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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Expedia, Inc v Bluestone Ventures Pty Ltd [2009] DRS 6524 (13 January 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6524.html Cite as: [2009] DRS 6524 |
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Complainant: Expedia, Inc
Country: United States
Respondent: Bluestone Ventures Pty Ltd
Country: Australia
expedi.co.uk
expedai.co.uk
expdeia.co.uk
exedia.co.uk
exepdia.co.uk
expediaa.co.uk
3.1 The Complaint was received by Nominet, on 13 November 2008. On 14 November 2008, Nominet validated the Complaint and took appropriate steps to notify the Respondent of the Complaint.
3.2 No response was received from the Respondent so informal mediation was not possible. As such, the Complainant was invited to apply for a summary or full expert decision on 8 December 2008, as provided for by Nominet's Dispute Resolution Policy (the "Policy").
3.3 On 10 December 2008, the Complainant paid the fee to obtain the full expert decision, pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service (the "Procedure").
3.4 On 10 December 10 2008, Dr Russell Richardson was selected as the expert (the "Expert"). He subsequently confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4.1 The Complainant is an online travel retailer. It owns a number of registered Community and U.K. trade marks for the word EXPEDIA (or with that word in the trade mark) (the "Trade Marks").[1] The Trade Marks are for, in general, goods and services for travel and travel-related topics including internet communication and travel services.
4.2 The Complainant registered the UK domain name, expedia.co.uk, on 17 October 1996 ("its website") and started trading on-line via its website on 3 December 1998. The Complainant has traded consistently in the U.K. via its website from that date until the date of the Complaint.
4.3 The Complainant has generally advertised its goods and services since that date using the EXPEDIA mark/name via its website and via adverts on television, in cinemas, and in print media.
4.4 It has received various reviews of, and awards for, its website. For example, The Times reported on 19 February 2000 that its website was: "one of the 50 best travel sites on the Web." The Net reported in March 2000 that its website was named as the: "No. 1 site "to find the best holiday and flight deals."" The Complainant also won the 'new media award' at the New Media Age Effectiveness Awards, in June 1999 and June 2000.
4.5 The Respondent is a company incorporated in Australia, on 28 April 2005, and registered the Domain Names on the following dates:
expedi.co.uk – 19 July 2000;
expedai.co.uk – 5 March 2002;
expdeia.co.uk – 5 March 2002;
exedia.co.uk – 26 March 2002;
exepdia.co.uk – 26 March 2002; and
expediaa.co.uk – 26 March 2002.
Complainant:
5.1 In summary, the Complainant argues that the Respondent has no legitimate rights to the Domain Names because:
- the mark EXPEDIA is a distinctive mark to the goods and services supplied by the Complainant.
- (In particular, the Complainant relies on Community Trade Mark number E372060 for the mark EXPEDIA (registered on 7 May 1999) and for Community Trade Mark number E1240449 for the mark EXPEDIA.COM (applied for on 12 July 1999); both covering the provision of electronic information concerning travel services, and both of which pre-date the registration of the Domain Names.)
- Additionally, the Complainant had already accrued substantial goodwill and reputation in the EXPEDIA mark in connection with online travel goods and services through its website, prior to the Respondent registering the first of the Domain Names in [19 July] 2000 [being expedi.co.uk].
- The Domain Names are all confusingly similar variants of the EXPEDIA mark (by way of misspelling and all starting with the letters "ex"). They are being used for the same goods and services for which the Trade Marks are registered, by resolving to websites/holding pages wholly concerned with the provision of travel-related goods and services.
- For example, each of the Domain Names point to a website either containing advertising links (such as www.firstchoice.co.uk, www.EasytoBook.com, www.ofstravel.com, www.octopustravel.co.uk, travelsupermarket.com) which are to direct competitors of the Complainant, or containing search terms which are related to the travel industry and would be of relevance to users seeking to research or book holidays online.
- The Respondent was and is aware of the reputation of the EXPEDIA brand and has deliberately chosen to exploit that reputation and the Complainant's rights in the EXPEDIA mark, including its widely recognised association with online travel-related goods and services, in order to gain a financial advantage.
- As such, the Respondent's intention at the time of registration of each of the Domain Names was, and it continues to be, to benefit from the goodwill and reputation of the EXPEDIA mark in relation to travel services (by confusing the public into believing that the Domain Names and the websites that they point to are associated in some way with the Complainant).
