WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc v. Franky Tong

Case No. D2002-0147

The Complainant is Expedia, Inc, a Washington corporation with its principal place of business at 13810 SE Eastgate Way, Ste. 400, Bellevue, Washington 98008, United States of America. It is represented by Seann Hallisky of Christensen O’Connor Johnson Kindness, Washington, United States of America.

The Respondent is Franky Tong, whose address is given as 26H Block 7, Beverly Garden, Tsueng Kwan O, Hong Kong, SAR of China.

The domain name at issue is <expedie.com>.

The Registrar with which the disputed domain name is registered is Tucows, Inc, 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.

On February 13, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On February 25, 2002, the Registrar responded to a request for verification of the Domain Name <expedie.com> confirming details of the Respondent, that it had received a copy of the Complaint, that the Policy applied to the disputed domain name and that the current status of the domain name is "on hold".

On March 5, 2002, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by March 25, 2002.

No response was received on behalf of the Respondent and on March 27, 2002, a Notification of Respondent Default was sent to the Respondent.

On April 19, 2002, the Panel was appointed. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and Supplemental Rules.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainant states that it has been using the trademarks EXPEDIA and EXPEDIA.COM on or in connection with its travel-related goods and services since at least as early as 1996. It purchased the domain name <expedia.com> from Microsoft Corporation, presumably at that time.

The Complainant offers travel-related goods and services via the internet site <expedia.com>. It claims that since its debut, the site has become among the most famous internet e-commerce brands.

The Complainant is the owner of the trademark EXPEDIA in the United States of America in several classes, including International Classes 39 and 42 in respect of travel agency services. The trademark was first registered by the Complainant’s "predecessor in-interest", Microsoft Corporation, and was assigned to the Complainant.

In addition to the trademark registrations in the United States of America, the Complainant states that it has numerous pending applications worldwide for the registration of the EXPEDIA trademarks.

On or about September 20, 2001, the Respondent registered the disputed domain name. The Complainant states that shortly after registering the disputed domain name, the Respondent pointed the domain name to a search Web page that offered travel-related goods and services. (The site is currently inactive.)

On October 5, 2001, the Complainant, through its counsel, sent a cease and desist to the Respondent. The Respondent did not reply to this letter.

The Complainant claims that due to its widespread usage of the trademark EXPEDIA, and due to the success of its <expedia.com> website, the Complainant’s trademark has become well-known and constitutes a famous mark on the internet.

The Complainant claims that the disputed domain name is confusingly similar to the trademark EXPEDIA in appearance, sound, connotation and commercial impression. It claims that the minor difference between the marks "EXPEDIA" and "EXPEDIE" - the substitution of an "e" in place of the final "a"– insufficient to avoid confusion between the marks.

The Complainant states that the likelihood of confusion is increased due to the fact that the mark EXPEDIA is an arbitrary term that has no meaning except as an identifier of the Complainant’s goods and services. It appears that the disputed domain name is also an invented word – the Complainant claims that it was selected only by reason of its similarity to the Complainant’s registered trademark and domain name EXPEDIA.

The Complainant states that the registration of the domain name <expedie.com> constitutes "typo squatting". An internet user looking for the Complainant’s goods and service could mistakenly type in the disputed domain name and because the Respondent’s site (while operative) was also a travel-related site, may never have realized his or her mistake.

The Complainant referred the Panel to a number of cases in which typo-squatting has been held to be evidence of bad faith registration of a domain name, including: News Group Newspapers Limited and News Network Limited v. Momm Amed Fa , WIPO Case No. D2000-1623; America On-Line, Inc v. Intellectual-Assets.com, Inc WIPO Case No. D2000-1043; Yahoo! Inc and Geocities v. Data Art Corp et al WIPO Case No. D2000-0587.

The disputed domain name currently resolves to an error page and is inactive. The Complainant claims, however, that while operative the site operated "in the form of a search engine which advertised travel related goods and services". No screenshot of this Web page was provided. The Complainant alleges that the site traded on the goodwill of the Complainant by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location.

The Complainant claims that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name before notice of the dispute in connection with a bona fide offering of goods or services.

The Complainant also asserts that the Respondent is not commonly known by the disputed domain name. The Complainant states that the Respondent is an individual known as Franky Tong.

The Complainant confirms that the Respondent is neither licensed nor authorized by the Complainant to use the Complainant’s name or trademarks.

The Respondent did not file a Response.

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

● That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

● That the Respondent has no rights or legitimate interests in respect of the domain name; and

● That the domain name has been registered and is being used by the Respondent in bad faith.

The Complainant has provided evidence of its registrations in the United States of America for the trademark EXPEDIA. It also claims to have registrations pending in a number of other countries.

The disputed domain name is identical to the Complainant’s trademark EXPEDIA apart from the substitution of an "e" for the final "a". The Panel accepts that the disputed domain name represents what is likely to be a common misspelling of the Complainant’s trademark.

The Panel finds that the domain name <expedie.com> is confusingly similar to the trademark EXPEDIA in which the Complainant has rights.

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name. These circumstances are:

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

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

(iii) the Respondent is making a legitimate non-commercial 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.

The Panel finds that none of the conditions outlined in (i) to (iii) have been made out. The Respondent has not provided any formal Response and the Panel finds it appropriate to draw an adverse inference from the Respondent’s failure to respond to the Complaint (SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited, WIPO Case No. D2000-0848).

Overall the Panel can find no evidence to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent’s conduct in respect of the domain name <expedie.com> is in breach of (iv) above. By using the domain name <expedie.com> in relation to a travel-related website, the Respondent was intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.

An Internet user who misspelt the Complainant’s trademark – either through ignorance or inadvertence – would have found himself or herself redirected to the Respondent’s site. This site has no connection whatsoever to the Complainant.

The Complainant has regrettably not attached to its Complaint a screenshot of the Respondent’s Web page (while operative). The Panel is therefore in the position of having only the Complainant’s own characterization of that Web page as "advertising travel related goods and services". In all the circumstances and in the absence of any response by the Respondent, either to the letter from the Complainant’s legal advisers dated October 5, 2001 or to this Complaint, it is appropriate for the Panel to accept this evidence and (as noted earlier) to draw adverse inferences from the Respondent’s failure to respond.

The Panel therefore concludes that the disputed domain name was registered in bad faith.

For the foregoing reasons, the Panel decides that:

(a) the disputed domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights;

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

(c) the disputed domain name was 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 <expedie.com> be transferred to the Complainant.