National Arbitration Forum

DECISION

Expedia, Inc. v. Leisure Tours Intl c/o John Sullivan

Claim Number: FA0412000381271

PARTIES

Complainant is Expedia, Inc. (“Complainant”), represented by Sanjiv D. Sarwate, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606.  Respondent is Leisure Tours Intl c/o John Sullivan (“Respondent”), 107 Fairview Avenue, Bridgeport, CT 06606.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <expediaspringbreak.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Jacques A. Léger, Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 15, 2004.

On December 15, 2004, Register.Com confirmed by e-mail to the National Arbitration Forum that the domain name <expediaspringbreak.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@expediaspringbreak.com by e-mail.

A timely Response was received and determined to be complete on January 10, 2005.

On January 14, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist.

On January 31, 2005, the Panel notified the parties that, due to exceptional circumstances, the time period within which it would render its Decision was extended to February 1, 2005.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that, long prior to Respondent’s registration of the disputed domain name, <expediaspringbreak.com>, it has adopted and continuously used since that adoption, the EXPEDIA trademark for travel-related goods and services.  Complainant adds that it does business primarily through the Internet, and that it has invested many hundreds of millions of dollars in its EXPEDIA mark.  It claims that as a result of these extensive marketing efforts, the EXPEDIA mark has become famous and represents valuable goodwill owned by Complainant.

Complainant contends that Respondent registered the disputed domain name, <expediaspringbreak.com>, on or about April 20, 2004, long after the EXPEDIA mark became famous.  It adds that the disputed domain name currently hosts a holding page that features both a search engine and links to several websites offering travel services, including Complainant’s website.

Complainant argues that the disputed domain name is confusingly similar to the EXPEDIA mark because it incorporates the entirety of Complainant’s EXPEDIA mark with the generic travel term “spring break”, leading to the alleged probability that Internet users will believe that it is either the official website for Complainant’s spring break vacation packages, or that it is somehow affiliated with Complainant.

Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name, since Respondent is not known by the EXPEDIA mark and has not acquired any trademark or service mark rights in the EXPEDIA mark.  Moreover, Complainant has not licensed or otherwise permitted Respondent to use the EXPEDIA mark in any way.  Moreover, Complainant claims that Respondent is attempting to disrupt Complainant’s business by using the disputed domain name to provide consumers with links to websites of Complainant’s competitors.

Finally, Complainant claims that Respondent registered and is using the disputed domain name in bad faith because, in addition to having actual knowledge, Respondent allegedly has constructive notice of Complainant’s trademark rights in the EXPEDIA mark as a matter of law.  Because of this knowledge, Complainant argues, Respondent could not have registered the disputed domain name with the intention of using it legitimately.  Complainant also adds that Respondent has attempted to sell the disputed domain name to Complainant for valuable consideration far in excess of any out-of-pocket costs, and that such act creates an inference of bad faith use in violation of the Policy.  Moreover, Complainant argues that Respondent is using the disputed domain name to intentionally attract Internet users to a website that provides links to Complainant’s direct competitors, and that such use constitutes bad faith use in violation of the Policy.

B. Respondent

In its Response, Respondent claims that the allegations of Complainant to the effect that the disputed domain name was registered in bad faith and that Respondent has no rights or legitimate interests in said domain name are untrue because he specializes in the business of selling spring break trips.

Respondent also claims that since registration, the website located at the disputed domain name has never been activated or directed to a live website.  Respondent claims no wrongdoing in the registration of the disputed domain name, and concludes that he would be willing to accept the transfer of said disputed domain name to Complainant for a sum of $500.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(2) Respondent has no rights or legitimate interests in respect to the domain name; and

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

(1)                  Identical and/or Confusingly similar

As it appears from Exhibit A of the Complaint, Complainant owns the registrations for the following trademarks with the United States Patent and Trademark Office (“USPTO”) Federal Principal Register: EXPEDIA TRAVELS, EXPEDIA, EXPEDIA TO GO and EXPEDIA.COM.

By virtue of these registrations, Complainant asserts that it has rights in these trademarks and that they are distinctive, and so the Panel finds.  It has been widely recognized that a trademark registration with the USPTO Principal Register constitutes prima facie evidence of validity, which creates a presumption, albeit rebuttable, to the effect that the mark is inherently distinctive and that its registered owner has rights in it.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); see also  Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).  In the present case, Respondent has not even attempted to rebut this presumption.  Out of curiosity, the Panel took it upon itself – as it is entitled to – to conduct a dictionary search for the word “Expedia” and was unable to find a meaning ascribed to this term, thus confirming it is a coined term and entitled to a broader scope of protection.  Therefore, the Panel finds that Complainant has rights in the trademarks listed in Exhibit D of the Complaint.

The Panel finds that Respondent’s <expediaspringbreak.com> domain name is confusingly similar to Complainant’s EXPEDIA.COM mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic term “spring break.”  See eBay, Inc. v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding that the <gayebay.com> domain name was confusingly similar to Complainant’s EBAY mark because it incorporated it in its entirety).  The expression “spring break” merely refers to a vacation period popular with schools and universities throughout the United States, and is clearly descriptive of this time period.  The mere addition of generic and descriptive terms to a Complainant’s registered trademarks is clearly not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).

As such, the Panel also agrees with Complainant that it is likely that Internet users may be led to believe that the website hosted at the disputed domain name is owned, sponsored, or affiliated with Complainant in connection with spring break travel packages – particularly since Respondent is using the disputed domain name to advertise and provide links to travel services and several travel companies on the Internet, including Complainant.  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (wherein the Panel found that “combining a generic word with the Complainant’s registered mark does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy”).

For these reasons, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered EXPEDIA and EXPEDIA.COM trademarks.

