Expedia, Inc. v. Venta

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia Inc. v. Venta, Leonard Bogucki

Case No. D2001-1222

1. The Parties

The Complainant is EXPEDIA, Inc. ("the Complainant") a Washington corporation, of 13810 SE Eastgate Way, Bellevue, Washington 98008, United States of America.

The Respondent is VENTA, Leonard Bogucki ("the RESPONDENT") of al. Focha 1, Krakow, Poland 30-111, Poland.

2. The Domain Name and Register

The Domain Name the subject of the Complainant is <expediat.com> ("the Domain Name").

The Registrar with which the Domain Name is registered is eNom, Inc. ("the Registrar") of 16771 NE 80th Street, Ste. 100, Redmond, Washington, United States of America.

3. The Procedural History

The World Intellectual Property Organization Center ("the Center") received a hard copy and an e-mail copy of the Complaint from the Complainant on October 8, 2001, and on October 11, 2001, respectively. An Acknowledgment of Receipt of Complaint was sent by the Center on October 9, 2001.

On October 11, 2001, a Request of Registrar Verification was transmitted to the Registrar. On October 16, 2001, the Registrar:

(1) confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), Paragraph 4(b);

(2) confirmed that the Domain Name is registered with the Registrar;

(3) confirmed that the Respondent is the current registrant of the Domain Name and that the details are correct. No further details of administrative, technical or billing contacts were provided by the Registrar;

(4) confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name;

(5) indicated that the current status of the Domain Name is Lock.

(6) indicated that the specific language of the registration agreement as used by the registrant is English and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies.

On October 22, 2001, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.

On October 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") was transmitted by e-mail to the Respondent. Enclosed with the Complaint Notification was the Complaint (without attachments). On October 22, 2001, the Complaint Notification, including the Complaint and the enclosed attachments, was also forwarded by courier.

No response was filed within the time specified by paragraph 5 of the Rules. The Respondent was to file its response by November 11, 2001. On November 13, 2001, the Center gave the Respondent formal Notification of Respondent Default.

The Complainant elected to have the dispute determined by a single-member Administrative Panel pursuant to paragraph 3(b)(iv) of the Rules.

The Panel appointed consists of Dr. Annabelle Bennett SC. On December 11, 2001, after the Center received completed and signed Statements of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panel.

4. Factual Background

The following facts are asserted by the Complainant in the COMPLAINT and are not disputed. The Panel holds these facts are proved.

The Complainant is the owner of the trademarks "EXPEDIA" and "EXPEDIA.COM" ("the Trademarks"). The Trademarks were first registered by Microsoft Corporation, the Complainant’s predecessor in interest in the Trademarks. The Trademarks were then assigned to the Complainant by Microsoft Corporation by way of written assignment. Included in the attachments to the Complaint were records of the registration of the Trademarks in the name of the Complainant and of the assignment of the Trademarks to the Complainant by Microsoft Corporation.

The Trademarks are registered in the United States of America in respect of the following classes:

EXPEDIA

Registration Number/

Date of registration

Class

2,168,097

June 23, 1998

9 - Computer software

for providing geographic maps, travel route information and guides.

2,383,732

September 5, 2000

16 - User guides

and reference guides all in the field of computers, computer networks

and global communication networks, computer programs and related topics.

2,402,434

November 7, 2000

25 - Clothing.

2,220,719

January 26, 1999

39 - Travel agency

services.

2,240,373

April 20, 1999

42 - Providing bulletin

board services and chat room services over computer networks and global

communication networks, for use by travelers.

2,224,559

February 16, 1999

42 - Travel agency

services.

EXPEDIA.COM

2,405,746

November 21, 2000

39 - Travel agency

services.

The Complainant’s also has numerous pending applications worldwide for the registration of the Trademarks and other marks owned by it.