- Further, given the time for which the Domain Names have been registered and their current use, the Respondent has no intention of using the Domain Names' websites for any legitimate purpose.
- The Complainant, therefore, contends that - at the time of registration of each of the Domain Names, the Respondent was taking, and that the Respondent continues to take, unfair advantage of the goodwill and reputation and other proprietary rights of the Complainant in its EXPEDIA mark.
- In addition, the Complainant contends that the Respondent's actions cause unfair detriment to the Complainant. The Complainant's competitors receive business and advertising which is derived from the reputation and goodwill in the EXPEDIA name by web-users being directed to competitors' websites when they were looking for similar goods and services under the EXPEDIA brand. As such, the Complainant loses (at the Respondent's gain) Internet traffic and pay-per-click revenue.
- Finally, it is a continuing practice of the Respondent to acquire domain names with deliberate misspellings in respect of well known businesses/brands, such as Alliance & Leicester, American Express, Thomas Cook, with the clear intention of taking advantage of their goodwill and reputation to which the Respondent has no apparent rights.
As such, the Complainant has asked for the Domain Names to be transferred to it.
5.2 In support of the Complaint, the Complainant submitted various exhibits giving evidence of: the results of various WHOIS enquiries as mentioned below; webpage print-outs of the Complainant's websites, from various jurisdictions, and for various years; the Trade Mark entries referred to in paragraph 4.1 above; its US Annual Report and Accounts for the year ending June 2001; its Annual Turnover figures, 1999 - 2006; various magazine/tube/bus/taxi/radio adverts for its goods and services; its awards; and, webpage print-outs from the Domain Names' websites.
5.3 The Complainant also drew the Expert's attention to the decision in Nominet DRS case, Holiday Autos International Limited v Bluestone Ventures Pty Ltd (2007); which involved the Respondent.[2]
Respondent:
5.4 No response to the Complaint was provided by the Respondent.
General
6.1 Although Nominet sent the Complaint to the Respondent, as mentioned in paragraph 3.1 above, no response has been provided by the Respondent as per paragraph 5 (a) of the Procedure.
6.2 No exceptional circumstances have been raised by the Respondent as to why no response has been received. As such, the Expert has proceeded to a decision as per paragraph 15 of the Procedure.
6.3 It is important to note that the Complainant does not automatically receive the remedy it has requested merely because the Respondent has not responded to the Complaint.[3]
6.4 The Expert in this case has drawn no inferences from the Respondent's failure to respond in this case, and has based the Decision on the facts and evidence provided by the Complainant.
6.5 To succeed in its application, the Complainant has to prove pursuant to paragraph 2 of the Policy, on the balance of probabilities (that the Complainant's case is more likely than not to be the true version[4]), that:
(i) it has Rights in respect of a name or mark identical or similar to the Domain Name (paragraph 1 of the Policy) ; and,
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 1 of the Policy).
6.6 Taking each of these limbs in turn:
i) Complainant's Rights
6.7 Paragraph 1 of the Policy defines "Rights" as including, but not being limited to: "rights enforceable under English law." Also, the Complainant must have the rights at the time of the complaint.[5]
6.8 As set out at paragraph 4.1 above, the Complainant has trademarked EXPEDIA as a Community trade mark for various Classes. A Community trade mark gives its proprietor a uniform trade mark right applicable in all Member States of the European Union, including in this case, the U.K.
6.9 Additionally, the Expert has been provided with evidence by the Complainant that it first traded in the U.K. under the EXPEDIA name via its website in December 1998, and that it has subsequently advertised its goods and services using the EXPEDIA mark/name.[6] The Expert has also been provided with evidence that the Complainant has received various U.K. reviews and awards for its website, the first one being in June 1999.[7]
6.10 Therefore, as well as the Trade Marks mentioned, the Expert considers that the Complainant had, and has, substantial goodwill and reputation more generally in the name EXPEDIA. On this basis, the Expert considers that it is likely that the EXPEDIA name would have been recognised by the purchasing public as indicating the goods and services of the Complainant, from at least when the first Domain Name was registered up to the time of the Complaint.