(2)                    Rights or Legitimate Interests

According to the Policy, the Panel can rely on any of the following circumstances, but without limitation, to find that a Respondent has rights or legitimate interests in the domain name if:

           

(i) Before any notice to Respondent of the dispute, Respondent’s use of, or    demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See the Policy ¶¶ 4(c) (i) – (iii))

In this regard, the Panel refers to its decision in Pivotal Corp. v. Discovery St. Trading Co. Ltd., D2000-0648 (WIPO Aug. 14, 2000) where it was decided that once a lack of legitimate interests or rights has been sufficiently demonstrated by a Complainant, the failure of a Respondent to adequately address this issue may allow the Panel to draw, in certain circumstances, an adverse inference therefrom, since the Respondent is the sole party able to provide satisfactory evidence concerning any one of the above-mentioned circumstances.  Respondent having failed, in the present case, to provide such satisfactory evidence, the Panel hereby draws an adverse inference and finds that Respondent has no rights or legitimate interests in the disputed domain name.  Furthermore, if there had been a doubt in the Panel’s mind, Respondent has, in virtue of the admission it made to this effect in its Response, asserted that it has not linked the disputed domain name to an active website – thereby confirming it has no rights or legitimate interests in it.

Complainant claims, and Respondent has not claimed nor provided evidence to the contrary, that Respondent is not commonly known by the domain name.  Therefore, Respondent cannot benefit from Paragraph 4(c)(ii) of the Policy and claim it has rights or legitimate interests in the disputed domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Moreover, Complainant asserts that the disputed domain name resolves to a website that links to competing online travel companies, such as Orbitz and Hotwire, and so the Panel finds.  Such competing commercial use of a domain name that is confusingly similar to another’s mark does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or to a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).  Respondent claims that the website hosted at the disputed domain name is not active and that it does not link to other websites.  The Panel does not agree with this.  The website located at the <expediaspringbreak.com> domain name clearly includes sponsored links and is connected to a search engine where various travel terms and companies – including Complainant – are pre-configured. This clearly constitutes use of the domain name, and the fact that there is not a more substantial website operated there by Respondent is immaterial.

Finally, Complainant has not licensed or otherwise permitted Respondent to use the EXPEDIA or EXPEDIA.COM marks or to apply for or use any domain name incorporating those marks.  See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (wherein Panel found that Respondent had no rights or legitimate interests to use domain name in part because Respondent was not licensed or otherwise permitted to use Complainant’s trademark); see also Alta Vista Co. v. Gamache, FA 95249 (Nat. Arb. Forum Aug. 17, 2000) (wherein the Panel found that Respondent was not licensed to use Complainant’s mark and therefore had no rights or legitimate interests in the domain name).

For these reasons, the Panel concludes that Complainant has satisfactorily discharged its burden of proving that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). 

(3)                  Registration and Use in Bad faith

Most of the time, it is quite difficult, if not impossible, to actually show bad faith with concrete  evidence, particularly given the limited scope of the inquiry in these proceedings; as a rule, one should not expect to find the “smoking gun.”  At the same time, good faith is to be presumed.  However, it is the Panel’s view that once Complainant has made a prima facie case in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith.  The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain name lies squarely on the shoulders of Complainant, once a prima facie case of bad faith has been made by Complainant, as the Panel finds in the present case, it is up to Respondent to either justify its business conduct, explain it, or demonstrate satisfactorily the contrary.  See Royal Bank of Scotland Group v. Lopez, D2002-0823 (WIPO Dec. 3, 2002); see also AT&T Corp. v. Linux Sec. Sys., DRO2002-0002 (WIPO Oct. 11, 2002).

Complainant has argued, and so the Panel finds, that Respondent had, at the very least, constructive knowledge of Complainant’s rights in the EXPEDIA.COM and EXPEDIA marks because Complainant’s marks are registered with the USPTO, and this constitutes legal notice of Complainant’s rights in said marks.  See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).  Moreover, Complainant’s marks having gained international popularity through the years, the Panel finds that Respondent knew or should have known that registering the disputed domain name would infringe upon Complainant’s goodwill in its registered marks.  See Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill.").  In the Panel’s opinion, this evidence of Respondent’s registration of the <expediaspringbreak.com> domain name with actual or constructive knowledge of Complainant’s rights in the mark constitutes a prima facie case of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

The Panel also finds that Respondent’s offer to sell the domain name registration to Complainant for $9,500, an amount that far exceeds any out-of-pocket costs Respondent may have incurred, is further evidence that Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where Respondent offered to sell the Domain Name to Complainant for $10,000 when Respondent was contacted by Complainant); see also Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.”); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”).

Moreover, Complainant contends that Respondent’s commercial use of a domain name that is confusingly similar to Complainant’s EXPEDIA.COM mark to create a likelihood of confusion constitutes further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Additionally, Complainant asserts that Respondent’s <expediaspringbreak.com> domain name resolves to a website that links to competing online travel services.  The Panel finds that this constitutes disruption and constitutes further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).  Respondent’s claims in his Response, to the effect that there was no bad faith on his part because he “specialized in the business of selling spring break trips”, is rather unconvincing in this respect.  If anything, Respondent’s specialization in the travel sector makes it even more unlikely that he had never heard of Complainant’s marks, or that he was unaware of the competitive relationship between Complainant and several of its competitors which are featured on the website hosted at the disputed domain name.  In any case, Respondent’s claims as to the absence of bad faith are highly lacking, and he has failed to rebut the prima facie case of bad faith that Complainant has made in its Complaint.

For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

DECISION

The Complainant having satisfactorily satisfied its burden with regard to all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <expediaspringbreak.com> domain name be TRANSFERRED from Respondent to Complainant forthwith.

Jacques A. Léger, Q.C., Panelist
Dated: February 1, 2005

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