Expedia, Inc. v. European Travel Network

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. European Travel Network

Case No. D2001-0329

1. The Parties

The Complainant is Expedia, Inc., a corporation organized and existing under

the laws of the State of Washington, United States of America, having its principal

place of business at Bellevue, Washington, United States of America. The Respondent

is European Travel Network, an entity of unknown characteristics with an address

in Miami, Florida, United States of America.

2. The Domain Name and Registrar

The domain name at issue is: <expediatravel.org>, which domain name is

registered with Network Solutions Inc. ("NSI"), a registrar based

in the State of Virginia, United States of America.

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration

and Mediation Center (the "WIPO Center") on March 7, 2001, in electronic

form. The hard copy of the Complaint was received by the WIPO Center on March 9, 2001.

The WIPO Center acknowledged receipt of the Complaint on March 7, 2001.

On March 13, 2001, a Request for Registrar Verification was transmitted to

NSI. NSI replied on March 14, 2001.

A Formal Requirements Compliance Checklist was initiated by the assigned WIPO Center

Case Administrator and completed on March 16, 2001. The Panelist has independently

reviewed the Requirements and agrees with the assessment of the WIPO Center

Case Administrator that the Complainant is in formal compliance with the requirements

of the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules")

and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy,

in effect as of December 1, 1999 (the "WIPO Supplemental Rules").

The required fees for a single-member Panel were paid by the Complainant on

time and in the required amount.

No formal deficiencies having been recorded, on March 16, 2001, a Notification

of Complaint and Commencement of Administrative Proceeding (the "Commencement

Notification") was transmitted to the Respondent (with copies to the Complainant,

NSI and ICANN), setting a deadline of April 4, 2001, by which the Respondent

could file a Response to the Complaint. The Commencement Notification was transmitted

to the Respondent by e-mail to the e-mail addresses indicated in the Complaint

and specified in NSI’s Whois confirmation, by post/courier to the indicated

postal address and by facsimile to the indicated facsimile number. Having reviewed

the communications records in the case file, the Panelist finds that the WIPO

Center has discharged its responsibility under Paragraph 2(a), Rules, "to

employ reasonably available means calculated to achieve actual notice to Respondent."

On April 11, 2001, having received no Response from the designated Respondent,

the WIPO Center transmitted to the parties a Notification of Respondent Default

using the same contact details and methods as were used for the Commencement

Notification.

On April 21, 2001, the WIPO Center invited Richard Allan Horning to serve as

the Sole Panelist in Case No. D2001-0329 and transmitted to him a Statement

of Acceptance and Request for Declaration of Impartiality and Independence.

Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality

and Independence was received on April 23, 2001. On April 30, 2001, the WIPO

Center transmitted to the parties a Notification of Appointment of Administrative

Panel and Projected Decision Date, in which Richard Allan Horning was formally

appointed as the Sole Panelist. The Projected Decision Date was May 14, 2001.

The Panelist finds that the Administrative Panel was properly constituted and

appointed in accordance with the Policy, Rules and WIPO Supplemental Rules.

The Panelist shall issue his Decision based on the Complaint, the Policy, the

Rules, the WIPO Supplemental Rules and without the benefit of any Response from

Respondent.

4. Factual Background

Complainant is the owner of record of various U.S. trademarks, which it has

used in connection with the operation of an on-line travel service business

since June, 1993. The Complainant has provided evidence of the registration

of the following marks, which have been adopted and used in this regard:

Registered Marks:

A.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,168,097

Computer software

for providing geographic maps, travel route information and recommendations

and travel information guides, in International Class 9.

6/23/98

B.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,220,719

Travel agency services,

in International Class 39.

January 26, 1999

C.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,224,559

Travel agency services,

in International Class 42.

February 16, 1999

D.

EXPEDIA

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,240,373

Providing bulletin

board services and chat room services over computer networks and global

communication networks for use by travelers, in International Class 42.

April 20, 1999

E.

EXPEDIA.COM

Registration Number:

Goods & Services:

Date Registered:

US PTO 2,405,746

Travel agency services,

in International Class 39.

November 21, 2000

Each of the above registered marks except Expedia.com was registered by Microsoft

and transferred by assignment to Complainant (Complaint, Annexes D and E).

Pending Marks:

A.

