Expedia, Inc. v. European Travel Network
[Indexed as: Expedia v. European Travel Network]
[Indexed as: Expediatravel.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0137
Commenced: 15 March, 2000.
Judgment: 18 April, 2000.
Presiding Panelist: Tom Arnold
Domain Name - Domain name dispute resolution policy - U.S. trademark - Confusingly Similar - No legitimate interest - Bad faith registration - Bad faith use - phonetically similar.
Complainant was registrant of United States trademark EXPEDIA.COM. Registrant registered the domain name XPEDIATRAVEL.COM. Complainant alleged that the Respondent had no legitimate interest in the registered domain name. Respondent did not use the domain name to establish a website, instead using the domain name to redirect people looking for the Complainant's web site to that of the Respondent. Respondent did not respond to the complaint.
Held, Name Transferred to Complainant.
Because of the Respondent's lack of response to the complaint, the Panel must draw conclusions on the basis of the Complainant's undisputed representations.
Each of the three elements in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy must be established to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief.
The registered domain name and the Complainant's mark are phonetically similar and the Complainant's mark could feasibly be misspelled "XPEDIA". Additionally, computer users could feasibly tack on "TRAVEL" when searching for the Complainant's website as the Complainant provides travel services. On the basis of these factors, the registered domain is found to be confusingly similar to the Complainant's mark.
The Respondent has no legitimate interest in the domain name as is not making a legitimate non-commercial or fair use of the domain name, and is using it to misleadingly divert consumers for commercial gain. The Respondent knew of or should have known of the Complainant's trademark and services at the time of registration given the widespread use of the Complainant's EXPEDIA website, and has therefore demonstrated bad faith use of the mark.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
Registration Agreements referred to
European Travel Network Domain Name Registration Agreement, effective March 7, 2000.
Cases referred to
Panel decisions referred to
Arnold, Panelist: -
1. The Parties
The Complainant is Expedia, Inc., a corporation organized in the state of Washington, United States of America (USA), with a principal place of business in Bellevue, Washington.
The Respondent is European Travel Network, with an address in Miami, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name is "XPEDIATRAVEL.COM".
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on March 7, 2000, and by courier mail received by WIPO on March 9, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On March 15, 2000, WIPO completed its formal filing compliance requirements checklist.
On March 15, 2000 WIPO transmitted notification of the complaint and initiation of the proceeding to the Respondent via e-mail and registered priority air mail. This date represents the commencement of this administrative proceeding (Rules for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). Respondent has not provided a fax communications number in its domain name registration. Respondent's use of a post office box as its physical address precludes WIPO's use of such express air courier service as it otherwise employs in administrative panel proceedings for delivery of hard copy documentation to respondents. On March 15, 2000, WIPO transmitted notification of the complaint to ICANN, Network Solutions, and Complainant's authorized representative.
On April 6, 2000, WIPO transmitted notification to Respondent of its default in responding (to the Complaint transmitted on March 7, 2000) by registered priority air mail and email.
On April 7, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by April 20, 2000.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent's default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has provided copies (Exhibits D and C of its complaint) of printouts from the U.S. Patent and Trademark Office online database showing several of its trademark registrations and applications for the mark EXPEDIA, in International Classes 9, 39, and 42. All services are related to providing travel agency services and travel-related information, products, and services. These goods and services are provided in a variety of print and audiovisual media, but most importantly, over the World Wide Web via a website found at the domain name EXPEDIA.COM. Such goods and services have been provided under the EXPEDIA mark since at least 1996.
Network Solutions' WHOIS database query response (Complainant's Exhibit A) indicates that European Travel Network, with Administrative Contact at "European Travel Network - WN - BDIE" is the registrant of the domain name XPEDIATRAVEL.COM. The record of this registration was created on May 3, 1999, and was last updated on the same date.
The Service Agreement in effect between Respondent and Network Solutions as of March 7, 2000 (Complainant's Exhibit B) subjects Respondent to Network Solutions' dispute settlement policy, which as of that date is the Uniform Domain Name Dispute Resolution Policy, as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties' Contentions
Complainant states that it has continuously used the trademark EXPEDIA for a wide variety of travel agency services, most notably in an online format, since 1996 (Complaint, para. 9). Complainant has provided evidence of registrations and a pending application at the U.S. Patent and Trademark Office (PTO) of the EXPEDIA mark in several international classes (collectively referred to by Complainant as the "Expedia Mark") (Id., para. 10). The Complaint in Paragraph 9 recites, "during the busy holiday shopping season in 1999, Expedia was one of the top ten visited e-commerce sites worldwide." This lends a degree of credibility to the further statement that because of substantial investment by Expedia, the Expedia Mark "has become famousand has developed an enormous amount of goodwill" (Id., para. 11).
Complainant states that it is likely that a consumer looking for Complainant's EXPEDIA.COM website would mistakenly believe that the XPEDIATRAVEL.COM website was connected with the Complainant's website, since "expedia" could be misspelled as "xpedia," and because it would not be unusual for a consumer to try "xpediatravel.com" to find Complainant's website, since Complainant provides travel-related services. (Id., para. 14).
