WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. Abdenbayeva Aigerim
Case No. D2014-2152
1. The Parties
The Complainant is Expedia, Inc. of Bellevue, Washington, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Abdenbayeva Aigerim of Astana, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <expedia.club> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 22, 2014.
The Center verified that the Complaint together with the amended 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 December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2015.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 19, 2015. 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 one of the largest online travel companies in the world, with an extensive brand portfolio. It is based in the United States, but maintains (either itself or through its affiliates) retail spaces, call centers, and subsidiaries throughout the world.
The Complainant operates “www.expedia.com” which is a full service online travel agency, with localized websites in more than 30 countries. Moreover, it runs a number of booking sites such as: “www.hotels.com”, “www.egenica.com” and “www.elong.com”.
In the course of its business activity, the Complainant has registered a number of trademarks including the name “expedia”. It owns, inter alia:
- EXPEDIA - a word trademark registered in the United States Patent and Trademark Office on January 26, 1999 under No. 2220719 and covering goods and services in Nice class 39;
- EXPEDIA - a word trademark registered in the United States Patent and Trademark Office on February 16, 1999 under No. 2224559 and covering goods and services in Nice class 42;
- EXPEDIA.COM - a word trademark registered in the United States Patent and Trademark Office on November 21, 2000 under No. 2405746 and covering goods and services in Nice class 39;
- EXPEDIA TO GO - a word trademark registered in the United States Patent and Trademark Office on November 27, 2001 under No. 2512312 and covering goods and services in Nice classes 39 and 42;
- EXPEDIA - a word trademark registered in the United States Patent and Trademark Office on August 20, 2002 under No. 2610290 and covering goods and services in Nice class 35;
- EXPEDIA - a word trademark registered in the United States Patent and Trademark Office on August 27, 2002 under No. 2612384 and covering goods and services in Nice classes 39 and 41;
- EXPEDIA QUICKCONNECT - a word trademark registered in the United States Patent and Trademark Office on December 11, 2007 under No. 3353069 and covering goods and services in Nice classes 35, 38 and 42;
- EXPEDIA - a word trademark registered in the United States Patent and Trademark Office on February 19, 2008 under No. 3386947 and covering goods and services in Nice class 35;
- EXPEDIA LOCAL EXPERT - a word trademark registered in the United States Patent and Trademark Office on June 10, 2008 under No. 3444074 and covering goods and services in Nice classes 43 and 45.
According to the latest WhoIs data, the Respondent is Abdenbayeva Aigerim of Astana, Kazakhstan.
The disputed domain name was registered on October 27, 2014.
5. Parties’ Contentions
Firstly, the Complainant contends that <expedia.club> is identical and/or confusingly similar to the Complainant’s well-known trademarks since it fully incorporates the word “expedia”. It claims that the EXPEDIA trademarks are intensively promoted all over the world which results in them being widely recognizable. The Complainant explains that the panel in Expedia, Inc. v. The Travel Club Network S.A., NAF Case No. FA1102001370762, has already concluded that <expediatravelclub.com>, which includes a word “club” serving as a generic Top-Level Domain (“gTLD”) for the disputed domain name, is confusingly similar to the Complainant’s EXPEDIA trademark. In the Complainant’s opinion, the Respondent’s use of the new gTLD “.club” in conjunction with the Complainant’s trademark does not dispel the likelihood of confusion, It merely suggests to Internet users that the disputed domain name is related to club services, loyalty programs, or other customer relations services of the Complainant which may even increase the confusing similarity between <expedia.club> and the Complainant’s business. Moreover, the Complainant asserts that use of Cyrillic alphabet by the Respondent on the website that the disputed domain name resolves to, does not legitimize its unauthorized use the EXPEDIA trademarks because Expedia, Inc. also uses national languages to promote its activity on the country-specific websites.
Secondly, the Complainant claims that the Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name as he registered <expedia.club> years after the EXPEDIA trademark became commonly well-known. It further states that the Respondent has neither been licensed nor otherwise permitted to use any of its trademarks. The Complainant contends that the disputed domain name is in no way connected with the Respondent’s business name since he is a private person who has no connection with Expedia, Inc.
Moreover, the Complainant asserts that 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 it. The Complainant explains that the Respondent has registered and used <expedia.club> to present itself as the Complainant or its affiliate in order to obtain personal data as well as payments from Internet users who want to book hotel room at a 50% discount.
Thirdly, the Complainant claims that the disputed domain name was registered and used in bad faith since the Respondent solicits personal data from Internet users under the guise of providing hotel booking services. In the Complainant’s view, such a phishing scheme indicates bad faith registration and use. Further, the Complainant argues that registering and using a domain name incorporating a famous trademark is enough evidence to fulfill bad faith element required by the Policy. It points out that the EXPEDIA trademarks were registered many years earlier than the disputed domain name.
According to the Complainant, the Respondent clearly knew about its business and targeted it since the website at <expedia.club> includes links to the legitimate websites of the Complainant such as: “www.expedia.com” and “www.expediainc.com”. Moreover, the services allegedly offered by the Respondent are identical to those offered by the Complainant and its logo imitates the Complainant’s logo.
Finally, the Complainant asserts that the Respondent is using the disputed domain name in order to obtain commercial gain by leveraging the notoriety of the EXPEDIA trademark to attract users to his website which offers services that compete directly with those offered by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant holds many valid trademark registrations for the “expedia” name. As the disputed domain name incorporates the word “expedia” in its entirety without any other word or letter, it is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
In the Panel’s opinion, the gTLD suffix “.club” does not serve to distinguish the disputed domain name from the registered trademarks.
Therefore, the Panel finds that the disputed domain name is identical to the EXPEDIA trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the EXPEDIA trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has been making a commercial use of the disputed domain name (through the website offering travel related services). The print screens of the website that the disputed domain name resolves to are clear evidence that the Respondent aimed at presenting himself as the Complainant or its affiliate in order to obtain commercial gain.
Accordingly, in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no such rights or legitimate interests.
Therefore, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Firstly, the disputed domain name was registered in October 2014 and incorporates the EXPEDIA trademark that was registered years before and is commonly known worldwide in the field of travel related services. In the Panel’s opinion, the notoriety of use of the EXPEDIA trademark alone indicates that the Respondent knew or should have known about the Complainant’s rights.
Secondly, the disputed domain name resolves to a website that offers hotel booking and other touristic services at large discount. It is designed in a way to mirror the Complainant’s website – the logo evidenced on the print screens presented by the Complainant looks alike the Complainant’s one. The fact that the website under <expedia.club> refers to the legitimate websites operated by the Complainant is clear proof of the Respondent being aware of the Complainant’s business.
Moreover, the said website requires Internet users to reveal their personal data in order to proceed with the hotel booking and most likely the Respondent gained commercially from the phishing scheme. All this facts supports the inference that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website.
Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
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 <expedia.club> be transferred to the Complainant.
Date: January 27, 2015