DECISION

Expedia, Inc. v. Albert Jackson

Claim Number: FA0311000214461

PARTIES

Complainant is Expedia, Inc. (“Complainant”) represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Albert Jackson, P.O. Box 2014, George Town, Grand Cayman, Cayman Islands, British West Indies (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <expediairfares.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 25, 2003; the Forum received a hard copy of the Complaint on December 1, 2003.

On November 26, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <expediairfares.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 24, 2003 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@expediairfares.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <expediairfares.com> domain name is confusingly similar to Complainant’s EXPEDIA mark.

2. Respondent does not have any rights or legitimate interests in the <expediairfares.com> domain name.

3. Respondent registered and used the <expediairfares.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EXPEDIA mark, including Reg. No. 2,224,559 (registered on February 16, 1999) related to travel agency services.

Respondent registered the <expediairfares.com> domain name on June 13, 2003. Respondent is using the domain name as a search engine that features links to several websites offering travel services, including Complainant’s website and Complainant’s competitors’ websites.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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; and

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

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

Identical and/or Confusingly Similar

Complainant has demonstrated that it has rights in the EXPEDIA mark through registration with the USPTO.

Complainant contends that Respondent’s <expediairfares.com> domain name is confusingly similar to Complainant’s EXPEDIA mark because the disputed domain name appropriates the entire mark and adds the generic term “airfares” to the mark. The addition of the generic term does not sufficiently differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i) because the added term relates directly to Complainant’s services. The fact that the EXPEDIA mark and added term “airfares” share the letter “a” in the <expediairfares.com> domain name is not material. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Nat’l Ass’n for Stock Car Auto Racing, Inc. v. Shacklette, D2001-1350 (WIPO Feb. 4, 2002) (finding the <nascaracing.com> domain name confusingly similar to Complainant’s NASCAR trademark).

The Panel finds that Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Respondent has failed to come forward to contest Complainant’s allegations. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests under Policy ¶ 4(a)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <expediairfares.com> domain name as a search engine that features links to several websites offering travel services, including Complainant’s website and Complainant’s competitors’ websites. Respondent’s use does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods, is not bona fide use).

Complainant asserts that it has not licensed or otherwise permitted Respondent to use the EXPEDIA mark, or to use any domain name incorporating the mark. Furthermore, Respondent has proffered no evidence and the record does not suggest that Respondent is commonly known by the <expediairfares.com> domain name. Accordingly, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s unauthorized commercial use of the <expediairfares.com> domain name, a domain name confusingly similar to Complainant’s EXPEDIA mark, to offer links to both Complainant’s and Complainant’s competitors’ websites demonstrates Respondent’s bad faith with regard to Policy ¶ 4(b)(iv) because Respondent presumably profits from the Internet traffic that “clicks through” the website at the disputed domain name. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also 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).

Moreover, based on Respondent’s use of the disputed domain name to offer links to both Complainant’s and Complainant’s competitors’ websites, the Panel presumes that Respondent had actual or constructive knowledge of Complainant’s rights in the EXPEDIA mark. The registration and use of a domain name that appropriates a trademark holder’s mark despite actual or constructive knowledge of the trademark holder’s rights establishes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

James A. Crary, Panelist

Dated:  January 13, 2004

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