A plan to create a pornography-only internet domain has failed. The body in charge of the internet's naming system, the International Corporation for Assigned Names and Numbers (ICANN) has rejected a bid by British businessman Stuart Lawley.
The bid would have created a top level domain purely for pornographic content in which addresses would have ended in .xxx. Lawley claimed that the domain would help pornography companies to adopt best business practices, but ICANN said that the proposal did not meet its criteria, and that the proposal would make ICANN responsible for monitoring content, which it did not want to do...
Wednesday, April 4, 2007
.XXX Porn domain defeated at ICANN
From OUT-LAW.com: "Porn domain defeated at ICANN":
Loopholes lure Internet entrepreneurs to domains
From the Ventura County Star: "Loopholes lure Internet entrepreneurs to domains":
Entrepreneurs have been taking advantage of a five-day grace period to sample millions of domain names, keeping the relative few that might generate advertising revenues and dropping the rest before paying. It's akin to buying new clothes on a charge card only to return them for a full refund after wearing them to a big party.
The grace period was originally designed to rectify legitimate mistakes, such as registrants mistyping the domain name they are about to buy. But with computer automation and a burgeoning online advertising market, entrepreneurs have turned the return policy into a loophole for generating big bucks.
Tuesday, April 3, 2007
Bill Gates's Corbis loses battle for corbis.net
From The Register: "Bill Gates's Corbis loses battle for corbis.net":
Stock photography company Corbis has lost its battle to gain control of the domain corbis.net. The company's claims that the small web design firm that owns the name registered it in bad faith were rejected.
Saturday, March 31, 2007
Eliot Spitzer Reclaims Domain Names from Cybersquatter
In the case of Eliot Spitzer v. Eliot Spitzer, FA 919828 (Nat. Arb. Forum Mar. 20, 2007), the Panel agreed with the New York state Governor that the domain names eliotspitzer.com and eliotspitzer.org should be transferred to him.
Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark or service mark in which the Complainant has any rights, the Panel noted that although Complainant did not have a federal trademark registration associated with the ELIOT SPITZER mark, a federal registration was unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant asserted common law rights in the ELIOT SPITZER mark through the continuous and ongoing use of the mark as Governor of New York and as a prominent public figure, establishing secondary meaning in the mark. The Panel found that Complainant’s continuous and ongoing use of the mark was sufficient to establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contended that Respondent’s eliotspitzer.com and eliotspitzer.org disputed domain names were identical to Complainant’s protected mark. The disputed domain names contained Complainant’s mark in its entirety and merely add the generic top-level domains (“gTLDs”) “.com” and “.org.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to sufficiently distinguish the domain names from the 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 Respondent was not currently using the disputed domain names to resolve to any content. The Panel found that Respondent’s failure to associate any content with its disputed domain names evinced a lack of right or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent had not proffered any evidence to suggest that it was commonly known by the disputed domain names, or that it was licensed or permitted to use or own any domain name registrations that were identical to Complainant’s mark. Although Respondent’s WHOIS information listed “Eliot Spitzer” as the registrant of the disputed domain name, the Panel found that there was no evidence showing that Respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Turning finally to the question of whether the domain names were registered and used in bad faith, the Panel held that Respondent’s failure to resolve its disputed domain names to any content evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel granted Governor Eliot Spitzer's request that the eliotspitzer.com and eliotspitzer.org domain names be transferred to him.
Turning first to the question of whether the domain names registered by Respondent were identical or confusingly similar to a trademark or service mark in which the Complainant has any rights, the Panel noted that although Complainant did not have a federal trademark registration associated with the ELIOT SPITZER mark, a federal registration was unnecessary to establish rights in the mark pursuant to Policy ¶ 4(a)(i). Complainant asserted common law rights in the ELIOT SPITZER mark through the continuous and ongoing use of the mark as Governor of New York and as a prominent public figure, establishing secondary meaning in the mark. The Panel found that Complainant’s continuous and ongoing use of the mark was sufficient to establish secondary meaning in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contended that Respondent’s eliotspitzer.com and eliotspitzer.org disputed domain names were identical to Complainant’s protected mark. The disputed domain names contained Complainant’s mark in its entirety and merely add the generic top-level domains (“gTLDs”) “.com” and “.org.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to sufficiently distinguish the domain names from the 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 Respondent was not currently using the disputed domain names to resolve to any content. The Panel found that Respondent’s failure to associate any content with its disputed domain names evinced a lack of right or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent had not proffered any evidence to suggest that it was commonly known by the disputed domain names, or that it was licensed or permitted to use or own any domain name registrations that were identical to Complainant’s mark. Although Respondent’s WHOIS information listed “Eliot Spitzer” as the registrant of the disputed domain name, the Panel found that there was no evidence showing that Respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Turning finally to the question of whether the domain names were registered and used in bad faith, the Panel held that Respondent’s failure to resolve its disputed domain names to any content evinced registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel granted Governor Eliot Spitzer's request that the eliotspitzer.com and eliotspitzer.org domain names be transferred to him.
