ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Expedia, Inc. v. M D Lawrence
Case No. D2013-0061 1. The Parties
Complainant is Expedia, Inc. of Bellevue, Washington, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is M D Lawrence of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On January 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 14, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is an online travel services company based in the United States of America. Complainant offers numerous travel services, including individualized travel packages under its CLASSIC VACATIONS mark. Complainant owns registrations for this mark in the United States, where Respondent lists its address of record. These registrations include United States Trademark Registration No. 2,942,278 (Registered 2005). Complainant is also the owner, by assignment, since 2003 of the mark CLASSIC, for “organizing classic vacation and package tours,” United States Trademark Registration No. 1,093,417 (Registered 1978). Complainant owns numerous other marks for travel services which include the term “classic” with various geographic or other terms, including CLASSIC HAWAII, CLASSIC AMERICA, CLASSIC EUROPE, CLASSIC TAHITI, CLASSIC SOUTH PACIFIC, as well as CLASSIC GATHERINGS, CLASSIC INSIGHTS, and CLASSIC ROMANCE. Complainant has also used the term “timeless” in connection with its CLASSIC VACATIONS travel offerings and promotions.
Complainant owns the registration for the domain name (registered on May 13, 1997), which it uses to connect to an active website through which it offers consumers information about its online travel services. Complainant also owns other domain name registrations which include its CLASSIC VACATIONS mark, including , , and .
The disputed domain name was registered on February 16, 2007. Respondent has no affiliation with Complainant. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise services that are unaffiliated with Complainant or Complainant’s services. These include links travel services offered by competitors of Complainant. Complainant has not authorized these activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainants
Complainant contends that: (i) is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not file a reply to Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name directly incorporates Complainant’s registered trademark CLASSIC VACATIONS. Accordingly, consumers would expect to find travel services information offered by Complainant on the website to which the disputed domain name refers. The Panel finds that the added word “timeless” would be perceived by Internet users as referring to the types of vacations that they may hope to find on this website. This is particularly so, since Complainant has itself used the term “timeless” in connection with its CLASSIC VACATIONS mark, along with other geographic and non-geographic terms.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional wording does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; and Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500. Again, this is particularly so, where the Complainant, as here, is already using the additional word along with its mark in its own advertising.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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.”
Respondent did not submit a reply to the Complaint, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users, via sponsored links, to a websites that are competing with Complainant or Complainant’s goods and services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where:
“by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 [respondent’s] website or location or of a product or service on [the] web site or location”.
As noted in Section 4 of this Panel’s decision, Respondent has a parked webpage at the URL associated with the disputed domain name, with sponsored links to other websites. Several of these offer services by competitors of Complainant. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: February 20, 2013
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