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Expedia, Inc. v. Johuathan Investments, Inc. [2001] GENDND 1249 (28 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Expedia, Inc., a Washington State corporation with its principal place of business in Bellevue, Washington, USA.

The Respondent in this Administrative Proceeding is Johuathan Investments, Inc., located at 62 Cleghorn Street, Belize City, Belize.

The disputed domain name is <epedia.com>. The Registrar of this domain name is Bulk Register.com, Inc., of Baltimore, Maryland.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of the dispute pursuant to the Policy and Rules.

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on June 18, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 7, 2001, by email and on April 9, 2001, by hardcopy. The Center dispatched to the Registrar a Request for Registrar Verification on April 12, 2001. On April 25, 2001, the Center emailed the Complainant advising of deficiency. On April 27, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On May 28, 2001, the Center sent a notification of Respondent’s default.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

The following information is derived from the Complainant’s material.

The Complainant offers travel-related services.

The Complainant is the owner of the trademark "EXPEDIA", first registered by its predecessor-in-interest Microsoft Corporation ("Microsoft"). The United States Patent and Trademark Office ("USPTO") issued the following trademark registrations (hereafter, the "EXPEDIA Marks") to Microsoft:

The registrations for these marks have been validly assigned by Microsoft to Expedia by written-recorded assignment. In addition, Expedia has numerous pending applications worldwide for the registration of the mark EXPEDIA.

On December 28, 1997, the subject domain name was registered by Epedia, Inc. of Tehran, Iran with Network Solutions. The domain name subsequently was transferred to the BulkRegister, Inc. registry and presently registered by Respondent.

At the time Epedia, Inc. was listed as registrant of the subject domain name, Complainant notified Epedia, Inc. via letter of its objection to Epedia, Inc.'s use of a second level domain that was confusingly similar to Complainant's EXPEDIA trademark. This letter was returned to Complainant as undeliverable.

On January 26, 2001, Complainant notified Respondent via letter of its objection to Respondent's use of a second level domain name that was confusingly similar to Complainant's EXPEDIA trademark. Delivery of the letter was confirmed by Federal Express on January 30, 2001, in Belize City, Belize. Respondent did not respond to the January 26, 2001, letter.

When the subject domain name was registered by Epedia, Inc., it pointed to the <pointcom.com> website at which travel related goods and services were offered.

The Respondent does not use the subject domain name to offer any goods or services and has not demonstrated any preparations to use it to make such an offering. As of the date of the filing of the Complaint, the Respondent had not made a use of, or made demonstrable preparations to use the subject domain name in connection with a bona fide offering of goods or services.

The Respondent also registered <watchstations.com> and <wwwcompusa.com>. Both of these domain names were transferred to their respective trademark holders in two Uniform Domain Name Dispute Policy Arbitration proceedings – Sunglass Hut Corporation v. Johuathan Investments, Inc., NAF Case No. FA0096178; and CompUSA Management Company v. Worldwide Web CompUSA Inc., NAF Case No. FA0096122.

A. Complainant

The Complainant relies on its use of the work "Expedia" and on its registered trademarks and says that the subject domain name is confusingly similar to its rights. Pointing to the Respondent’s lack of use of the subject domain name and to the lack of any relationship between its name and the subject domain name, the Complainant asserts that the Respondent has no legitimate interest in the subject domain name.

The close similarity of the subject domain name to the Complainant’s name and mark and the likely confusion that would ensue when the link is used are relied on as evidence of bad faith in the registration of the subject domain name. Deprivation of the Complainant’s ability to obtain the subject domain name coupled with the Respondent’s history of similar conduct are a basis for concluding that it is using the subject domain name in bad faith.

B. Respondent

The Respondent has asserted no position in this proceeding.

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of 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;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on factual determination by other ICANN administrative panels. The decisions of other administrative panels are neither binding on this administrative panel nor determinative of the factual issues that it must decide, but reference to them can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

It is clear that the Complainant has rights to the word "expedia", both in terms of its use, its registered trademark and domain name. The subject domain name essentially is identical in that it differs from the word "expedia" only by the omission of the letter "x".

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

When the subject domain name first was registered it directed users to a site at which travel related products were marketed, but the subject domain name then was transferred to the Respondent. This suggests that the registrant had no interest, or certainly no permanent interest in the subject domain name.

The Respondent makes no use of the subject domain name, which has no apparent connection to the Respondent’s name or business. This leads to an inference of no legitimate interest. Although it has had an opportunity to do so, no evidence has been adduced by the Respondent to rebut the inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

Registration of the subject domain name to link with a site at which travel related products were marketed, suggests a registration for a business purpose. The subsequent transfer of the subject domain name, undermines, but does not completely rebut that inference. In the absence of any explanation by the Respondent of the purpose for the registration, the Administrative Panel must look to the totality of the information provided to it to assess bad faith not only in the use, but in the registration of the subject domain name.

The facts that a domain name is identical or confusingly similar to the rights of a complainant and a respondent who does not have a legitimate interest in the domain name, do not standing alone establish bad faith, but they are relevant to a consideration of the issue.

It is clear that registration and maintenance of the subject domain name prevents the Complainant "…from reflecting the mark in a corresponding domain name…." There also is evidence that the Respondent has acted previously in similar circumstances.

In the absence of any explanation by the Respondent to rebut the inference which flows from this information, the Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

Based on the evidence and its findings, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: June 28, 2001