Wednesday, March 21, 2007
American Airlines Recaptures SHAREAAMILES.COM Domain Name from Cybersquatter
In the case of American Airlines, Inc. v. Jucco Holdings, FA 914853 (Nat. Arb. Forum Mar. 19, 2007), American Airlines successfully wrestled the shareaamiles.com domain name from a cybersquatter.
Complainant, American Airlines, Inc., is one of the world’s largest airlines. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the SHAREAAMILES mark (Reg. No. 2,755,924 issued August 16, 2003).
Respondent registered the shareaamiles.com domain name on June 15, 2004. The disputed domain name resolved to a website featuring category links, some of which led to websites operated by airlines in competition with Complainant.
Turning first to the question of whether the domain name registered by Respondent was identical or confusingly similar to a trademark or service mark in which Complainant had rights, the Panel noted that the Complainant asserted rights in the SHAREAAMILES mark through registration with the USPTO. The Panel found that Complainant’s timely registration and subsequent use of the SHAREAAMILES mark sufficiently established rights in the mark for purposes of Policy ¶ 4(a)(i). Complainant further asserted that its SHAREAAMILES mark was identical to Respondent’s shareaamiles.com domain name. The disputed domain name contained Complainant’s mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to establish distinctiveness in the 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 name at issue, the Panel noted that Complainant alleged that Respondent was using the disputed domain name to operate a website featuring links to commercial, third-party websites, some of which were competitors of the Complainant. Presumably, Respondent received referral fees for each misdirected Internet user. The Panel found that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use in accordance with Policy ¶ 4(c)(iii).
Furthermore, an investigation of Respondent’s WHOIS information revealed that the registrant of the shareaamiles.com domain name was “Jucco Holdings.” In lieu of any information proffered by Respondent to indicate otherwise, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning lastly to the question of whether the domain name was registered and used in bad faith, the Panel noted that Internet users, presumably wishing to locate a website operated by Complainant, were likely to be confused as to the source of the resultant website. Further, Respondent’s use of the disputed domain name apparently redirected unsuspecting Internet users to competitors of Complainant. The Panel therefore found that Respondent’s actions constituted a disruption of Complainant’s business, thereby evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). Presumably, Respondent received monetary gain from its attempt to redirect Internet users to its website. The Panel found that Respondent’s use constituted an attraction for commercial gain, which further evinced registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the shareaamiles.com domain name should be transferred to American Airlines.
Complainant, American Airlines, Inc., is one of the world’s largest airlines. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the SHAREAAMILES mark (Reg. No. 2,755,924 issued August 16, 2003).
Respondent registered the shareaamiles.com domain name on June 15, 2004. The disputed domain name resolved to a website featuring category links, some of which led to websites operated by airlines in competition with Complainant.
Turning first to the question of whether the domain name registered by Respondent was identical or confusingly similar to a trademark or service mark in which Complainant had rights, the Panel noted that the Complainant asserted rights in the SHAREAAMILES mark through registration with the USPTO. The Panel found that Complainant’s timely registration and subsequent use of the SHAREAAMILES mark sufficiently established rights in the mark for purposes of Policy ¶ 4(a)(i). Complainant further asserted that its SHAREAAMILES mark was identical to Respondent’s shareaamiles.com domain name. The disputed domain name contained Complainant’s mark in its entirety and merely added the generic top-level domain (“gTLD”) “.com.” The Panel found that the addition of a gTLD to an otherwise identical mark failed to establish distinctiveness in the 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 name at issue, the Panel noted that Complainant alleged that Respondent was using the disputed domain name to operate a website featuring links to commercial, third-party websites, some of which were competitors of the Complainant. Presumably, Respondent received referral fees for each misdirected Internet user. The Panel found that Respondent’s use of the disputed domain name was neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use in accordance with Policy ¶ 4(c)(iii).
Furthermore, an investigation of Respondent’s WHOIS information revealed that the registrant of the shareaamiles.com domain name was “Jucco Holdings.” In lieu of any information proffered by Respondent to indicate otherwise, the Panel found that Respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Turning lastly to the question of whether the domain name was registered and used in bad faith, the Panel noted that Internet users, presumably wishing to locate a website operated by Complainant, were likely to be confused as to the source of the resultant website. Further, Respondent’s use of the disputed domain name apparently redirected unsuspecting Internet users to competitors of Complainant. The Panel therefore found that Respondent’s actions constituted a disruption of Complainant’s business, thereby evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). Presumably, Respondent received monetary gain from its attempt to redirect Internet users to its website. The Panel found that Respondent’s use constituted an attraction for commercial gain, which further evinced registration and use in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the shareaamiles.com domain name should be transferred to American Airlines.