6.11 As such, the Expert considers that the Complainant has Rights in respect of the mark/name EXPEDIA.
6.12 The next question is whether the Domain Names are identical or similar to the Complainant's Rights i.e. the mark/name EXPEDIA. Disregarding the generic .co.uk suffix, the Expert considers that each of the Domain Names is materially similar to the Complainant's EXPEDIA mark/name. For example, each Domain Name: starts with 'ex' (four start with 'exp', and three start with 'expe'); each looks like the mark/name at a glance;[8] each sound like the mark when said; and, the expediaa.co.uk Domain Name has the mark as part of its address.[9]
6.13 Therefore, given these factors, as well as the fact that the requirement to demonstrate "Rights" is not a particularly high threshold,[10] the Expert considers that the Complainant has Rights in the mark/name EXPEDIA, which is similar to the Domain Names.
ii) Abusive Registration
6.14 Paragraph 1 of the Policy defines "Abusive Registration" as a domain name which either:
"i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights;"
6.15 In relation to (i) above - The Expert considers that the Domain Names were registered in a manner which at the time of registration took unfair advantage of the Complainant's Rights, and is an Abusive Registration.
6.16 As to what is meant by an Abusive Registration in this context, paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that each of the Domain Names is an Abusive Registration. In particular, paragraph 3 (a) (i) (C) of the Policy sets out that:
"[there may be evidence of an Abusive Registration if there are] Circumstances indicating that the Respondent has registered […] the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."
6.17 In relation to this, while it may be helpful to consider the Respondent's intentions in its registration of the Domain Names (or indeed its subsequent use of the Domain Names), as the Respondent has not explained its intention, the evidence available to the Expert is that provided by the Complainant.
6.18 The Expert notes that for the purpose of this limb: "there have been several decisions under the DRS Policy stating categorically that knowledge of the Complainant's trade mark at the relevant time is crucial to a successful complaint."[11]
6.19 On the evidence before him, the Expert considers it is likely that the Respondent would have known about the Complainant's Rights and its website prior to the registration of each Domain Name.
6.20 Relevant to this decision are the facts that:
(i) the Respondent registered the first Domain Name expedi.co.uk on the 19 July 2000;
(ii) prior to this date, the Complainant's website was up and running, advertising among other things travel related goods and services (since December 1998);
(iii) the Complainant's services were reviewed in National publications and the Complainant had received various U.K. Industry awards during 1999 and early 2000 (see paragraph 4.4 above);
(iv) the growing Annual turnover figures for goods and/or services provided by the Complainant (see paragraph 5.2 above);
(v) the International websites the Complainant owns and sells goods and services from; and,
(vi) straightforward website and trade mark searches, at the time of each Domain Name registration, would have disclosed the Complainant's mark/name.
6.21 As to whether such registration took unfair advantage of or was unfairly detrimental to the Complainant's Rights, the Expert considers that it is likely the Domain Names were chosen because of their similarity to the EXPEDIA mark/name. Indeed, the EXPEDIA mark/name is not a dictionary word or is of common usage more generally, which makes its more unlikely the Domain Names were innocently chosen.[12]
6.22 Indeed, the Respondent's intention, on the balance of probabilities, was likely to have been to take advantage of web-users 'initial interest confusion' in the Domain Names. (I.e. that a web-user wanting to reach the Complainant's website would be 'confused' into accessing the Domain Names' websites, for example, by misspelling the Complainant's domain name expedia.co.uk or clicking on to one of the Domain Names that may have come up in a search.)
6.23 As such, the Expert considers that the registration of the Domain Names took unfair advantage of the Complainant's Rights.
6.24 In relation to (ii) above - In any event, the Expert considers that the Domain Names have been used in a manner which took unfair advantage of, and was unfairly detrimental to, the Complainant's Rights.
6.25 As mentioned above, paragraph 3 of the Policy sets out a non-exhaustive list of factors, which may be evidence that the Domain Names are an Abusive Registration.
6.26 In this case, the Complainant refers in substance to the factor set out at paragraph 3 (a) (ii) of the Policy in the Complaint, which states that:
"[there may be evidence of an Abusive Registration if there are] Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."
6.27 It is clear from the print-outs of the Domain Names' websites as provided by the Complainant, that the Domain Names have been used as potential revenue earning parking sites (for example, the websites linked to expediaa/expedi are hosted by Sedo, a well-known Internet services company),[13] for click-through links to various travel-related websites not owned by or run on behalf of the Complainant.
