WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. Mangesh Umak
Case No. D2021-3438
1. The Parties
The Complainant is Expedia, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Mangesh Umak, India.
2. The Domain Names and Registrars
The disputed domain name <expediamarket.com> is registered with Hostinger, UAB (the “First Registrar”).
The disputed domain names <expediamarket.net> and <theexpediamarkets.com> are registered with Instra Corporation Pty Ltd (the “Second Registrar”).
The disputed domain names <expediamarkets.com> and <theexpediamarket.com> are registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Third Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 18, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On October 19, the First and Second Registrars 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 disputed domain names. On October 26, the Third Registrar 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 disputed domain names.
In response to a notification by the Center inviting the Complainant to amend the Complaint, the Complainant filed an amended Complaint on November 5, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on December 15, 2021. 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 based in the United States and is one of the largest online travel companies. It operates a website at “www.expedia.com”, with localized websites in more than 40 countries, including “www.expedia.co.in” in India. The Complainant operates more than 200 travel booking sites in more than 70 countries around the world and has provided travel services under the EXPEDIA mark since as early as 1996. In 2020, the Complainant’s revenues exceeded USD 5.2 billion.
The Complainant is the proprietor of numerous registered trademarks around the world comprising EXPEDIA, including United States trademark number 2240373, EXPEDIA, registered on April 20, 1999; United States trademark number 3704230, EXPEDIA, registered on November 3, 2009; and India trademark number 1109630, EXPEDIA, registered on June 6, 2002.
The disputed domain names were registered on the following dates:
- <expediamarket.com> – April 17, 2019;
- <expediamarket.net> and <theexpediamarkets.com> – April 28, 2021; and
- <expediamarkets.com> and <theexpediamarket.com> – August 5, 2021.
The disputed domain name <expediamarket.com> does not presently resolve to an active website. However, from around late 2020 it resolved to a website purporting to offer market reports for sale and offering consulting and research services (the “ExpediaMarket Website”). Text on the website appeared to have been copied from a number of other websites. The “About Us” section of the home page stated:
“Expedia is the most comprehensive collection of market intelligence products and services on the Web. We offer reports from over 300 top publishers and update our collection daily to provide you with instant online access to the world’s most complete and current database of expert insights on global industries, companies, products, and trends.”
This text was apparently copied from the “About Us” page of the bona fide market research website at “www.marketresearch.com”. Similarly, text under the heading “Why Choose Us” was apparently copied from the website at “www.reportsmonitor.com” and text describing the experience of the Expedia Markets team under the heading “Team Profile” was copied from the website at “www.rncos.com”.
Market reports purchased from the ExpediaMarket Website were produced by third parties. The purported office addresses of Expedia Market set out under “Contact Information” were in Anaheim, California, United States and in Mumbai, India. The Anaheim address is a virtual office location and the address in Mumbai is that of a software and web design company. The Terms and Conditions on the ExpediaMarket Website state that “[t]his website is owned and operated by Expedia Market and its affiliated companies. The company is a part of Tryangle Market Intelligence”. The Tryangle Market Intelligence website at “www.tryanglemarket.com” is substantially similar to the ExpediaMarket Website and gives the same United States telephone number and the same Anaheim office address as the ExpediaMarket Website.
The disputed domain name <expediamarket.net> presently resolves to a website at “www.theexpediamarkets.com”, but until July 21, 2021 it redirected to the ExpediaMarket Website. Following demand letters to the First and Second Registrars, the ExpediaMarket Website was suspended on that date and the disputed domain name <expediamarket.net> stopped redirecting to that website.
The disputed domain names <expediamarkets.com>, <theexpediamarket.com>, and <theexpediamarkets.com> also redirect to the website at “www.theexpediamarkets.com” that is exactly the same as the previous ExpediaMarket Website.
5. Parties’ Contentions
The Complainant contends that each of the disputed domain names is confusingly similar to its EXPEDIA trademark, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the disputed domain names the Complainant must prove that:
(i) the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the EXPEDIA trademark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its widespread use of the mark over some 25 years. Ignoring the generic Top-Level Domains (“gTLDs”) “.com” and “.net”, the disputed domain names comprise the entirety of the Complainant’s EXPEDIA trademark together variously with the words “market”, “markets”, and “the”. In the view of the Panel, the addition of these words does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the disputed domain names. The disputed domain names have been used to redirect to the ExpediaMarket Website, purporting to offer for sale the market reports and intelligence of third parties and to offer consulting and research services. There is no evidence of the existence of a legal entity under the name “Expedia Market” or that the Respondent has been commonly known by any of the disputed domain names. The Respondent has never been licensed or otherwise authorized by the Complainant to use its EXPEDIA trademark or to operate under that name.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that “proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’[…]” accordingly:
“[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has chosen not to respond to the Complaint, to explain its use of the disputed domain names, or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
In light of the notoriety and very widespread use of the Complainant’s EXPEDIA mark over many years, the Panel is in no doubt that the Respondent had the Complainant and its rights in the EXPEDIA mark in mind when it registered the disputed domain names. The only legitimate inference is that the Respondent registered the disputed domain names for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the mark. It has used the disputed domain names to confuse Internet users into believing that the disputed domain names were being operated by or authorized by the Complainant and to draw Internet users to the ExpediaMarket Website through its use of the EXPEDIA mark. The Panel considers that such activity amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that each of the disputed domain names have been registered and are being used in bad faith.
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 names, <expediamarket.com>, <expediamarket.net>, <expediamarkets.com>, <theexpediamarket.com>, and <theexpediamarkets.com>, be transferred to the Complainant.
Date: December 20, 2021