WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia Inc v. Momm Amed Ia

Case No. D2002-0157

The Complainant is Expedia Inc ('Expedia'). Expedia is a Washington corporation with its principal place of business in Bellevue, Washington, United States of America. The Complainant is represented by Christensen O'Connor Johnson Kindness, 1420 Fifth Avenue, Suite 2800, Seattle, Washington, United States of America.

The Respondent is Momm Amed Ia whose address is Kwangsan-gu Myongdo-dong 13-1, Kwangju, 506-011, Korea. The Respondent has no authorised representative for this proceeding.

The domain name in dispute ('Domain Name') is <expida.com>.

The Domain Name was first registered on April 25, 2000.

The Registrar with which the Domain Name is registered is BulkRegister.com, Inc of 7 East Redwood Street, Baltimore, MD 21202, United States of America.

The Complaint was filed in electronic format on February 15, 2002 and hard copies were filed on February 19, 2002. On February 21, 2002, the Center transmitted acknowledgment of receipt of complaint. On February 25, 2002, the Center transmitted a request for register verification to BulkRegister.com, in connection with this case. On February 25, 2002, Bulkregister.com sent via e-mail to the Center a verification response confirming that the Respondent is the registrant.

On March 5, 2002, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the 'Policy'), the Rules for Uniform Domain Name Resolution Policy (the 'Rules') and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the 'Supplemental Rules').

On March 5, 2002, the Center formally commenced this proceeding and sought to notify the Respondent that its response would be due by March 25, 2002. The Center notified the Respondent of default on March 27, 2002.

On April 24, 2002, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single Panelist, Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The Complainant is the owner of a number of registered trademarks for the mark 'expedia', first registered by its predecessor interest, Microsoft Corporation ('Microsoft'). The registrations for the above trademark were assigned by Microsoft to the Complainant by written assignment.

On or about April 25, 2000, the Domain Name, was registered by the Respondent with BulkRegister.com Inc. On September 24, 2001, the Complainant, through its lawyers sent a 'cease and desist' letter to the Respondent regarding the Domain Name.

The Complainant contends that at the time of sending the above letter the Domain Name pointed to www.priceline.com via the URL http://www.gogoo.com/treasure/travel.html. Priceline Inc is a direct competitor of the Complainant. The Complainant contends that it contacted Priceline Inc regarding the Domain Name and arrangements were made for the termination of the link between the Domain Name and Priceline Inc's website.

The Complainant contends, that at the time of filing this Complaint the Domain Name was linked to <onetravel.com> which is another competitor of the Complainant.

According to Network Solutions' Whois database, the Respondent in this administrative proceeding is Momm Amed Ia. The Respondent has not filed a response.

Domain Name and Registered Trade Mark Confusing Similar (paragraph 4(a)(i) of the Policy)

The Complainant contends that the Domain Name is confusingly similar to its Registered Trade Marks in appearance, sound, connotation and commercial impression.

The Complainant is engaged in the business of travel related goods and services. The Complainant submits that a customer seeking travel-related goods and services may reasonably believe that upon entering the Domain Name the home page of the Complainant would appear <expedia.com>.

The Complainant draws on statements by the United States Patent & Trade Mark Office which has determined that a name that differs from a registered trade mark merely by the omission or addition of one letter is an infringement based on confusing similarity.

The Complainant submits that the Domain Name is an arbitrary term that has no meaning except as an identifier of the Respondent's goods and services.

The Complainant contends that the deletion of one letter 'e' and the misplacement of another letter 'i' in the Domain Name creates a likelihood of confusion between the Complainant's registered trade mark and the Domain Name. The Complainant asserts that the deletion of such letters is commonly known as 'typo swapping' and one in which confusion readily occurs amongst consumers.

The Respondent has not filed a response.

Legitimate Interest or Right in the Domain Name (paragraph 4(a)(ii) of the Policy)

The Complainant contends that the Respondent has neither used nor made demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services.

The Complainant submits that the Respondent has no right or legitimate interest in the Domain Name. Further, the Complainant asserts that links to competitor's websites from the Domain Name highlights an illegitimate interest arising in the Respondent.

The Complainant submits that the Respondent is not commonly known by the Domain Name. The Complainant points to the name of the Respondent being Momm Amed Ia and concludes that the Domain Name has no correlation with the personal name of the Respondent.

The Complainant asserts that the Respondent by his conduct, is tarnishing the Trade Mark rights of the Complainant. The benefits accruing to competitors of the Complainant arising from confused internet traffic is evidence, the Complainant submits, of an illegitimate interest vested in the Respondent.

The Complainant submits that the Respondent is neither licensed nor authorized to use the Complainant's Trade Mark rights.

The Respondent has not filed a response.

Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)

The Complainant contends that pursuant to paragraph 4(b)(ii) of the Policy that the Respondent has engaged in a pattern of conduct demonstrating bad faith regarding the Domain Name. The Complainant points to a number of cases in which the Respondent has been found engaged in a pattern of 'cyber squatting and cyber piracy'.

Further, the Complainant contends that the unauthorized direction of internet traffic from the Domain Name to competitors of the Complainant constitutes a commercial gain to the Respondent. This commercial gain is one derived in bad faith and not authorized by the Complainant.

The Respondent has not filed a response.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The domain names are identical or confusingly similar to the trade marks; and

- The respondent has no right or legitimate interest in respect of the domain names; and

- The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

The Complainant's registered Trade Mark ('expedia') and the Domain Name ('expida') are confusingly similar. It is true that the letter 'i' has been substituted for the second letter 'e' and that the second last letter 'i' has been deleted in the Domain Name. But this substitution and deletion of vowels does not suffice to render the Domain Name significantly different from the Trade Mark. The pronunciation, appearance and sound of the Domain Name is confusingly similar to the registered Trade Mark of the Complainant.

The panel, therefore finds that the Domain Name is likely to confuse consumers who may reasonably assume that the Domain Name is in some way associated with the Complainant.

There is no evidence that the Respondent has made a legitimate or fair use of the Domain Name, or that he is commonly known by the name 'expida'. In the absence of submissions by the Respondent, the Panel is unable to identify any legitimate right or interest as required in paragraph 4(a)(ii) of the Policy which the Respondent may claim.

The panel therefore, finds that the Respondent has no right or legitimate interest in the Domain Name.

There is evidence submitted by the Complainant that demonstrates bad faith by the Respondent. The panel notes that the Domain Name was registered some time after the registration of the Complainant's trademark. Further, the Respondent appears to have derived a commercial benefit from confusion and misdirection of internet traffic from the Domain Name. Of significance is the fact that the Respondent pointed the Domain Name to direct competitors of the Complainant. This clearly demonstrates registration and use in bad faith.

The panel is further persuaded that the Complainant has engaged in a consistent course of conduct, demonstrated by a number of previous decisions cited by the Complainant, which point to a conduct known as 'typo squatting'. The purpose of such conduct is to capitalize on the typographical errors of web users in entering a domain name for a particular web site. The consequence of such conduct is usually to divert internet traffic that would have otherwise sought the Trade Mark owners web site. The panel is persuaded that the Respondent has engaged in bad faith by registering the Domain Name.

The panel finds that the Domain Name should be transferred to the Complainant.