Expert Travel Services, LLC v. Texas International Property Associates - NA NA
Case No. D2008-0307
1. The Parties
The Complainant is Expert Travel Services, LLC, Patchogue, New York, United States of America, represented by Carter, DeLuca, Farrell & Schmidt, LLP, United States of America.
The Respondent is Texas International Property Associates - NA NA, Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name <experflyer.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) initially by e-mail on February 28, 2008. On March 3, 2008, and again two days later, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On March 5, 2008, Compana LLC provided a partial response to the information requested. The Center on March 7, 10, and 11, 2008, requested more complete registration information, to which Compana LLC responded on March 11 and 12, 2008. Compana LLC’s collective transmissions provide a verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 11, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the present proceeding commenced on March 12, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 1, 2008. The Response, first transmitted by email, was received by the Center in the early morning hours of April 2, 2008 (or evening on April 1, 2008, in Dallas, Texas). On April 2, 2008, the Center acknowledged receipt of the Response to both parties.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on April 10, 2008. 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
The Complainant, a privately held corporation registered in the State of New York, is engaged in the business of providing information relating to air travel. On March 26, 2007, the Complainant filed with the U.S. Patent and Trademark Office applications to register three service marks – EXPERT FLYER.COM; EXPERT FLYER.COM plus diagram; and EXPERTFLYER – all for “[t]ravel information services, namely, providing information concerning travel and travel-related topics including fares, fare rules, penalties and routing information, flight availability, seating with seat maps, upgrades, frequent flyer miles, awards and upgrades, flight status and delays, flight details . . . ”. The Complainant received registration for the two marks with the EXPERT FLYER.COM designation on December 11, 2007, followed by registration for EXPERTFLYER on March 18, 2008, shortly after the commencement of this proceeding.
The Complainant had also previously registered the domain name <expertflyer.com> for its website on January 29, 2004.
The Respondent registered the disputed domain name <experflyer.com> on November 8, 2005.
5. Parties’ Contentions
A. Complainant
The Complaint is briefly stated. The Complainant contends that it has demonstrated the three elements of paragraph 4(a) of the Policy, namely: (i) the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights; (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.
B. Respondent
The Respondent acknowledges receipt of the Center’s Notification of Complaint and Commencement of Administrative Proceeding, and confirms that the Respondent’s contact details are identical to those provided by the registrar.
The Respondent also counters the Complainant’s contentions relating to two of the requisite elements under paragraph 4(a) of the Policy.
Domain name identical or confusingly similar to mark
The Respondent states that it “will not dispute the first element of the Policy”, and “admits that this element . . . is not the element upon which it will prevail . . . and will not waste the Panel’s time”. Response, at pages 2-3.
Respondent’s rights or legitimate interests in domain name
Initially, the Respondent contends that the Complainant has failed to meet its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name. Moreover, the Respondent states that its use of “a generic word to describe [its] product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word” is a legitimate interest. Response, at page 3 (quoting WIPO Overview of WIPO Panel Views on Selected UDRP Questions2.2). In addition, the Respondent asserts that it may “fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered”. Id. at page 4 (citations omitted).
Bad faith in registration and use of domain name
The Respondent emphasizes that it registered the domain name before the Complainant filed its applications to the U.S. Patent and Trademark Office for registration of the service marks. The Respondent also contends that it was not aware of the Complainant when the disputed domain name was registered, and thus, bad faith registration cannot be shown. Finally, the Respondent states that even assuming, but only arguendo, that it was aware of the Complainant at the time of the registration of the domain name, the Respondent “could have reasonably believed that the descriptive phrase ‘expert flyer’ was a term to which no one party could have exclusive rights”. Response, at page 7.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <experflyer.com> is confusingly similar to marks in which the Complainant has rights – EXPERT FLYER.COM; EXPERT FLYER.COM plus diagram; and EXPERTFLYER. The Complainant obtained trademark rights in these marks by using them for its services, and further confirmed the rights at registration.
