WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Jim West Cruises

Case No. D2003-0429

 

1. The Parties

The Complainant is Expedia, Inc., Bellevue, Washington, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of United States of America.

The Respondent is Jim West Cruises, Spring Valley, Illinois, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <expediacruise.com> (the "Domain Name") is registered with Network Solutions, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2003. On June 5, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On June 10, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2003. The Respondent did not submit any response by the deadline. Accordingly, the Center notified the Respondentís default on July 8, 2003. On July 16, 2003, the Center received an email message from the Respondent stating that he had received the Notification of Respondent Default and that he was "confused about it." The Respondent stated that he did not understand that he was required to submit a Response by the deadline, but rather he believed that he was supposed to wait "until I heard you wanted to hear my side of the case." The Respondent nevertheless did make some arguments why he should retain ownership of the Domain Name in the email message. On July 16, 2003, the Center sent the Respondent an email message stating that the Respondentís email message would be included in the case file that the Panel would receive, and that if the Respondent wished to file a Response to the Complaint, the Panel would decide whether to consider the late Response. To date, no additional correspondence has been received from the Respondent.

The Center appointed Michelle Brownlee as the sole panelist in this matter on July 21, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant, or its predecessor in interest, has been using the EXPEDIA trademark and the domain name <expedia.com> since 1996, in connection with travel agency services provided via the Internet, including cruise booking and information services. The Complainant owns numerous U.S. and foreign registrations for the EXPEDIA trademark.

On or about October 14, 2003, the Respondent registered the Domain Name.

 

5. Partiesí Contentions

A. Complainant

The Complainant sent a letter to the Respondent on February 11, 2003, demanding that the Respondent transfer the Domain Name to the Complainant. On March 6, 2003, a lawyer from the law firm representing the Complainant contacted the Respondent and offered him an undisclosed amount "to cover [the Respondent]ís costs of registering and transferring the domain name." The Respondent rejected the offer, stating that he was not interested in receiving only an amount sufficient to cover registration and transfer expenses. On March 19, 2003, the same lawyer spoke with the Respondent a second time, again offering an undisclosed amount for "reasonable expenses." The Respondent said he would consider the offer. On April 15, 2003, the Respondent spoke with another lawyer at the Complainantís law firm, and rejected the offer, stating that he owned <travelocitycruise.com> but sold it for $52,000, and indicating that he would consider higher offers. On May 29, 2003, a third lawyer from the Complainantís law firm spoke with the Respondent and made another offer for a monetary settlement of an undisclosed amount, and the Respondent rejected the offer, stating that he was in the process of selling the name to a competitor of the Complainant for close to $20,000.

Whois records list the Respondent as the registrant of the <travelocitycruise.com> domain name, and list Cruise Concepts, Inc. as the registrant of <pricelinecruise.com>. The Whois record for the <pricelinecruise> domain name lists a phone number in the administrative contact information that is the same as that in the record for the Domain Name, and an address that is in the same town as that listed for the Domain Name.

The Respondent is not currently using the Domain Name in connection with a web site.

The Complainant contends that the Domain Name is confusingly similar to its EXPEDIA trademark, that the Respondent has no rights or legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith.

B. Respondent

The only communication that has been received from the Respondent was the email message that the Respondent sent after he received a Notification of Default with respect to this case. Because the Respondent expressed some confusion regarding the timing of his submission of a Response in this case, the Panel will consider the arguments raised in his email message as a Response, despite the fact that it was filed after the deadline, because the Panel believes that it best serves the interests of justice to consider both partiesí contentions.

The Respondent states that he had no intention of securing the Domain Name to prevent the Complainant from using it or to sell it to the Complainant. He registered the Domain Name because he sells cruises and a friend of his recommended that he use domain names including the words "Expedia", "Travelocity" and a couple of others because it might help bring in business. The Respondent admits that he had heard of Expedia, but he "did not know how big they really were." He presumed that if the Registrar allowed him to register the name, it must have been legal.

The Complainantís attorneys first offered the Respondent $500, then later offered $2,000. The Respondent told them he was not interested in selling it to them. The Complainantís lawyers told the Respondent he was not allowed to own the domain name. He then "just left it alone, hoping their calls and remarks would go away."

The Respondent has never established a web site at the Domain Name, offered the Domain Name in advertising, or directed it to another homepage.

The Respondent states that another cruise company offered him $15,000 for the name but he didnít sell it to them. He argues that it is unfair that the Complainant should be able to take the Domain Name away from him because they didnít think to register it before he did.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the respondent has no rights or legitimate interests in respect of the domain name;
(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name is identical to the Complainantís trademark and domain name except for the addition of the hyphen and the word "cruise." Pairing of the Complainantís well-known trademark with the generic word "cruise" is likely to lead Internet users to believe that the Domain Name is a site affiliated with Complainant. Other panels have found confusing similarity under similar circumstances. See, e.g. Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer (WIPO Case No. D2001-0032, March 28, 2001).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

The Respondent does not make any argument why he has a right or legitimate interest to use a domain name including the Complainantís trademark. The Respondent states that he adopted domain names including the trademarks of others in order to bring in business to his travel agency. Using another partyís trademark without permission to try to drive traffic to oneís site cannot be considered a legitimate interest in the domain name. The fact that the Respondent also registered other domain names that included the trademarks of others demonstrates that he knew that he was using othersí trademarks and he did not just stumble upon a domain name including the Complainantís trademark by chance.

Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

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

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

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The Complainant has proven by a preponderance of the evidence that the Respondent registered and used the Domain Name in bad faith pursuant to Paragraph 4(b)(i) of the Policy. The Complainant has offered declarations from lawyers who contacted the Respondent which state that Respondent refused offers to pay his reasonable expenses to transfer the name and noted that he would require more money to transfer the Domain Name. The Respondentís email communication admits that he refused the Complainantís offers of $500 and $2,000 to transfer the Domain Name. A refusal to sell a domain name is not in itself evidence of bad faith if a domain name registrant has a right or legitimate interest in the domain name. However, as discussed above, the Respondent has no legitimate interest in a domain name that includes the Complainantís trademark. Further, even though the Respondent apparently never quoted the Complainant a price for the Domain Name, the Respondentís statements regarding the amount for which he sold the <travelocitycruise.com> domain name and the other offer he had received for the Domain Name, coupled with the fact that the Respondent did not have his own web site associated with the Domain Name are strong indications that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant.

The Respondentís actions can also be seen as bad faith pursuant to Paragraph 4(b)(ii) of the Policy, as the Complainant has presented evidence, and the Respondent does not deny, that the Respondent registered other domain names using the names of the Complainantís competitors.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

 


 

Michelle Brownlee
Sole Panelist

Dated: August 1, 2003