EXPEDIA TRAVELS

Registration Number:

Goods & Services:

Date Filed:

Serial No. 78/013400

Publications, namely

books, newsletters, magazines, in the fields of travel.

June 19, 2000

B.

EXPEDIA.COM TRAVEL

CLUB

Registration Number:

Goods & Services:

Date Filed:

Serial No. 75/955081

Restaurant services.

March 6, 2000

Complaint, Annex E.

The Respondent registered the domain name <expediatravel.org> on March

31, 1999 (Complaint, Annex A). At the time of the submission of the dispute

to the Panelist the "expediatravel.org" website registered by Respondent resolved

to a site containing an "Under Construction" legend and a statement

indicating that the domain had been registered with NSI.

Respondent’s regular line of business, discount travel services, is operated

at the <etn.nl> domain.

The Complainant wrote to Respondent by letter dated December 14, 2000, advising

Respondent that, in its view, Respondent’s registration was an attempt to trade

on Complainant’s good will (Complaint, Annex C). There is no record of a response.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is

nearly identical to and confusingly similar to the service marks and trademarks

registered and used by Complainant, that Respondent has no rights or legitimate

interests in respect to the domain name at issue, and that Respondent has registered

and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the

Panelist is to use in determining the dispute: "A Panel shall 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 directs that the Complainant must prove each of

the following:

1) 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,

2) that the Respondent has no legitimate interests in respect of the domain

name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain name at issue is either identical (Hewlett-Packard

Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online,

Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case No. FA0002000093679)

or confusingly similar (Marriott International, Inc. v. John Marriot,

NAF Case No. FA 0002000094737; Identigene, Inc. v. Genetest Laboratories,

WIPO Case No. D2000-1100; Seiko Epson

Corporation v. Distribution Purchasing & Logistics Corp., NAF Case 0003000094219)

to Complainant’s marks.

Complainant has alleged and Respondent has failed to deny that it has no legitimate

interests in respect of the domain name at issue. Alcoholics Anonymous World

Services, Inc. v. Raymond, WIPO Case No.

D2000-0007; Bronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO

Case No. D2000-0011. Respondent is not commonly known by the domain name

at issue, and has not acquired trademark or service mark rights in the domain

name. The Panelist finds that Respondent has no rights or legitimate interest

in the domain name.

The question thus arises whether the domain name at issue has been registered

and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in

particular but without limitation" circumstances which "shall be evidence

of registration and use of a domain name in bad faith." Those circumstances

are:

(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.

Complainant has alleged and the Panelist finds that Respondent’s use of the

domain name at issue, to resolve to a website which is stated to be "Under

Construction," constitutes bad faith registration and use under the Policy

under the circumstances of this particular dispute.

Respondent’s ownership and use of the subject domain name to link to an "Under

Construction" site containing an advertisement for Network Solutions, Inc.

has the potential of confusing Complainant’s customers and prospective customers.

Respondent’s registration of the domain name also prevents Expedia from reflecting

the mark in a corresponding domain name, thus preventing Complainant from making

full commercial use of its trademarks.

There is also proof in the record that Respondent has engaged in a pattern

of registering domain names reflecting the trademarks of travel-related businesses.

In addition to <expediatravel.org>, Respondent also registered

<xpediatravel.com>. This domain name was transferred to Complainant

in decision D2000-0137. Respondent has

also registered domain names which reflected trademarks owned by commercial

airlines, resulting in five decisions transferring a total of nine domain names

to the rightful owners of the trademark expressed in the domain name.

Domain

Name

Trademark

Owner

Case

No.

Result

klm.org

Royal Dutch Airlines,

known internationally as KLM

D2000-0963

Name Transferred

martinair.org

martinair.net

Martinair Holland

D2000-0964

Names Transferred

transavia.org

transavia.net

Transavia Airlines

D2000-0965

Names Transferred

xpediatravel.com

Expedia

D2000-0137

Name Transferred

singaporeairlines.org

singaporeair.net

singaporeair.org

Singapore Airlines

Limited

D2000-0641

Names Transferred

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name

registered by Respondent is identical or confusingly similar to the trademarks

and service marks in which the Complainant has rights, that Respondent has no

rights or legitimate interests in respect of the domain name, and that the Respondent’s

domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4.i of the Policy, the Panelist requires

that the registration of the domain name <expediatravel.org> be transferred

to the Complainant.

Richard Allan Horning

Sole Panelist

Dated: May 13, 2001

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