6.28 While there is no evidence before the Expert that the Respondent gained financially from these click-throughs, the Expert considers that, given the Complainant's Rights (in the EXPEDIA mark/name and associated business goodwill and reputation), users accessing the Domain Names' websites would be likely to have been confused into thinking that the Domain Names' websites and links were associated in some way with the Complainant. [14]
6.29 The substantial goodwill and reputation in the mark/name EXPEDIA built up over time, for example, through magazine/tube/bus/taxi/radio adverts, the Complainant's International presence, and evidenced more generally through the Complainant's increased sale figures (see paragraph 5.2 above), makes the likelihood of such confusion material.[15]
6.30 Further, the Expert considers it likely that the Respondent, by choosing links of a similar business nature to the Complainant's (regardless of whether such choices were through a third-party such as Sedo or by itself), intended the links on the parking sites would be assumed to be associated with the Complainant by a web-user accessing the Domain Names' websites.
6.31 In doing so, and regardless of whether the Respondent received money for any additional Internet traffic generated by providing such links, the Domain Names' websites would likely have taken possible business away from the Complainant. Visitors to the webpages comprising such links would not have arrived there if it had not been for the similarity between the Domain Names and the Complainant's EXPEDIA mark/name.
6.32 As mentioned in the Nominet appeal decision, DRS No. 4479, Comité Interprofessionnel du Vin de Champagne v Steven Terence Jackson,[16] it does not assist the Respondent's case that someone clicking on to the Domain Names' websites might soon realise his or her mistake and look for the Complainant's website; the damage would already have been done.
6.33 Therefore, by reference to paragraph 3 (a) (ii) of the Policy, the Expert considers that the Respondent has been using the Domain Name in a way which has, or is likely to have,[17] confused people or businesses into believing that the Domain Names are registered to the Complainant.
6.34 In its submission that the Domain Names are an Abusive Registration, the Complainant also refers in substance to the factor set out at paragraph 3 (a) (iii) of the Policy in the Complaint, which states that:
"[there may be evidence of an Abusive Registration if the] Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern."
6.35 In relation to the alleged pattern of registrations, the Expert has considered the evidence provided by the Complainant to support its submission, being a reverse WHOIS search of the domain names the Respondent owns. This evidence sets out well over 50 domain names registered by the Respondent, which in some way misspell known brands (for examples, see below). The Expert considers that these registrations show such a pattern.
6.36 The next question for the Expert to consider is whether the registration of each of the Domain Names is part of that pattern.[18] In this regard, the Expert notes that, at the same time as the registration of:
- expedi.co.uk (registered, 19 July 200), the Respondent also registered:
- googl (17 July 2000), pcworl (19 July 2000), ticketmaste (19 July 2000), toysru (19 July 2000), travelocit (19 July 2000).
The known brands to these are respectively: Google, PCWorld, Ticketmaster, Toys R Us, Travelocity.
- expedai.co.uk and expdeia.co.uk (registered, 5 March 2002), the Respondent also registered (these are examples):
- alstminute (5 March 2002), asdda (5 March 2002), assda (5 March 2002), bigborther (5 March 2002), lloot (5 March 2002), and harrrods (5 March 2002).
The known brands to these are respectively: lastminute.com, Asda, Big Brother, Loot, and Harrods.
- exedia.co.uk, exepdia.co.uk, expediaa.co.uk (registered, 26 March 2002), the Respondent also registered (these are examples):
- adtradr (26 March 2002), allliance-leicester (26 March 2002), barcays (26 March 2002), bloomerg (26 March 2002), and britihsairways (26 March 2002)
The known brands to these are respectively: AdTrader, Alliance&Leicester, Barclays Bank, Bloomberg and British Airways.
6.37 Based on this evidence, the Expert considers that each Domain Name was registered as part of the pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern
6.38 Although the Respondent has not responded to the Complaint, the Expert has still considered whether there is any evidence/arguments before him which may be relevant that the Domain Names are not an Abusive Registration. In relation to this, the Expert notes the non-exhaustive list of factors set out at paragraph 4 of the Policy which may provide such evidence.
6.39 However, there is no relevant evidence/arguments before the Expert that, in particular, before being aware of the Complainant's cause for complaint, the Respondent has either: used the Domain Names in connection with a genuine offering of goods or services;[19] or, made legitimate non-commercial or fair use of the Domain Names.[20] In this regard, the Expert notes in particular paragraphs 6.27 to 6.31 above.
