WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. hotels4cheap and Yosef Swird
Case No. D2001-1221
1. The Parties
The Complainant in this administrative proceeding is Expedia, Inc., a Washington corporation, with its principal place of business at SE Eastgate Way, Ste. 400, Bellevue, United States of America, represented by Seann W. Hallisky of the Law Offices of Christensen OíConnor Johnson Kindness, PLLC. The Respondent is hotels4cheap.com and Mr. Yosef Swird, both of 484 Crown Street, Brooklyn, NY in the United States of America.
2. The Domain Name and Registrar
The domain name in issue is <expediah.com> ("the Domain Name"), the Registrar of which is Register.Com, Inc. of 575 8th Avenue Ė 11th Floor, New York, NY in the United States of America ("Register.Com").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received an electronic version of the Complaint on October 8, 2001, and the Center received a hard copy of the Complaint on October 11, 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 11, 2001, the Center transmitted to Register.Com by e-mail a request for registrar verification in connection with this case. On October 12, 2001, Register.Com transmitted via e-mail to the Center its Verification Response, which stated that the registrant is "Yossi Swerdlov", but since a "Whois" search of the Register.Com register of ".com" domain names attached to the Verification Response makes it clear that the Domain Name is registered in the name of the Respondents as named herein, the Panel concludes that this was an administrative error. The same Whois search makes clear that the Administrative Contact for the Domain Name is also <hotels4cheap.com> and Yosef Swird, of the same address as the Respondents. The Verification Response also confirmed that the UDRP applies to the Domain Name.
On October 17, 2001, the Center formally notified the Respondents by email to the Respondentsí 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 6, 2001. October 17, 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 sent notification of the Complaint to the Respondents by courier (with all accompanying exhibits). The courier delivered the Complaint on October 19, 2001, and its receipt was acknowledged by the signature of Y. Swird.
No Response has been filed by the Respondents. Notification of Default was sent by e-mail to the parties on November 9, 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 <expedeia.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 Respondents, 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 Respondents, and is accepted by the Panel.
(d) The Complainant operates a website at <expedia.com> which offers travel-industry-related information and access to travel agency services.
(e) The Complainant asserts, but again without any supporting evidence, that "Expedia has become among the most famous Internet e-commerce brands." Again, as this assertion is not contradicted by the Respondents, and is accepted by the Panel.
(f) The Domain Name was registered on February 26, 2000, and renewed on February 26, 2001.
(g) The Domain Name is not in use.
(h) Prior to issuing the Complaint, the Complainant caused a letter dated February 1, 2001, to be sent to the Respondents, using the details then current on BulkRegisterís registry. This letter threatened to commence legal proceedings unless the Respondents:
(i) terminated any and all use of the term "expediah" and of the Domain Name, whether on the Internet or otherwise (although the letter itself acknowledged that the domain name was inactive);
(ii) submitted a request for transfer of the Domain Name to Register.Com; and
(iii) refrained thereafter from use of the term "expediah" or any other name or mark that would be likely to be confused with the Trademark,
and gave until February 16, 2001, for a response.
(i) No reply was received but, as noted above, the Domain Name was renewed on February 26, 2001.
(j) The Complainant caused a further letter to be sent by courier to the Respondents on July 31, 2001, noting the failure of the Respondents to reply, and again threatening legal proceedings unless a reply to the earlier letter of February 1, 2001, was received before August 7, 2001.
(k) No reply was received to the further letter of July 31, 2001.
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 Respondents have 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. The Complainant also points out that "expedia" is an invented word, and asserts that it has been in use by the Complainant since 1996, but provides no evidence of such use from that time by the Complainant or its predecessor in title.
(c) In support of (ii), the Complainant contends that:
(i) the Domain Name is not being use for any purpose;
(ii) there is nothing in the name or other details of the Respondents to indicate that they are known by or use "EXPEDIAH" as a trademark or otherwise for any purpose, and since the Respondents are in the same industry as the Complainant, operating another website known as <www.hotels4cheap.com>, they would be fully aware of the Complainantís prior rights;
(iii) the confusion asserted to occur as a result of the use of the Domain Name by the Respondents tarnishes or devalues the Trademark.
and also notes that the Respondents are 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 Respondents have 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 Respondents 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 Respondentsí website or location or of a product on the Respondentsí 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 Respondents have had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondents cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to them, 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 Respondents, 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 Respondents; 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 conceptual similarity between the two, the inherent or acquired distinctiveness of the trademark, as well as issues relevant to language.