The Complainant offers travel-related services, is a leading travel site on the Internet and conducts business throughout the Unites States of America and internationally. The Trademarks have been used by the Complainant in connection with its travel-related goods and services since at least early 1996. Since its debut, Expedia has become one of the most famous Internet e-commerce brands.

The word "EXPEDIA" is an arbitrary term that has no meaning other than to identify the Complainant’s goods and services. At the time of making the Complaint, there were no registered trademarks or pending trademark applications for travel related services on the Internet or otherwise, containing any equivalents to the Trademarks in sight, sound or meaning.

Upon becoming aware of the Domain Name, on September 7, 2001, the Complainant notified the Respondent, by way of letter (a copy of which is attached to the Complaint) and e-mail, of its objection to the RESPONDENT’S use of the Domain Name, as a name that is confusingly similar to the Trademarks. In its letter, the Complainant informed the Respondent of its ownership and interest in the Trademarks and stated that the Respondent’s use of the Domain Name constitutes an act of infringement of the Trademarks. The Complainant requested the immediate transfer of the Domain Name to it.

The letter was returned to the Complainant as undeliverable. However, the e-mail to the Respondent was not returned as undeliverable; the Respondent did not respond to the e-mail.

At the time of sending the letter and the e-mail on September 7, 2001, the Domain Name points to the website <www.onetravel.com>, a direct competitor of the Complainant. The Complainant asserts and information and belief that this link is unauthorized by interval and is attempting to contact interval to request that OneTravel terminate the link to its website.

5. Parties’ Assertions

A. The Complainant

The Complainant asserts that the Domain Name should be transferred to it, as it is able to satisfy all three conditions provided in paragraph 4(a) of the Policy.

Paragraph 4(a)(i):

The Complainant asserts that the Domain Name is identical to or confusingly similar to the Trademarks in which it has rights. The respective registration numbers and dates of registration of the Trademarks are detailed above. Additionally, the attachments to the Complaint include status information for each of the Trademarks.

The Complainant asserts that as "expediat" (the essential part of the Domain Name) and <expediat.com> differ from the Trademarks, "EXPEDIA" and "EXPEDIA.COM" respectively, only by an additional "t", the Domain Name is likely to cause consumer confusion with both the Complainant and the Trademarks.

The Complainant also asserts that someone looking for the Complainant’s goods and services on the Internet could easily, mistakenly and inadvertently type an extra "t". The Complainant asserts that, but for the inclusion of the extra "t", the Domain Name is identical to the Trademarks.

Paragraph 4(a)(ii):

The Complainant asserts that the Respondent can have no rights or legitimate interests in respect of the Domain Name and relies upon the following assertions:

(1) The Respondent has neither legitimately used nor has it made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and/or services, prior to its receipt of the Complainant’s letter dated September 7, 2001, or before its receipt of the Complaint. The Domain Name leads to the website <www.onetravel.com>, a competitor of the Complainant.

(2) The Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in respect thereof. The Respondent’s trade name appears to be "Venta" and there appears to be no connection between the Respondent and the Trademarks. The Complainant asserts that the Respondent should therefore be considered as having no rights or legitimate interest in the Domain Name.

(3) The Respondent is tarnishing the Trademarks by its ownership and continued use of the Domain Name. The Complainant asserts that consumers looking for the Complainant’s services on the Internet may inadvertently add a "t" to "EXPEDIA", thereby connecting to <www.onetravel.com> rather than locating information about the Complainant’s services. This misdirection could tarnish the Trademarks

(4) The Respondent is neither licensed nor authorized by the Complainant to use the Trademarks and therefore the Complainant asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.

Paragraph 4(a)(iii):

The Complainant asserts that the Respondent has registered and is using the Domain Name in bad faith, and relies upon the following assertions:-

(1) The Respondent has registered the Domain Name in order to prevent the Complainant,

as owner of the Trademarks, from reflecting or expressing the Trademarks in

a corresponding domain name. The Complainant asserts that the Respondent’s addition

of a "t" is typo squatting and refers to a number of WIPO decisions

in support of its assertion: see for example News Group Newspapers Limited

and News Network Limited v Momm Amed la, WIPO

Case No. D2000-1623, America Online, Inc. v Intellectual- Assets.com.