6.40 Also, there is no evidence that the Domain Names are generic or descriptive (see paragraph 6.21 above).[21]
6.41 Finally, the Expert does not consider that, in relation to whether the Respondent is engaged in a pattern of registrations as discussed at paragraphs 6.35 to 6.36 above, the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.[22]
6.42 For example, in the view of the Expert, the domain names cited in paragraph 6.35 above are all misspellings of major brands which are easily recognisable, with substantial goodwill and reputation attached to them. They were also all registered either materially near each other or on the same day.
6.43 Given the above, the Expert considers that the Domain Names have been used in a manner which took unfair advantage of (through, for example, the material likelihood of confusing people into believing that the Domain Names are registered to the Complainant),[23] and was unfairly detrimental (through, for example, potential loss of revenue) to,[24] the Complainant's Rights.
Signed: Dr Russell Richardson Dated: 13 January 2009
Note 1 For example, the Complainant provided evidence of among others:EXPEDIA, Community Trade Mark, E372060, Classes 9, 39 and 41 (registered, 7 May 1999);EXPEDIA.COM, Community Trade Mark, E1240449, Classes 39 and 41 (registered, 25 January 2001);EXPEDIA, Community Trade Mark, E1469196, Class 41 (registered, 6 March 2001);EXPEDIA, Community Trade Mark, E2003457, Class 16 (registered, 12 February 2002);EXPEDIA, Community Trade Mark, E2325520, Classes 35, 36 and 38 (registered, 6 June 2003);EXPEDIA, Community Trade Mark, E5323647, Classes 39, 41, 42 and 43 (registered, 27 February 2008).
[Back] Note 2 Nominet decision 05516, 7 May 2008. The Respondent was required to transfer the domain name, holidaysautos.co.uk to the complainant (Holiday Autos International Limited) as it was an Abusive Registration. The case concerned the registration by the Respondent of a domain name similar to the trading name of the Complainant. The expert considered that, among other things, the domain name was being used in a way which has confused and will confuse people into believing that the domain name is operated by or connected with the Complainant. While raising similar issues as the current Complaint, the Expert has placed the same evidential weight on this decision as he has on other Nominet decisions – and notes in the text any reliance on this decision and all other Nominet decisions and appeal decisions. [Back] Note 3 See for example, Nominet decision, equazen.co.uk, DRS No. 02735. [Back] Note 4 http://www.nominet.org.uk/disputes/drs/legalissues/. [Back] Note 5 See for example, Nominet appeal decision, ghd, DRS No. 03078, at page 9, para 9.2.2. [Back] Note 6 See paragraph 4.3 above. [Back] Note 7 See paragraph 4.4 above. [Back] Note 8 Note, however, the Expert has not relied on in this respect that such similarity must be ‘confusing’ (see for example – Nominet decisions, tastequest.co.uk, DRS No. 2655 anddreambulgarianproperties.co.uk, DRS No. 3267). [Back] Note 9 See for example, Nominet decisions, privilege.co.uk, DRS No. 3806 andHolidayAutos.co.uk, DRS No. 05516 [Back] Note 10 See for example, Nominet appeal decision, seiko-shop, DRS No. 00248, at page 17. [Back] Note 11 Page 10, Nominet appeal decision, Maestro DRS No. 04884, 13 December 2007. [Back] Note 12 See page 10, Nominet appeal decision, Maestro DRS No. 04884, 13 December 2007. [Back] Note 13 See reference at page 122 of Nominet appeal decisionMySpace, Inc v Total Web Solutions Limited, DRS No. 04962, 18 April 2008. The exepedia/expedai websites are hosted byndparking, and the expdeia/exedia websites are provided bysearchportal.information. [Back] Note 14 See Nominet decision, clydesdaleconservatories, DRS No. 3161. [Back] Note 15 See Nominet appeal decision, Wise Insurance Services Limited v Tagnames Limited, DRS No. 04889, 17 January 2008. [Back] Note 17 See Nominet decision, Norton Finance (UK) Limited -v- James Robinson, DRS No. 05265. [Back] Note 18 See Nominet appeal decision, Maestro DRS No. 04884 at page 11. [Back] Note 19 Paragraph 4 (a) (i) (A) of the Policy. [Back] Note 20 Paragraph 4 (a) (i) (C) of the Policy. [Back] Note 21 Paragraph 4 (a) (ii) of the Policy. [Back] Note 22 Paragraph 4 (a) (iv) of the Policy. [Back] Note 23 See for example, paragraphs 6.27, 6.29 and 6.30 above. [Back] Note 24 See for example, paragraphs 6.27,6.28, 6.31 and 6.32 above. [Back]