As discussed further below, the Panel does not view “expert flyer” as a generic term for the Complainant’s air travel information services. If the EXPERT FLYER.COM or EXPERTFLYER designation is considered “descriptive” of the Complainant’s services, the Panel is prepared to infer from the record that before the registration of the disputed domain name, the Complainant’s marks had acquired the requisite secondary meaning, denoting services provided by the Complainant. In this and other respects, the Panel’s decision is largely similar to that in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,
WIPO Case No. D2002-1011.
The Complainant has demonstrated the first element.
B. Rights or Legitimate Interests
Panels in prior UDRP decisions administered by the Center have advised that, under paragraph 4(a)(ii), the complainant has the initial burden to make a prima facie showing that the respondent lacks rights or legitimate interests in the domain name, upon which the burden shifts to the respondent to demonstrate such rights or legitimate interests. Decathlon v. Tariq Ghafoor,
WIPO Case No. D2007-1256; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455.
Here, the Complaint states that: the Respondent has no rights in the domain name <experflyer.com>; and the Complainant has not granted the Respondent any license or authorization to use the term “experflyer” or any related term, or to register the domain name <experflyer.com>. The Complainant also indicates that the Respondent’s use of the domain name is not a legitimate noncommercial or fair use of the domain name.
The Complainant has met the “light” burden of making a prima facie showing. Croatia Airlines, supra. The prima facie standard requires only that the offered evidence be “sufficient on its face”. Black’s Law Dictionary 1071 (5th ed. 1979); see Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110 (complainant’s burden is met unless its allegation “is manifestly misconceived”).
The burden thus shifts to the Respondent to show that it has rights or legitimate interests in respect of the domain name. On consideration of the full record, the Panel concludes that the Respondent has failed to do so.
The Respondent insists that its legitimate interest in the disputed domain name is present in the use of a “generic word” to describe its product or business or to profit from the “generic value of the word”. Response, at page 6. Indeed, both “expert” and “flyer” are noun words that appear in English dictionaries. But if the combination of the two as a phrase – “expert flyer” – is a generic term, the Panel questions whether it is generic for the air travel information services for which the Complainant has been using its marks. Put another way, EXPERTFLYER for the Complainant’s services stands in contrast to “pilot”, “dance instructor”, or “website designer”, for one who provides the service of flying an airplane, teaching dance, or designing a website, respectively.
Moreover, rather than merely incorporating a generic term in a domain name, the Respondent’s activities here appear to be a classic case of “typosquatting”. Typosquatting is “the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors”. National Association of Professional Baseball Leagues, supra.
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways in which the Respondent may demonstrate rights or legitimate interests in respect of the domain name for purposes of paragraph 4(a)(ii): (i) use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent being commonly known by the domain name; or (iii) the respondent making a legitimate noncommercial or fair use of the domain name.
The typosquatting nature of the domain name makes it difficult for the Respondent to show its rights or legitimate interests in the domain name under the examples provided in paragraph 4(c). Nor is the Panel able to ascertain any other right or legitimate interest.
The second element is present.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the “domain name has been registered and is being used in bad faith”. The Policy further addresses the bad faith element in paragraph 4(b), which begins, “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith . . ”. The provision then lists four specific circumstances, as follows:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
In the present case, Internet users who type in the disputed domain name are taken to a searchable portal website that contain a number of links. Many of the links, which refer to various forms of “expert witness”, appear to be unrelated to the Complainant’s marks or related services. But the website also includes links for “Expert Flyer” and “Become an Expert Flyer”, under which appears the following text: “Find seats open/taken on over 100 airlines. Find upgrade and award inventory on AA and others. All fares and flight info worldwide. We make you an Expert Flyer by giving you an edge.” Beneath the text is a link for the Complainant’s website.
The Panel determines that there is ample evidence that the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website or of products or services on the website, as described in paragraph 4(b)(iv).