Inc., WIPO Case No. D2000-1043.

(2) The Domain Name points to <www.onetravel.com>, a direct competitor of the Complainant and a website at which travel-related goods and services of this competitor are offered. Internet users wishing to locate the website, but who mistakenly type in an additional "t" are directed to <www.onetravel.com> and are likely to be confused with the Complainant’s mark as the source, sponsorship, affiliation or endorsement of that website. The Complainant asserts that this also trades on the goodwill of the Trademarks.

B. The Respondent

No response was received from the Respondent.

6. Discussion and Findings

Identical or Confusingly Similar Domain Name (paragraph 4(a)(i))

The Domain Name at issue is <expediat.com>. The relevant part of the

Domain Name is <expediat>. The Domain Name incorporates the relevant portions

of the Trademarks "Expedia" and "Expedia.com". The Administrative

Panel is satisfied that this part of the Domain Name is confusingly similar

to the two trademarks "Expedia" and "Expedia.com" registered

in the name of the Complainant.

Respondent’s Rights or Legitimate Interests in the Domain Name (paragraph 4(a)(ii))

The Respondent has not responded to the Complainant’s letter of September 7,

2001. Accordingly, the RESPONDENT has not demonstrated or provided evidence

of circumstances of the type detailed in paragraph 4(c) of the Policy, such

as use of the Domain Name in connection with the bona fide offering of goods,

that the Respondent has been commonly known by the Domain Name or that the Respondent

is making legitimate non-commercial or fair use of the Domain Name. The Respondent

has not asserted any right or legitimate interests in the Domain Name.

The word "Expedia" is an invented word and, as such, does not appear

to be one that others would legitimately choose to use, albeit with an additional

"t", unless seeking to create an impression of an association with

the Complainant.

The Trademarks were originally registered by Microsoft Corporation and were

subsequently assigned to the Complainant. The Trademarks have been used by the

Complainant in connection with its travel-related goods and services in the

United States of America and internationally since their initial use by the

Complainant in 1996. The Complainant has not licensed nor permitted the Respondent

to use the Trademarks.

The Panel finds that the Respondent has no rights or legitimate interests in

the Domain Name.

Domain Name Registered and Used in Bad Faith (paragraph 4(a)(iii))

For the Complainant to satisfy this requirement, the Complainant must prove

bad faith in registration as well as bad faith in use of the Domain Name. Bad

faith in registration alone is insufficient ground for obtaining a remedy under

the policy: (Telstra Corporation Limited v Nuclear Mushrooms WIPO Administrative

Panel Decision No. D2000-0003).

The Complainant relies upon two grounds in support of its assertion that the

Respondent has both registered and used the Domain Name in bad faith. These

two grounds are detailed in paragraph 5A above and the established facts supporting

these grounds are detailed in paragraph 4 above.

The Respondent’s website <www.expediat.com> does not appear to have been

developed for any credible or bone fide purpose. It points to the website <www.one

travel.com>, the website of a direct competitor of the Complainant. No plausible

explanation, or any explanation at all, has been provided in respect of this.

The Panel takes all these matters into account and, in the absence of any response

from the Respondent, the Panel finds that the Complainant has established that

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

7. Decision

The Panel decides that:

(i) the Domain Name is identical or confusingly similar to two trademarks in

which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

Domain Name, and

(iii) the Domain Name has been registered and is being used in bad faith by

the Respondent.

Accordingly, the Panel decides that the Complainant has proven each of the

elements in paragraph 4(a) of the Policy. The Panel requires the Domain Name

to be transferred to the Complainant.

Dr. Annabelle Bennett, SC

Sole Panelist

Dated: December 19, 2001

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