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Expedia, Inc. v. Johuathan Investments, Inc.

WIPO Case No. D2001-0516

Outcome
Transfer
Domain names
epedia.com
Complainant
Expedia, Inc.
Respondent
Johuathan Investments, Inc.
Panelist
Chiasson, Q.C.
Decided
09 Jul 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0516.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Expedia,

Inc. v. Johuathan Investments, Inc.

Case No.

D2001-0516

1. The Parties

The Complainant in this

administrative proceeding is Expedia, Inc., a Washington State corporation with

its principal place of business in Bellevue, Washington, USA.

The Respondent in this

Administrative Proceeding is Johuathan Investments, Inc., located at 62 Cleghorn

Street, Belize City, Belize.

2. The Domain Name and

Registrar

The disputed domain name

is <epedia.com>. The Registrar of this domain name is Bulk Register.com,

Inc., of Baltimore, Maryland.

By registering the subject

domain name with the Registrar, the Respondent agreed to the resolution of the

dispute pursuant to the Policy and Rules.

3. Procedural History

This is a mandatory administrative

proceeding submitted for decision in accordance with the Uniform Domain Name

Dispute Resolution Policy, adopted by the Internet Corporation for Assigned

Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules

for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October

24, 1999 (the "Rules") and the World Intellectual Property Organization

("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules").

The Administrative Panel

consisting of one member was appointed on June 18, 2001, by WIPO.

Complainant filed its Complaint

with the World Intellectual Property Organization Arbitration and Mediation

Center (the "Center") on April 7, 2001, by email and on April 9,

2001, by hardcopy. The Center dispatched to the Registrar a Request for Registrar

Verification on April 12, 2001. On April 25, 2001, the Center emailed the Complainant

advising of deficiency. On April 27, 2001, having verified that the Complaint

satisfied the formal requirements of the Policy and the Rules, the Center

formally commenced this proceeding. On May 28, 2001, the Center sent a notification

of Respondent’s default.

An examination of this

material confirms that all technical requirements for the prosecution of this

proceeding were met.

Neither party requested

an opportunity to make further submissions and the Administrative Panel is content

to proceed on the basis of the existing record.

4. Factual Background

The following information

is derived from the Complainant’s material.

The Complainant offers

travel-related services.

The Complainant is the

owner of the trademark "EXPEDIA", first registered by its predecessor-in-interest

Microsoft Corporation ("Microsoft"). The United States Patent and Trademark

Office ("USPTO") issued the following trademark registrations (hereafter, the

"EXPEDIA Marks") to Microsoft:

Trademark

U.S.

Registration No.

Date

Registered

Goods/Services

EXPEDIA

2,168,097

6/23/1998

Computer software

for providing geographic maps, travel route information and recommendations

and travel information guides, in International Class 9.

EXPEDIA

2,220,719

1/26/1999

Travel agency services,

in International Class 39.

EXPEDIA

2,224,559

2/16/1999

Travel agency services,

in International Class 42.

EXPEDIA

2,240,373

4/20/1999

Providing bulletin

board services and chat room services over computer networks and global

communication networks for use by travelers, in International Class

42.

EXPEDIA.COM

2,405,746

11/21/2000

Travel agency services,

in International Class 39.

The registrations for these

marks have been validly assigned by Microsoft to Expedia by written-recorded

assignment. In addition, Expedia has numerous pending applications worldwide

for the registration of the mark EXPEDIA.

On December 28, 1997,

the subject domain name was registered by Epedia, Inc. of Tehran, Iran with

Network Solutions. The domain name subsequently was transferred to the BulkRegister,

Inc. registry and presently registered by Respondent.

At the time Epedia, Inc.

was listed as registrant of the subject domain name, Complainant notified Epedia,

Inc. via letter of its objection to Epedia, Inc.'s use of a second level domain

that was confusingly similar to Complainant's EXPEDIA trademark. This letter

was returned to Complainant as undeliverable.

On January 26, 2001,

Complainant notified Respondent via letter of its objection to Respondent's

use of a second level domain name that was confusingly similar to Complainant's

EXPEDIA trademark. Delivery of the letter was confirmed by Federal Express on

January 30, 2001, in Belize City, Belize. Respondent did not respond to

the January 26, 2001, letter.

When the subject domain

name was registered by Epedia, Inc., it pointed to the <pointcom.com>

website at which travel related goods and services were offered.