The Panel notes, however, that despite the text of paragraph 4(b) of the Policy, some panels have ruled that paragraph 4(a)(iii) requires proof of both bad faith registration and bad faith use. See Teradyne, Inc. v. 4Tel Technology,
WIPO Case No. D2000-0026; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,
WIPO Case No. D1999-0001. According to this reading of the Policy, if there is no evidence of bad faith at the time of registration, the panel must rule in favor of the respondent, even if the respondent has subsequently used the domain name in bad faith. Dean Hill Systems Ltd. v. Gregory Santana d/b/a Invicta,
WIPO Case No. D2002-0404 (Concurrence of David H. Bernstein) (discussing e-Duction, Inc. v. John Zuccarini,
WIPO Case No. D2000-1369). Further discussion of the issue includes the observation that while paragraph 4(a)(iii) contains the “registered and is being used in bad faith” phrasing, the circumstances described in paragraph 4(b)(i)-(iii) refer only to the registration activity and that described in paragraph 4(b)(iv) refers only to use.
The Respondent also subscribes to the view that the Policy requires bad faith in both registration and use. The Respondent argues that bad faith registration here requires evidence that the Complainant “had established [its] common-law trademark rights in the period prior to the registration of the disputed domain name”. Response, at page 6.
To support the contention that it did not act in bad faith in registering the domain name, and indeed could not have acted in bad faith, the Respondent relies on the fact that the registration of the disputed domain name (November 8, 2005) predates the Complainant’s applications for federal registration of its marks (March 26, 2007), a point that the Respondent sees as “critical”. Id. According to the Respondent, it was simply unaware of the Complainant at the time of the registration of the disputed domain name.
Two observations shape the Panel’s decision. First, both parties in the present case are based in the United States of America. A basic principle of U.S. trademark law is that use of a mark is what gives rise to recognizable rights in the mark. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 954 (7th Cir. 1992) (“trademark rights derive from the use of a mark in commerce and not from mere registration of the mark”); AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550 (11th Cir.1986) (“Trademark rights flow from use, not from intent to protect rights.”); Go Pro Ltd. v. River Graphics, Inc., No. CIVA01CV600JLK, 2006 WL 898147, at *3 (D. Colo. Apr. 5, 2006) (“Valid and legally protectible trademark rights are created not through registration, but through use of the designation as a mark.”) (citing 2 J. Thomas McCarthy on Trademarks and Unfair Competition, ยง 16:1). The record indicates that although the Complainant did not file its applications for the marks until March 26, 2007, the date of the “first use in commerce” for all three of the marks is January 7, 2005 – or ten months before the Respondent’s registration of the disputed domain name. The Panel is satisfied that the Complainant established common law trademark rights in its marks when it used them to identify and distinguish its services and to indicate the source of the services, before the Respondent registered the confusingly similar domain name.
Second, the Panel acknowledges the Respondent’s protestations that there is “no evidence” that it was aware of the Complainant at the time the Respondent registered the domain name. Response, at pages 6, 8. The Panel also notes, however, that descriptions of the Complainant’s services relating to air travel appeared in multiple media reports from July to September 2005, before the Respondent registered the domain name on November 8, 2005. These reports, in the Wall Street Journal, Seattle Times, Chicago Sun Times, and Newsweek, were available to the public, and are still readily accessible. Thus, the Panel must reject the Respondent’s assertion that “[a]t the time the disputed domain name was registered, there was no way that Respondent could have had any knowledge of Complainant as it is a small company in Patchogue, New York (population of almost 12,000 according the U.S. Census Bureau) and Respondent is located some 1600 miles away in Texas”. Response, at page 6.
The Panel also views with skepticism the Respondent’s argument that even if it had been aware of the Complainant’s mark and business, the Respondent “could have reasonably believed that the descriptive phrase ‘expert flyer’ was a term to which no one party could have exclusive rights”. Id. at page 7. The present case is one of typosquatting. As a prior panel has observed, “Typosquatting is inherently parasitic and of itself evidence of bad faith”. National Association of Professional Baseball Leagues, supra.
The Panel determines that the bad faith element is demonstrated by circumstances under paragraph 4(b)(iv) of the Policy; in addition, the Panel separately finds circumstances indicating bad faith registration.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <experflyer.com> be transferred to the Complainant.
Ilhyung Lee Sole Panelist
Dated: April 24, 2008
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