WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Ixpedia.Com (Hanna El Hinn dba Dot Liban dba Ixpedia.Com)

Case No. D2002-0900

 

1. The Parties

The Complainant in this Administrative proceeding is Expedia, Inc., a Washington State corporation with its principal place of business in Bellevue, Washington, USA.

The Respondent is Ixpedia.Com (Hanna El Hinn dba Dot Liban dba Ixpedia.Com), P.O. Box 56002, Montreal, Quebec, Canada, H3Z 3G3.

 

2. The Domain Name and Registrar

The Domain Name subject to this Administrative Proceeding is:

<ixpedia.com> (the "Domain Name").

The Registrar of the Domain Name is BulkRegister.com. (the "Registrar").

 

3. Procedural History

This Administrative Proceeding is based on the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the ICANN 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").

The present Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on September 27, 2002, and in hardcopy on October 1, 2002, as well as payment in the required amount. The Complainant elected to have the dispute decided by a single-member panel.

According to the request by the Center of October 1, 2002, the Registrar verified on the same day that the Domain Name was registered with it, that the Respondent is the current registrant of the Domain Name, gave the full contact details of the Registrant and confirmed that the Policy applies to the Domain Name.

On October 1, 2002, the Center verified that the Complaint satisfies all formal requirements of the Policy, the Rules and the Supplemental Rules.

On October 2, 2002, the Center sent the Notification of Complaint of Administrative Proceeding to the Respondent by post/courier (with enclosures) and by email (without enclosures). The Center notified the Respondent that the last date for filing the Response was October 22, 2002.

The Response was received by the Center via email on October 15, 2002, and by post on October 21, 2002. The Center then proceeded to appoint the Administrative Panel.

After the Center received the Statement of Acceptance and Declaration of Impartiality from the sole panelist (the "Panel") the Center sent the Notification of Appointment of Administrative Panel and Projected Decision Date to the parties. The Projected Decision Date is November 11, 2002.

 

4. Factual Background

The Complainant is owner of the trademarks and service marks EXPEDIA, first registered by its predecessor-in-interest Microsoft Corporation ("Microsoft"). The registrations for these marks have been validly assigned by Microsoft to Expedia, Inc. by written recorded assignment.

The Complainant is owner of the following US trademark registrations (the "Expedia Marks"):

Trademark

Registration No.

Date of Registration

International Class

EXPEDIA

2,168,097

June 23, 1998

9

EXPEDIA

2,383,732

September 5, 2000

16

EXPEDIA

2,402,434

November 7, 2002

25

EXPEDIA

2,220,719

January 6, 1999

39

EXPEDIA

2,240,373

April 20, 1999

42

EXPEDIA

2,224,559

February 16, 1999

42

Expedia to Go

2,512,312

November 27, 2001

39, 42

EXPEDIA.COM

2,405,746

November 21, 2000

39

In addition, the Complainant has numerous pending applications worldwide for the registration of the Expedia Marks and other marks owned by Expedia.

The Complainant offers travel-related services in connection with its mark EXPEDIA and has been using the marks EXPEDIA and EXPEDIA.COM for or in connection with its travel-related goods and services at least as early as 1996.

The Domain Name was first registered on May 6, 2002.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the Policy para. 4(a) are given in the present case, i.e.

(i) the Domain Name is identical or confusingly similar to the Expedia Marks in appearance, sound, connotation and commercial impression;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name: Respondent has no rights in Complainant's trademarks and the Domain Name can neither be derived from Respondentís personal name, nor the name or nature of the business operated by him;

(iii) the Domain Name was registered and used by the Respondent in bad faith as it is clear from the Domain Name, which is a typical case of typosquatting, and thus prevents Complainant from reflecting his trademarks in a corresponding Domain Name. Further, Respondent was aware of Complainant's trademarks when registering the Domain Name after the initiation of proceedings in Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433. Therefore Respondent's use of <ixpedia.com> should be considered a use in bad faith. In addition, Respondent has registered the domain name <alytavista.com> that is confusingly similar to the well-known mark AltaVista. Respondentís behavior of registering common typographical errors of well-known trademarks is further evidence of Respondentís bad faith conduct and evidence that Respondent has engaged in a pattern of typosquatting.

B. Respondent

The Respondent denies that it has registered and used the Domain Name in bad faith, i.e. argues that it demonstrated good faith by starting to develop a website under the Domain Name by placing a traffic counter on the website, and that this counter would not constitute bad faith.

 

6. Discussion and Findings

Under the Policy para. 4(a) the Complainant must prove that each of the following three elements are present:

(i) the Domain Name is identical or confusingly similar to the Complainantís trademarks and service marks, 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.

Para. 4(c) of the Policy sets out three illustrative circumstances as examples which, if proved by the Respondent, shall demonstrate his rights or legitimate interests to the Domain Name for purposes of para. 4(a)(ii) of the Policy, in particular

(i) before any notice to the Respondent of the dispute, the use by the Respondent 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; and

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

Para 4(b) of the Policy sets out four illustrative circumstances, which for purposes of para. 4(a)(iii) of the Policy shall be evidence of the registration and use of the Domain Name in bad faith.

