Price Guarantee". The evidence on the present record demonstrates the Respondent's use of logos designed to look like those of the Complainants, featuring deliberately similar phrasing and typefaces, together with the duplication of numerous images. None of this is explained or adequately addressed in the Response. This conveys to the Panel an impression of an underlying plan on the part of the Respondent to attract consumers by confusion due to association with the Complainants' well-known marks and popular websites. The fact that such duplication may now have ceased does not absolve the Respondent of the consequences of its having targeted the Complainants' rights in the first place.
The Panel is satisfied that both of the disputed domain names have been used to intentionally attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainants' marks as to source, sponsorship, affiliation or endorsement of the Respondent's corresponding websites within the meaning of paragraph 6(b)(iv) of the Policy.
In all of these circumstances, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainants have satisfied the requirements of paragraph 6(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <expedia.co.ae> and <hotels.co.ae> be transferred to the Complainants.
Andrew D. S. Lothian
Date: November 4, 2014