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Expedia, Inc. v. Franky Tong

WIPO Case No. D2002-0147

Outcome
Transfer
Domain names
expedie.com
Complainant
Expedia, Inc.
Respondent
Franky Tong
Panelist
Andrew Brown
Decided
30 Apr 2002
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/2002/d2002-0147.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Expedia, Inc v. Franky Tong

Case No. D2002-0147

1. The Parties

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.

2. The Domain Name and Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

A. The Complainant

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.

B. The Respondent

The Respondent did not file a Response.

6. Discussion and Findings

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.

Domain name is confusingly similar/identical to a trademark or service mark

in which the Complainant has rights

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.

Respondent has no rights or legitimate interests in respect of the disputed

domain name

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.

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

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.

7. Decision

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.

Andrew Brown

Sole Panelist

Dated: April 30, 2002

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