Expedia Reclaims Nine Domain Names from Cybersquatter

In the case of Expedia, Inc. v. Domain Explorer, FA 904266 (Nat. Arb. Forum Mar. 19, 2007), Expedia recaptured no less than nine domain names from a cybersquatter.

Complainant, Expedia, Inc., is in the business of providing a wide variety of services over the Internet, but it is best known for providing discount travel services via the Internet. Complainant holds trademark registrations with the United States Patent and Trademark Office for the the EXPEDIA.COM mark (including Reg. No. 2,405,746 issued November 21, 2000 and Reg. No. 2,610,291 issued August 20, 2002). Complainant has used the EXPEDIA.COM marks continuously and extensively since 1996 and has invested millions of dollars in advertising and promotions of its mark and has sold or licensed many hundreds of millions of dollars in goods and services associated with the EXPEDIA.COM mark.

Respondent registered the expediz.com, 3xpedia.com, 4xpedia.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names on July 21, 2002 and registered the expediq.com domain name on March 5, 2003. The disputed domain names resolve to Complainant’s homepage at the expedia.com domain name. Respondent was previously enrolled in Complainant’s associate program. Respondent’s participation in that program was terminated, and Respondent is no longer affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use Complainant’s mark.

Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark in which Complainant had rights, the Panel noted that Complainant had established rights in the EXPEDIA.COM mark through registration with the USPTO. The Panel found that such registration is sufficient to establish rights as required by Policy ¶ 4(a)(i). Respondent’s expediz.com, 3xpedia.com, 4xpedia.com, expediq.com, ex0edia.com, expddia.com, expsdia.com, expexia.com, and exp4dia.com domain names were confusingly similar to Complainant’s EXPEDIA.COM mark. The disputed domain names contained the dominant features of Complainant’s mark and omitted letters and added letters or numbers in their place. The Panel found that such alterations to Complainant’s mark in order to create a misspelling of Complainant’s mark did not overcome the confusing similarity between the disputed domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).

Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain names at issue, the Panel noted that due to Respondent’s affiliation with Complainant’s associate program, Respondent’s registration made it possible to impute that Respondent may have registered the disputed domain names with the intention of taking advantage of Complainant’s associate program by using the confusingly similar domain names to redirect Internet users through Respondent’s domain names to Complainant’s website, generating referral fees for Respondent. The panel found that Respondent’s use of the disputed domain names did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial use pursuant to Policy ¶ 4(c)(iii).

Furthermore, there was no evidence that Respondent was commonly known by the disputed domain names. Respondent’s WHOIS information identified Respondent as “Domain Explorer.” Complainant asserted that while Respondent was once a member of Complainant’s associate program, Respondent was no longer affiliated or sponsored by Complainant and Respondent did not now, nor did it ever, have permission to use Complainant’s mark in a domain name. Thus, the Panel found that Respondent was not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).

Addressing the issue of whether the Respondent had registered and used the domain names in bad faith, the Panel noted that Respondent intentionally registered domain names that were confusingly similar to Complainant’s mark for Respondent’s commercial gain. The disputed domain names diverted Internet users who sought Complainant’s EXPEDIA.COM mark to Complainant’s expedia.com homepage through the use of domain names that were confusingly similar to Complainant’s marks. Furthermore, Respondent was unfairly and opportunistically benefiting from the goodwill associated with Complainant’s EXPEDIA.COM mark. Respondent’s practice of diversion, motivated by commercial gain, therefore constituted bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

Furthermore, the Panel noted that Complainant had engaged in extensive advertising under the EXPEDIA.COM mark, making the mark quite popular and commonly known. However, even if Respondent was unaware of Complainant’s marks, once Respondent enrolled in Complainant’s associate program, Respondent had actual knowledge of Complainant’s rights in the mark. The Panel found that Respondent’s registration of the disputed domain names, despite knowledge of Complainant’s rights in the mark, was evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Having established all three elements required under the ICANN Policy, the Panel concluded that the domain names be transferred to Complainant Expedia.