The Respondent does not

use the subject domain name to offer any goods or services and has not demonstrated

any preparations to use it to make such an offering. As of the date of the filing

of the Complaint, the Respondent had not made a use of, or made demonstrable

preparations to use the subject domain name in connection with a bona fide

offering of goods or services.

The Respondent also registered

<watchstations.com> and <wwwcompusa.com>. Both of these domain

names were transferred to their respective trademark holders in two Uniform

Domain Name Dispute Policy Arbitration proceedings – Sunglass Hut Corporation

v. Johuathan Investments, Inc., NAF Case No. FA0096178; and CompUSA Management

Company v. Worldwide Web CompUSA Inc., NAF Case No. FA0096122.

5. Parties’ Contentions

A. Complainant

The Complainant relies

on its use of the work "Expedia" and on its registered trademarks

and says that the subject domain name is confusingly similar to its rights.

Pointing to the Respondent’s lack of use of the subject domain name and to the

lack of any relationship between its name and the subject domain name, the Complainant

asserts that the Respondent has no legitimate interest in the subject domain

name.

The close similarity of

the subject domain name to the Complainant’s name and mark and the likely confusion

that would ensue when the link is used are relied on as evidence of bad faith

in the registration of the subject domain name. Deprivation of the Complainant’s

ability to obtain the subject domain name coupled with the Respondent’s history

of similar conduct are a basis for concluding that it is using the subject domain

name in bad faith.

B. Respondent

The Respondent has asserted

no position in this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy

requires the Complainant to prove that:

(i) the domain name

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights;

(ii) the Respondent

has no rights or legitimate interests in respect of the domain name;

(iii) the domain name

has been registered and is being used in bad faith.

Paragraph 4(b) provides

for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that

indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration

in excess of the Respondent’s documented out-of-pocket costs directly related

to the domain name;

(ii) registration of

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 the Respondent

has engaged in a pattern of such conduct;

(iii) registration of

the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain

name, intentionally attempting to attract, for commercial gain, Internet users

to the Respondent’s web site 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 the web site or location or of a product or service on it

or a location.

These are illustrative

and do not represent the only circumstances from which may arise evidence of

bad faith.

The Complainant relies

on factual determination by other ICANN administrative panels. The decisions

of other administrative panels are neither binding on this administrative panel

nor determinative of the factual issues that it must decide, but reference to

them can be of assistance.

The resolution of this

dispute takes place in the context of a consideration of the requirements of

paragraph 4(a) of the Policy.

A. Identical or Confusingly

Similar

It is clear that the Complainant

has rights to the word "expedia", both in terms of its use, its registered

trademark and domain name. The subject domain name essentially is identical

in that it differs from the word "expedia" only by the omission of

the letter "x".

The Administrative Panel

is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

B. Respondents Legitimate

Interest

When the subject domain

name first was registered it directed users to a site at which travel related

products were marketed, but the subject domain name then was transferred to

the Respondent. This suggests that the registrant had no interest, or certainly

no permanent interest in the subject domain name.

The Respondent makes no

use of the subject domain name, which has no apparent connection to the Respondent’s

name or business. This leads to an inference of no legitimate interest. Although

it has had an opportunity to do so, no evidence has been adduced by the Respondent

to rebut the inference.

The Administrative Panel

is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

C. Bad Faith

Registration of the subject

domain name to link with a site at which travel related products were marketed,

suggests a registration for a business purpose. The subsequent transfer of the

subject domain name, undermines, but does not completely rebut that inference.

In the absence of any explanation by the Respondent of the purpose for the registration,

the Administrative Panel must look to the totality of the information provided

to it to assess bad faith not only in the use, but in the registration of the

subject domain name.

The facts that a domain

name is identical or confusingly similar to the rights of a complainant and

a respondent who does not have a legitimate interest in the domain name, do

not standing alone establish bad faith, but they are relevant to a consideration

of the issue.

It is clear that registration

and maintenance of the subject domain name prevents the Complainant "…from

reflecting the mark in a corresponding domain name…." There also is evidence

that the Respondent has acted previously in similar circumstances.

In the absence of any explanation

by the Respondent to rebut the inference which flows from this information,

the Administrative Panel is satisfied that the Complainant has met the requirements

of paragraph 4(a)(iii).

7. Decision

Based on the evidence and

its findings, the Administrative Panel concludes that the Complainant has established

its case.

The Complainant asks that

the subject domain name be transferred to it. The Administrative Panel so orders.

Edward C.

Chiasson, Q.C.

Sole Panelist

Dated: June

28, 2001

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