Tuesday, March 20, 2007
Enterprise-Rent-A-Car Reclaims CARENTERPRISERENT.INFO Domain Name from Cybersquatter
In the case of Enterprise Rent-A-Car Company v. Marco Costa, FA 908572 (Nat. Arb. Forum Mar. 13, 2007), Enterprise Rent-A-Car was able to get the carenterpriserent.info domain name transferred to it from a cybersquatter.
Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks. Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks. Complainant also holds registrations for the enterpriserentacar.com and enterprise.com domain names for use in connection with its business.
Respondent registered the carenterpriserent.info domain name on April 15, 2006. Respondent was using the disputed domain to redirect Internet users to its website.
Addressing first the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that Complainant had established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO. Complainant also held registrations of its marks in Portugal, the country in which Respondent appeared to be located. The Panel found that Complainant’s registrations of its marks created rights in those marks as required under Policy ¶ 4(a)(i).
The Panel also found that Respondent’s carenterpriserent.info domain name was confusingly similar to Complainant’s marks. The disputed domain name included the word “enterprise” in its entirety, which was present in both of Complainant’s marks, plus the words “car” and “rent” which were features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms did not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” were deemed descriptive of Complainant’s business. The Panel therefore found that the disputed domain name was confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel held that Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Indeed, there was no available evidence that Respondent was commonly known by the carenterpriserent.info domain name. Respondent’s WHOIS information identified Respondent as “Marco Costa”--a name with no obvious relationship to the disputed domain name. Further, Respondent was not affiliated with or sponsored by Complainant in any way. The Panel therefore found that Respondent was not commonly known by the disputed domain name and had not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Turning finally to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel noted that Respondent’s inclusion of Complainant’s marks in its domain name suggested that Respondent registered and was using the disputed domain name in bad faith. Because the carenterpriserent.info domain name was confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent was profiting from this confusion. The Panel therefore found that such use was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the carenterpriserent.info domain name should be transferred to Complainant Enterprise Rent-A-Car.
Complainant, Enterprise Rent-A-Car Company, is a well known provider of vehicle rental, leasing and sales services. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the ENTERPRISE (Reg. No. 1,343,167 issued June 18, 1985) and ENTERPRISE RENT-A-CAR (Reg. No. 2,371,192 issued July 25, 2000) marks. Complainant also holds registrations with the Portugal Instituto Nacional da Propriedade Industrial for the ENTERPRISE (Reg. No. 294,354 issued November 11, 1994) and ENTERPRISE RENT-A-CAR (Reg. No. 345,883 issued April 9, 2001) marks. Complainant also holds registrations for the enterpriserentacar.com and enterprise.com domain names for use in connection with its business.
Respondent registered the carenterpriserent.info domain name on April 15, 2006. Respondent was using the disputed domain to redirect Internet users to its website.
Addressing first the question of whether the domain name was identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted that Complainant had established rights in the ENTERPRISE and ENTERPRISE RENT-A-CAR marks through registrations of those marks with the USPTO. Complainant also held registrations of its marks in Portugal, the country in which Respondent appeared to be located. The Panel found that Complainant’s registrations of its marks created rights in those marks as required under Policy ¶ 4(a)(i).
The Panel also found that Respondent’s carenterpriserent.info domain name was confusingly similar to Complainant’s marks. The disputed domain name included the word “enterprise” in its entirety, which was present in both of Complainant’s marks, plus the words “car” and “rent” which were features of Complainant’s ENTERPRISE RENT-A-CAR mark. Merely reordering the terms did not distinguish the disputed domain name from Complainant’s marks. Additionally, the terms “car” and “rent” were deemed descriptive of Complainant’s business. The Panel therefore found that the disputed domain name was confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
Turning next to the question of whether the Respondent had any rights or legitimate interests in the domain name at issue, the Panel held that Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as contemplated by Policy ¶¶ 4(c)(i) and (iii). Indeed, there was no available evidence that Respondent was commonly known by the carenterpriserent.info domain name. Respondent’s WHOIS information identified Respondent as “Marco Costa”--a name with no obvious relationship to the disputed domain name. Further, Respondent was not affiliated with or sponsored by Complainant in any way. The Panel therefore found that Respondent was not commonly known by the disputed domain name and had not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Turning finally to the question of whether the Respondent had registered and used the domain name in bad faith, the Panel noted that Respondent’s inclusion of Complainant’s marks in its domain name suggested that Respondent registered and was using the disputed domain name in bad faith. Because the carenterpriserent.info domain name was confusingly similar to Complainant’s marks, Internet users seeking Complainant’s genuine website may instead find themselves misdirected to Respondent’s website. Presumably, Respondent was profiting from this confusion. The Panel therefore found that such use was evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concluded that the carenterpriserent.info domain name should be transferred to Complainant Enterprise Rent-A-Car.
Monday, March 19, 2007
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.
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.
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