Identity or Confusing Similarity of the Domain Name

The Complainant owns registered rights in the Expedia Marks, which are not denied as such by the Respondent.

The Domain Name <ixpedia> under the gTLD <.com> differs from the Complainantís Expedia Marks merely in its first letter "e", changed into an "i" in the Domain Name. Such difference is, however, immaterial; as the Domain Name is confusingly similar to the Expedia Marks in appearance, sound, connotation and commercial impression (see in particular Expedia, Inc v. Franky Tong, WIPO Case No. D2002-0147; Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293; Yahoo! Inc. Geo Cities v. Data Art Corp, WIPO Case No. D2000-0587; America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043; Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1547).

Confusing similarity of the Domain Name according to Policy para 4 (a)(i) has therefore been established.

Rights or Legitimate Interests in Respect of the Domain Name

Complainant has alleged that Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel has to prove whether the Respondent has demonstrated his rights or interests under Policy para. 4(c).

Before notice of the dispute, the website under the Domain Name revealed a logo of eStat, a French company, which the user could click on to enter the eStat site. According to the Respondent, the eStat banner is supposed to act as a traffic counter, indeed, the Respondent claims to have started to develop the website under the Domain Name by placing a traffic counter on it.

In his Response, however, Respondent neither explained the type of business it plans to develop nor described the goods and services offered (if any) on the website under the Domain Name. The banner can therefore not be seen as evidence of any commercial activity by Respondent but rather as an advertisement for eStat. To the extent the Respondent claims that it is engaged in counting the traffic on the website under the Domain Name, such activity is not sufficient to constitute preparations to use the Domain Name in connection with a bona fide offering of goods and services under Policy para. 4(c)(i) in the absence of any evidence or information about such goods and services.

In his Response, Respondent further points out that it is doing business as Ixpedia.Com. However, the Respondent makes no assertion and gives no evidence that it (as an individual, business, or other organization) has been commonly known by the Domain Name and thus fails to prove that it has rights or legitimate interests under Policy para. 4(c)(ii). Under such circumstances it is not sufficient to simply register the domain name for an alleged business entity named exactly as the domain name.

No evidence has been submitted to the Panel either that the Respondent is making a legitimate noncommercial or fair use of the Domain Name (Policy para. 4(c)(iii)).

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name under Policy para. 4(a)(ii).

Bad Faith Use and Registration

Under Policy paras 4(a)(iii) and (b) evidence of bad faith registration and use includes:

(i) circumstances indicating the domain name was registered primarily for the purpose of resale to the complainant or to a competitor for profit;

(ii) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

(iii) registration of the domain name for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users the respondentís website or other on-line location, by creating a likelihood of confusion with the complainantís mark.

The Respondent registered the Domain Name on May 6, 2002. On this day the Center had just received another complaint from the Complainant in hardcopy (email was delivered on May 4, 2002) against the same Respondent, albeit doing business under a different name (Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433). Subject matter of this case were five domain names, all including Complainant's trademark EXPEDIA with minor typographical variations (i.e. <expedioa.com>, <expediua.com>, <expedoia.com>, <expeduia.com> and <exped8a.com>).

The decision of the Panel of WIPO Case No. D2002-0433 with regard to the procedural history contains no reference to the fact that Respondent might not have received the Complaint according to Rules para. 3(b)(xii) before or at the same time as the Center received it, i.e. by email on May 4, 2002. The Panel therefore finds that the Respondent was aware of the Expedia Marks at the time of registration of the Domain Name and therefore the registration of the Domain Name was in bad faith according to the Policy para. 4(b).

Respondentís ownership and use of the Domain Name for the limited purpose of placing a traffic counter on the website has the potential of confusing Complainantís customers and prospective customers. Respondentís registration of the Domain Name also prevents Complainant from reflecting the Expedia Marks in a corresponding domain name, thus preventing Complainant from making full commercial use of his trademark. The Panel finds that this constitutes bad faith use under the Policy para. 4(b).

Furthermore Respondent has registered the domain name <alytavista.com> which is again a typographical variation of and confusingly similar to the well-known mark AltaVista. As to this fact, together with the facts of Expedia, Inc. v. Dot Liban, Hanna El Hinn, WIPO Case No. D2002-0433, the Panel finds that Respondent has engaged in a pattern of typosquatting by registering numerous different domain names at different points of time, all reflecting merely misspelled trademarks of third parties.

Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith according to Policy para. 4(a)(iii).

 

7. Decision

As a result, the Panel finds and decides that:

(i) the Domain Name is confusingly similar to the trademarks in which the Complainant has rights;

(ii) the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name;

(iii) the Complainant has established that the Domain Name has been registered, and is being used in bad faith.

The Panel therefore under the Policy para. 4(i) orders that the Domain Name <ixpedia.com> be transferred to the Complainant.

 


 

Dr. Brigitte Joppich
Sole Panelist

Dated: November 7, 2002