Complainant states that the domain name XPEDIATRAVEL.COM actually diverts the user to the website at the domain name ETN.NL, a competing online travel service website for the Respondent, European Travel Network. (Id., para. 14; Exhibit F of Complaint).
Complainant states that Respondent has no legitimate interest in the domain name XPEDIATRAVEL.COM, since Respondent has no connection or affiliation with Complainant, Respondent is not a licensee of the EXPEDIA mark. Complainant also states that Respondent has not used the XPEDIATRAVEL.COM domain name to establish a website, and that the domain name does not appear on the website (Id., para. 15; Exhibit F of Complaint).
Complainant states that Respondent has registered and used the domain name for the purpose of directing people looking for Complainant's website to Respondent's competing website (Id., paras. 16 and 17).
Complainant has recited the history of its efforts to compel Respondent to cease and desist from use of the XPEDIATRAVEL.COM domain name; Complainant's emails to the email addresses found in Network Solutions' WHOIS database query were returned as undeliverable, and Complainant's letters sent via certified mail have not been confirmed delivered. Respondent has not responded to Complainant (Id., para. 18).
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy instituted three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect to the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of these three elements must be proved by a complainant to obtain relief. Paragraphs 4(b) and 4(c) of the Policy provide further nonexclusive criteria for determining whether the Registrant has engaged in abusive domain name registration with respect to subparagraphs 4(a)(ii) and 4(a)(iii).
Because the Respondent has defaulted in providing a response to the allegations of the Complainant, certain factual conclusions must be drawn by the Panel on the basis of Complainant's undisputed representations.
A. Identity of Respondent's Domain Name and Complainant's Trademarks
The Panel finds that the Complainant has rights in the trademark EXPEDIA for a variety of travel related goods and services. The Panel further finds that the Respondent's domain name XPEDIATRAVEL.COM, used in connection with goods and services indicated as those of Respondent on its website, is confusingly similar to Complainant's mark. "Expedia" feasibly could be misspelled as "xpedia." Furthermore, computer users could feasibly confuse the domain name XPEDIATRAVEL.COM with EXPEDIA.COM, or tack on "TRAVEL" at the end of the domain name while looking for Complainant's website, since Complainant provides travel services.
Given the phonetic similarity of the domain name and the mark, and the identical nature of the Complainant's and Respondent's services, the Panel finds that the Respondent's domain name XPEDIATRAVEL.COM and the Complainant's trademark EXPEDIA are confusingly similar.
Thus, the Panel finds for the Complainant on the first element.
B. Respondent's Rights or Legitimate Interests in the Domain Name
The Panel next determines whether the Respondent has rights or legitimate interest in the XPEDIATRAVEL.COM domain name, using the guiding criteria found in Paragraph 4(c) of the Policy.
The Panel finds that the Respondent is not commonly known by the domain name XPEDIATRAVEL.COM, since there is no mention of this domain name or the term XPEDIATRAVEL on the ETN.NL website or in other evidence.
Respondent's conduct of directing users from the domain name XPEDIATRAVEL.COM to its own competing ETN.NL website could feasibly mislead and divert computer users looking for Complainant's EXPEDIA.COM website, to the commercial detriment of Complainant. Given the lack of denial, Respondent, we can reasonably infer, is aware of this fact, potentially profits from this fact, and indeed seeks the occurrence of these events. Furthermore, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the domain name, and is using the domain name with the intent to misleadingly divert consumers for commercial gain.
Thus, the Panel finds for the Complainant on the second element.
C. Respondent's Registration and Use of the Domain Name
The Panel next determines whether the Respondent registered and used the domain name XPEDIATRAVEL.COM in bad faith, using the guiding criteria found in Paragraph 4(b) of the Policy.
The Panel finds that the Respondent has registered the domain name XPEDIATRAVEL.COM with the primary purpose of diverting potential customers of Complainant to the Respondent's website, and thus disrupting the business of a competitor, the Complainant. The Respondent first registered the domain name in May, 1999, long after the Complainant established rights and web publicity in the mark EXPEDIA for travel-related services. In the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant's trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainant's EXPEDIA website.
Furthermore, the Panel finds that the Respondent has intentionally used the domain name to attract, for commercial gain, Internet users to its XPEDIATRAVEL.COM website by creating a likelihood of confusion with the Complainant's mark and domain name as to the source, sponsorship, affiliation, or endorsement of the XPEDIATRAVEL.COM website.
Thus, the Panel finds for the Complainant on the third element.
For the foregoing reasons, the Panel decides:
That the XPEDIATRAVEL.COM domain name registered by the Respondent is confusingly similar to the EXPEDIA trademark in which the Complainant has rights;
That the Respondent has no rights or legitimate interests with respect to the domain name XPEDIATRAVEL.COM; and
The Respondent's XPEDIATRAVEL.COM domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(I) of the Policy, the Panel requires that the registration of the domain name XPEDIATRAVEL.COM be transferred to the Complainant.
Domain Name Transferred