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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Hassan Sham, Expedias Maldives Pvt Ltd

Case No. D2016-0288

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 Hassan Sham, Expedias Maldives Pvt Ltd of Male City, Maldives.

2. The Domain Name and Registrar

The disputed domain name <expediasmaldives.com> is registered with Name.com LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 12, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2016, 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.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. The Respondent submitted informal communications on February 25, March 8 and March 12, 2016. The Respondent did not submit a formal response.

The Center appointed Charles Gielen as the sole panelist in this matter on March 16, 2016. 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 owns several registrations of the trademark EXPEDIA among others in the United States. These registrations include registration No. 3.386.947 of February 19, 2008, for class 35, registration No. 2.612.384 of August 27, 2002 for classes 39 and 41, registration No. 2.610.290 of August 20, 2002 for class 35, registration No. 2.224.559 of February 16, 1999 for class 42 and registration No. 2.220.719 of January 26, 1999 for class 39. Further registrations exist among others in India (No. 1288244 of June 4, 2004 for classes 39, 41 and 42), the European Union (No. 2325520 of June 6, 2003 for classes 35, 36 and 38) and Australia (No. 717783 of September 19, 1996 for classes 9, 39 and 41).

The disputed domain name <expediasmaldives.com> was created on November 18, 2013.

5. Parties' Contentions

A. Complainant

The Complainant argues that it is one of the largest online travel companies in the world, with an extensive brand portfolio that includes some of the world's leading online travel brands. The Complainant owns extensive rights in its widely used and well-known EXPEDIA name and trademark. The Complainant operates the website "www.expedia.com", one of the largest full service online travel agencies in the world, with localised websites in more than 30 countries. The Complainant further operates more than 200 travel booking sites in more than 70 countries around the world across its portfolio of well-known online travel trademarks, including not only EXPEDIA and EXPEDIA.COM, but also HOTELS.COM (a hotel-only booking service with localised sites in more than 60 countries), HOTWIRE (a discount travel provider with sites in 12 countries), TRAVELOCITY (an online travel and booking agency), ORBITZ (a full service global online travel company), EGENCIA (the world's fifth largest corporate travel management company, which currently operates in 46 countries), TRIVAGO (a leading online hotel metasearch company with sites in 49 countries), and HOMEAWAY (an online marketplace for vacation rentals), among others.

The Complainant is based in the United States, but operates (either itself or through its affiliates) retail spaces, call centers, and subsidiaries throughout the world, including in countries belonging to the South Asian Association for Regional Cooperation (SAARC) which includes Afghanistan, Bangladesh, Bhutan, India, Maldives, Nepal, Pakistan, and Sri Lanka. The Complainant has been using the trademark EXPEDIA, either standing alone or in combination with other word and/or design elements, for its travel-related services since as early as 1996. For 20 years, the Complainant itself or through authorised licensees, affiliates, or partners, has continuously advertised and offered services and products under the EXPEDIA name and trademark. The Complainant accordingly has developed strong rights in the EXPEDIA mark.

The Complainant furthermore argues it has extensively promoted its EXPEDIA services and websites throughout the world through online, print, and television advertising campaigns, email communications, and its multiple well-known websites, including "www.expedia.com". The promotion and exploitation of the EXPEDIA trademarks and all related sales, advertising, and promotional activities have generated, and continue to generate, significant sales of EXPEDIA services and products around the world, including in Asian countries such as the SAARC countries.

The Complainant also argues it offers travel services to and from Maldives and booking services in Maldives. The Complainant offers specific information about Maldives travel, flights, and hotel booking in the Complainant's "Maldives Vacation Travel Guide" and "Maldives Islamic Centre Guide". Complainant uses the phrases "Expedia's Maldives Travel Guide" and "Expedia's Maldives Islamic Centre sightseeing & tourist guide" on the "www.expedia.com" and "www.expedia.com.hk" websites.

As a result of longstanding use and promotion of the EXPEDIA trademark by the Complainant, the consuming public and the trade recognise and associate this trademark with the Complainant. Accordingly, this trademark has acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality services and products offered by the Complainant, and embodies valuable reputation and goodwill belonging exclusively to Complainant. The Complainant points out that as early as 2003, the trademark EXPEDIA was recognised as a well-known trademark by a UDRP Panel. See Expedia, Inc. v. Jim West Cruises, WIPO Case No. D2003-0429.

According to the Complainant, the Respondent, Hassan Sham, purports to operate a travel company in Male, Maldives under the name Expedias Maldives Pvt Ltd. The Respondent registered the disputed domain name on November 18, 2013, a date well after the trademark EXPEDIA mark became well-known in many countries around the world. Since registering the disputed domain name, the Respondent has used the disputed domain name for a website promoting the same type of travel services offered by the Complainant, such as information about resorts and hotels and holiday packages.

The Respondent replied by email of November 30, 2015 to a demand letter from the attorney of the Complainant requesting the transfer of the disputed domain name by saying that its company is registered in Maldives and further saying: "If there is any issue that are facing you from this, you may need to buy the company from us on a agreed price. If you are not interested will continue with the name."

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark.

Furthermore the Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established substantial rights in the trademark EXPEDIA through extensive use. The Complainant has never granted the Respondent the right to promote its services using the trademark EXPEDIA and there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's unique trademark EXPEDIA. Additionally, the disputed domain name is not a legitimate name of the Respondent. Neither the Respondent, as an individual, nor the Respondent's purported organization Expedias Maldives Private Limited (whose name, according to the Complainant, also infringes the Complainant's trademark rights) is affiliated with or authorized by the Complainant to use the trademark EXPEDIA. According to the Complainant the registration of a business name does not confer proprietary rights possibly resulting in a legitimate interest to use a domain name containing that business name. The Respondent promotes its services by falsely suggesting a legitimate connection to the Complainant through the prominent use of the trademark EXPEDIA, when in fact no association or connection exits. Such use of the trademark EXPEDIA by the Respondent to redirect Internet users to its own website to promote the use of its own services for which it likely benefits financially (or through a phishing scheme to collect names and information about consumers) does not create rights or a legitimate interest in the name and mark.