(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.
(g) Placed side-by-side, the similarity of the Trademark and the Domain Name is self-evident. 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.
Respondents have 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 apparently predates the registration of the Domain Name.
(i) In the absence of any explanation from the Respondents, it is impossible to know how the Respondents happened upon so similar a word, or how they could have any legitimate interest in it.
(j) The evidence establishes, indeed, that the Respondents are in a travel-industry related business, providing services from another website which are almost identical in nature to those provided by the Complainant from its website, from which it may be concluded that the Respondents were fully aware of the Complainantís name and business, and of the Trademark, before registering the Domain Name. Certainly, the Respondents were aware of the interests of the Complainant at the time the registration of the Domain Name was renewed on February 26, 2001.
Registration and use in bad faith
(k) There is little here upon the basis of which the Panel may conclude that the Respondents have 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.
(l) Similarly, there is absolutely no evidence that the Respondents have "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 Respondents have no website of their own addressed by the Domain Name, nor that there is any relationship between the Respondents whereby the Respondents 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.
(m) The list of circumstances in paragraph 4(b) of the UDRP is non-exclusive. Previous decisions under the UDRP have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see WIPO Decision No. D2000-0003 Telstra Corporation Ltd. v. Nuclear Marshmallows; WIPO Decision No. D2000-0423 Telstra Corporation Limited v. Barry Cheng Kwok Chu; WIPO Decision No. D2000-1428 Club Méditerranée S.A. v. Clubmedical; WIPO Decision No. D2000-1342 Time Inc v. Chip Cooper.
(n) From the Complaint, the Panel is prepared to conclude, in the absence of a Response, that:
(i) the Respondents registered the Domain Name knowing of the Trademark and the interests of the Complainant in it;
(ii) likewise, the Respondents renewed the registration, in the face of the Complainantís concerns expressed to them in its letters of February and July 2001;
(iii) the Respondents have a business in providing information and services from another website which are directly competitive with the business of the Complainant; and
(iv) it is more probable than not that the Respondent knew of the Complainantís name and reputation at the time of registration of the Domain Name, and certainly did so at the time of renewal.
(o) In the Nuclear Marshmallows decision referred to above, the learned Panel found the required bad faith in:
"(i) the Complainantís trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law."
There are important distinguishing facts here from those before this Panel. In this matter, the Respondents have never concealed their true identity, and have provided substantially correct details regarding itself to the Registrar. However, it was not suggested in that decision that these facts were exclusive or exhaustive.
(p) In the decision in Telstra Corporation Limited v. Barry Cheng Kwok Chu referred to above, the Panel observed:
"To date, the Respondent does not have a website, but the Panel holds that for the purpose of clause (iv) it is legitimate to consider hypothetically the effect of use in the manner foreshadowed by the Respondent. The critical issue is whether the attraction to a website of the Respondent would be attraction by creating a likelihood of confusion with the Complainantís mark."
and further that the Panel could take into account whether such a use would be an infringement of the trademark law of the country of the respondent in that matter.
(q) Indeed, in this case, we know from the uncontradicted evidence that:
(i) the Respondents are in virtually the same business as the Complainant, judging by their website at <www.hortels4cheap.com>; and
(ii) they are carrying on their business in the United States.
From these facts we can be certain that they would be very much aware of the Complainant and its trademarks, and we can reasonably hypothesize that the Respondents would be interested in using the Domain Name for some related business, and such use would unquestionably be a breach of United States law having regard to the trademarks and reputation of the Complainant.
(r) In the recent decision in Red Nacional De Los Ferrocarriles Espanoles v. Ox90 WIPO Decision D2001-0981, a majority of the distinguished Panel observed:
"Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainantís goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.
The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith."
(s) This Panel comes to the same conclusion with respect to the conduct of the Respondents in this matter.
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 <expediah.com> is confusingly similar to the trademarks "EXPEDIA" and <expedia.com>, both of the Complainant;
- the Respondents have 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 <expediah.com> be transferred to the Complainant, Expedia, Inc., in accordance with paragraph 4(i) of the UDRP.
William Peter Knight
Dated: February 20, 2002