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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Expedia, Inc. v. Miles Pennella

Case No. D2001-1416

 

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, WA 98008, United States of America.

Represented by Seann W. Hallisky, Esq., Christensen O’Connor Johnson Kindness^PLLC, 1420 Fifth Avenue, Suite 2800, Seattle, Washington 98101-2347, United States of America.

The Respondent is Miles Pennella, 18909 Lloyd Circle, Suite 125, Dallas, TX 75252, United States of America.

Represented by: Representing itself.

 

2. The Domain Name and Registrar

The domain name at issue is <expediamortgage.com>.

The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, United States of America.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on November 30, 2001, and in hard copy on December 4, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("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 ("the Supplemental Rules") and that the payment required for this proceeding was properly made. An Addendum to Complaint was received by the Center by e-mail on December 6, 2001, and in hard copy on December 12, 2001. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly noticed to Respondent according to Paragraph 2(a) of the Rules. Respondent was informed that the last day for filing its Response was January 6, 2002. On January 3, 2002, Respondent requested for an extension of time to submit its Response. Upon the consent of Complainant, the due date for submitting a Response was extended for ten (10) days till January 16, 2002. No Response has been received. The Center issued to the Respondent a Notification of Respondent Default on January 18, 2002, informing Respondent of the consequences of its default.

The Panel has been properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by the Center or the Panel. Consequently, the date scheduled for the issuance of the Panel’s Decision, pursuant to the request of the Sole Panelist, is March 14, 2002.

 

4. Factual Background

Complainant, Expedia, Inc., owns a number of United States trademark and service mark registrations for the mark "EXPEDIA" and "EXPEDIA.COM." The mark EXPEDIA was first registered as a trademark on or about June 23, 1998, and as a service mark on or about January 26, 1999, by Complainant’s predecessor-in-interest Microsoft Corporation. In addition, Complainant has numerous pending applications worldwide for the registration of the mark EXPEDIA.

Complainant has been using its marks EXPEDIA and EXPEDIA.COM on or in connection with its travel-related goods and services since at least as early as 1996. Since its debut, Complainant’s mark EXPEDIA has become one of the most famous Internet e-commerce brands.

On or about January 23, 2001, Respondent, Miles Pennella, registered the domain name <expediamortgage.com> with Network Solutions, Inc. The website in connection with the domain name at issue has been inactive since the registration of the domain name.

On or about March 29, 2001, and July 31, 2001, Complainant, by and through its attorneys, notified Respondent via letters of Complainant’s objection to Respondent's use of a second-level domain that is confusingly similar to Complainant's EXPEDIA trademarks and service marks. Respondent did not respond to either letter.

Following Respondent’s initiative for a potential settlement of the dispute on or about December 3, 2001, Complainant, by and through its attorneys, telephoned Respondent and attempted to negotiate a settlement of the dispute on or about December 4, 2001. Complainant offered Respondent US$250.00 for his out-of-pocket expenses associated with the registration of the domain name at issue. Respondent rejected Complainant’s offer and counteroffered by stating that the domain name is worth between US$10,000.00 and US$15,000.00. Complainant found Respondent’s counteroffer to be excessive and therefore rejected the same.

 

5. The Parties’ Contentions

5.1. Complainant

Complainant contends that the domain name at issue is identical or confusingly similar to Complainant’s registered trademarks or service marks EXPEDIA. Complainant also contends that Respondent has no right or legitimate interest with respect of the domain name at issue. Complainant claims that Respondent has neither used nor made demonstrable preparations to use the domain name at issue before notice of the dispute in connection with a bona fide offering of goods or services, that Respondent is not commonly known by the domain name at issue, and that Respondent is diluting Complainant’s registered trademarks and service marks. Complainant further contends that the domain name at issue was registered and is being used in bad faith.

Complainant requests that the contested domain name be transferred to Complainant.

5.2. Respondent

Respondent has submitted no Response.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that a Respondent submit to a mandatory administrative proceeding if a Complainant asserts that:

(i) 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

(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.

