WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. Dot Liban, Hanna El Hinn
Case No. D2002-0433
1. The Parties
The Complainant is Expedia, Inc., a corporation with its principal place of business in Bellevue, Washington, United States of America.
The Respondent is Dot Liban, Hanna El Hinn of P.O. Box 56002, Montreal, Quebec, Canada, H3Z 3G3.
2. The Domain Names and Registrar
The domain names which are the subject of this dispute are:
The Registrar with which the domain names are registered is eNom, Inc.
3. Procedural History
The Complainant initiated the proceeding by filing a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 4, 2002 and in hardcopy on May 6, 2002. The Complainant elected to have the dispute decided by a single-member Administrative Panel.
On May 14, 2002, the Registrar verified that the domain names were registered with it, that the Respondent is the current registrant of the domain names, the Respondent's full contact details and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain names.
On May 16, 2002, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of the Center ("the Supplemental Rules").
On May 16, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier (with attachments) and facsimile and e-mail (without attachments). The Center advised that a Response was due by June 5, 2002.
A Response was received from the Respondent by the Center, by e-mail on May 20, 2002 and in hardcopy on May 27, 2002.
Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties on June 7, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision Date was June 21, 2002. The Panelist sought an extension in accordance with Paragraph 10(c) of the Rules.
The Panelist's decision is based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the owner of the trademark EXPEDIA, first registered by its predecessor-in-interest, Microsoft Corporation ("Microsoft"). The Complainant is the owner of the following US trademark registrations:
Trademark
Date of Registration
Class
EXPEDIA
June 23, 1998
Class 9
EXPEDIA
September 5, 2000
Class 16
EXPEDIA
November 7, 2000
Class 25
EXPEDIA
January 26, 1999
Class 39
EXPEDIA
April 20, 1999
Class 42
EXPEDIA
February 16, 1999
Class 42
EXPEDIA.COM
November 21, 2000
Class 39
In addition, the Complainant has numerous pending trademark applications worldwide for registration of the Expedia marks and other marks owned by the Complainant.
The Complainant offers travel-related services in connection with the mark EXPEDIA. The Complainant has been using the marks EXPEDIA and EXPEDIA.COM on or in connection with its travel-related goods and services since 1996. Expedia is a leading travel site on the Internet and conducts business throughout the United States and internationally (see ).
According to the WHOIS database maintained by eNom, Inc., the Respondent is the registrant and billing, administrative and technical contact for each of the domain names. The status of the domain names is "active". The domain names were all created on February 26, 2002.
The Complainant's attorneys, by letter sent by e-mail and Federal Express dated April 4, 2002, contacted the Respondent about the domain names in dispute. That letter said in part as follows:
"It has recently come to Expedia's attention that you have registered the Domain Names with eNom, Inc. You have pointed , , , and to the Web site. Further, the domain name points to a Web site for the business eStat. Moreover, as the Domain Names contain common typographical errors to the mark EXPEDIA, there is a likelihood of confusion that the Domain Names and any goods and services related thereto are sponsored by, affiliated with or endorsed by Expedia. Consequently, your registration and use of the Domain Names constitutes an act of trademark infringement and unfair competition. Therefore, Expedia must insist that you immediately transfer the registration of the Domain Names to Expedia."
The letter sought undertakings to that effect by April 19, 2002.
The Respondent responded to that letter by e-mail dated April 14, 2002, as follows:
"Further to your E-mail kindly note that the domain name is now also pointing to your client's Web site . The fact that it was pointing to Estat was an error that is now corrected.
All the domain names in question are pointing to your client's Web site and will always be pointing to your client's web site, thus there is no infringement of anyone's trademark, no likelihood of confusion in destination, and no need for transfer."
5. Parties� Contentions
A. Complainant
The Complainant contends that the subject domain names are confusingly similar to the Expedia marks in appearance, sound, connotation and commercial impression. In particular, the Complainant asserts that "the addition of the letters 'o' and 'u' and the number '8' to the mark EXPEDIA does not create new or different marks to which the Respondent has rights. The fact that the Respondent has added the letters 'o' and 'u' and the number '8' to the formative mark EXPEDIA to create the Subject Domain Names creates a likelihood of confusion with Complainant's Expedia Marks".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the subject domain names.
The Complainant contends that the Respondent has neither used nor made any demonstrable preparations to use the subject domain names before notice of the dispute in connection with a bona fide offering of goods and services. In support of this contention, the Complainant contends that the subject domain names have been pointed to the Complainant's Web site since the time of their registration. The Complainant notes that the Respondent is neither licensed nor authorized by the Complainant to use the Expedia marks or to direct the subject domain names to the Complainant's Web site. The Complainant argues that, as the Respondent is squatting on the subject domain names, pursuant to the Policy, the Respondent should be considered as having no rights or legitimate interest with respect to the subject domain names.
The Complainant further contends that the Respondent is not commonly known by the subject domain names. The Complainant contends that the Respondent has merely added the letters "u" and "o" and the number "8" to the mark EXPEDIA to create the subject domain names. The Complainant contends that this is commonly known as "typo-squatting". The Complainant had previously asserted that the Complainant's mark is arbitrary with no meaning except as an identifier of the Complainant's goods and services. As such, the Complainant contends that the subject domain names do not create a separate and distinct trade name or trademark by which the Respondent can be commonly known.
The Complainant also contends that the Respondent is diluting the trademark and service mark rights of the Complainant as the addition of the letters and number