Finally the Complainant states that the Respondent registered and uses the disputed domain name in bad faith for commercial gain and to benefit from the goodwill and reputation associated with the Complainant's trademark EXPEDIA. According to the Complainant, the Respondent's bad faith registration and use of the disputed domain name are established by the fact that the disputed domain name fully incorporates the Complainant's complete EXPEDIA trademark, and was registered by the Respondent well after the Complainant's EXPEDIA trademark became well-known around the world. The Respondent clearly knew about and targeted the Complainant. The trademark EXPEDIA has been used extensively for years and is among the most recognised and valuable trademarks in the online travel industry. According to the Complainant, there can be no doubt that the Respondent was fully aware of the Complainant's rights in its trademark EXPEDIA when the Respondent registered the disputed domain name as (a) the Respondent uses the exact EXPEDIA name and trademark in possessive form ("'s") to imply that the site is the Complainant's site about Maldives and (b) the Respondent uses the trademark EXPEDIA at the beginning of the disputed domain name. The Respondent's bad faith is further evidenced by the fact that the Respondent is using the disputed domain name for a website that promotes the Respondent's competing travel and vacation services. The Respondent is using the disputed domain name for personal or commercial gain by leveraging the notoriety of the EXPEDIA trademark to attract users to the Respondent's website and promote the Respondent's own travel-related services. That the Respondent has acted in bad faith is, according to the Complainant, further supported by Respondent's own communications with Complainant which said that Respondent would stop using the disputed domain name only if the Complainant purchased the Respondent's entire company. Finally, the bad faith registration and use are also shown by disputed domain name incorporating the complete trademark EXPEDIA. Furthermore, the website at the disputed domain name references "Expedia's" which suggests that the Respondent's website has some relationship with the Complainant when none exists. Bad faith is established by the likelihood that Internet users will mistakenly believe that the disputed domain name, which incorporates the trademark EXPEDIA, is connected to or associated with the Complainant.

B. Respondent

The Respondent replied to the Notification of Complaint by an email to the Center of February 25, 2016 in which he said: "We wish to inform you that we expedias Maldives legally Registered company in Maldives." This email was followed up by an email of March 8, 2016 to the Center annexing a document from which indicates that the company Expedias Maldives Private Limited was incorporated on January 22, 2014.

6. Discussion and Findings

The Panel is of the opinion that the Complainant's contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark EXPEDIA based on different trademark registrations and intensive use that resulted in this trademark to be well known around the world. The trademark EXPEDIA certainly is not a fantasy term. The disputed domain name contains this trademark as the most dominant part followed by the letter "s" and the word "maldives." The letter "s" suggests that what follows is owned by "expedia". What follows is in fact the name of the famous groups of islands in the Indian Ocean, called Maldives. As such it is a geographical and thereby descriptive term. The Panel is of the opinion that for these reasons the disputed domain name is confusingly similar to the trademark of the Complainant. The added term ".com" does not change the finding that the disputed domain name is similar, since the term "com " is generally understood to be the most popular Generic Top-Level Domain ("gTLD"). In making the comparison between the trademark and the disputed domain name the gTLD ".com" is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name should be considered confusingly similar to the trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the distinctive word "expedias" is not a term one would choose as a domain name without having specific reasons to choose such a term. The word "expedia" or "expedias" certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. The Panel is of the opinion that the fact that the Respondent registered and operates a company which is incorporated after the disputed domain name was registered does not give the Respondent a legitimate right to register and use the disputed domain name. First of all the disputed domain name was registered before the company was incorporated. Secondly, the fact that the Respondent registered a company and started using a private business name consisting in whole or in part of the main elements of the disputed domain name does not in itself result in a legitimate interest to use the disputed domain name, see Bilfinger Berger AG v. Bilfinguer, S.A, WIPO Case No. D2004-1002. This is in particular true where the Respondent operates a business which is identical to the business of the trademark owner, see Cummins Inc. v. Jamie Lent, WIPO Case No. D2015-0188 . Furthermore the Panel notes that the Respondent has not been granted any rights to use the trademark EXPEDIA as part of the disputed domain name.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. The bad faith of the Respondent follows from the fact that the Respondent's website offers the same type of travel services as offered by the Complainant. By using a domain name that incorporates the trademark EXPEDIA which is w well-known in the world for travel services, the Respondent suggests that it belongs or is connected to the company that has rights in the trademark EXPEDIA which in fact is not the case. The trademark EXPEDIA was already well-known for travel services before the disputed domain name was registered. Under paragraph 4(b)(iii) of the Policy registration and use of the disputed domain name for the purpose of disrupting the business of a competitor is a clear indication of bad faith. The Panel is of the opinion that this applies in this case, since consumers looking for travelling opportunities to Maldives and visiting the website of the Respondent will be misled and confused by thinking that the Respondent's website of the Respondent in fact belongs to or is affiliated with the Complainant. Also, the Panel is of the opinion that the registration and use of the disputed domain name should be considered as bad faith registration and use under paragraph 4(b)(iv) of the Policy since the Respondent, by using the disputed domain name that is confusingly similar to the well-known trademark of the Complainant for identical services tries to intentionally attract customers by creating a likelihood of confusion with the trademark of the Complainant .

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

7. Decision

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 <expediasmaldives.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: March 22, 2016

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