In this case, even though Respondent filed no Response and offered no evidence rebutting the Complainant’s contentions. In accordance with Paragraphs 5(e), 14 (a) and 15 (a) of the Rules, the Panel nevertheless reviews the evidence before it to determine whether Complainant has supported each of the above required elements in its contentions within the existing record.

6.1. Identity or Confusing Similarity

In connection with Paragraph 4(a)(i) of the Policy, the Panel finds that the domain name <expediamortgage.com> is identical to or confusingly similar to Complainant’s registered trademarks and service marks EXPEDIA. Complainant's marks EXPEDIA are an arbitrary term that has no meaning except as an identifier of Complainant's goods and services. The addition of a common or generic term "mortgage" following the mark EXPEDIA does not create a new or different mark in which Respondent has rights. Accordingly, for purpose of Paragraph 4(a)(i) of the Policy, the domain name at issue is identical to or confusingly similar to Complainant’s registered marks EXPEDIA.

6.2. Rights or Legitimate Interests

In connection with Paragraph 4(a)(ii) of the Policy, the Panel finds that Complainant exclusively owns the federal trademark and service mark registrations for the mark EXPEDIA. Respondent has neither used nor made demonstrable preparations to use the domain name at issue before notice of the dispute in connection with a bona fide offering of goods or services. In fact, the domain name at issue has been inactive since its registration. Further, Respondent is not commonly known by the domain name at issue. Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain name at issue.

6.3. Bad Faith

The Panel notes that Paragraph 4(a)(iii) of the Policy will be satisfied only if the Complainant proves that the domain name registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith. See WIPO Case No. D2000-0003.

In this case, Complainant obtained a number of United States trademark and service mark registrations for marks EXPEDIA and EXPEDIA.COM, which became public notice as early as June 23, 1998. There is no evidence that Respondent was unaware of Complainant’s registered trademarks and service marks when Respondent registered the subject domain name. Accordingly, the Panel finds that the domain name at issue has been registered in bad faith.

With respect to the use aspect of Paragraph 4(a)(iii), the record shows that the website in connection with the domain name at issue has been inactive since the registration of the subject domain name. Accordingly, the Panel finds that Respondent’s inaction constitutes a passive holding of the domain name.

It has been well established that Respondent’s passive holding of the domain name amounts to a bad faith use of the domain name in certain circumstances. To determine whether the circumstances in this case lead Respondent’s passive holding to its bad faith use of the domain name, the Panel looks at all circumstances related to Respondent’s behavior. Id.

Similar and in addition to the particular circumstances found in the WIPO Case No. D2000-0003 Decision, the Panel in this case finds the following circumstances:

(a) Complainant’s registered trademarks and service marks EXPEDIA are an arbitrary term and therefore are entitled to strong protection;

(b) Complainant’s registered marks EXPEDIA are famous as evidenced by its substantial use in the United States;

(c) Complainant registered the service mark EXPEDIA.COM on or about November 21, 2000, and has been using the same since 1996;

(d) there is no evidence of any actual or contemplated good faith use by Respondent of the domain name at issue; and

(e) Respondent made excessive counteroffer to Complainant’s request to settle the subject domain name dispute.

In light of the above particular circumstances, the Panel concludes that Respondent’s passive holding of the domain name in this case meets the requirement of Paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.

Finally, Respondent’s failure to present any evidence or to deny Complainant’s contentions allows an inference that the evidence if presented would not have been favorable to Respondent. See WIPO Case No. D2000-0004. Therefore, the Panel finds that Respondent has registered and is using the domain name in bad faith.

 

7. Decision

Based on the above findings, the Panel concludes that (a) the domain name at issue is either identical or confusingly similar to Complainant’s registered trademarks and service marks EXPEDIA, (b) Respondent has no rights or legitimate interest in the domain name at issue, and (c) Respondent has registered and is using the domain name in bad faith. Therefore, pursuant to Paragraph 4(a) of the Policy, the Panel orders that the domain name at issue be transferred to Complainant.

 

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Charles E. Miller
Sole Panelist

Dated: March 14, 2002