The Joy of Travel

The newly rebranded Expedia Group, Inc. faces unusual trademark enforcement challenges as an online company, and is looking forward to a major relocation in 2019, as Expedia Group Senior Counsel Michael Graham tells Ed Conlon.

In 1996, online travel agency Expedia began life as a division of Microsoft, where Rich Barton, a product manager and frustrated business traveler, wanted to allow individuals to research and book their own travel online. The unit was spun off as Expedia, Inc. in 1999, and nearly 20 years and a series of major acquisitions later, it has just undergone a corporate rebrand to Expedia Group, Inc.

The facelift, which was completed in March, is designed to better reflect the brand’s identity as a technology company within the travel industry, says Michael Graham, Senior Counsel at Expedia Group, Inc. (USA). Expedia Group, Inc. offers a range of services, including those covering hotels and car rentals—alongside the Expedia.com websites Hotels.com (USA), trivago (Germany), and CarRentals.com (USA), to name just some of its numerous brands.

The rebrand followed a busy three years of mergers and acquisitions, with companies including Travelocity (U.S. online travel agency), Orbitz (U.S. online travel agency), and HomeAway (U.S. vacation rental marketplace) all coming on board. These changes have led to a doubling of the number of trademark registrations and domain names that the IP team handles to more than 1,600 trademark registrations and applications and more than 20,000 domain names worldwide, says Mr. Graham. 

"We have increased our use of Uniform Domain-Name Dispute-Resolution Policy proceedings to challenge typosquatters and trademark infringers.”

Apart from increasing the resources required to maintain the trademark portfolio, there has been little change in the company’s strategy of clearance, registration, use, and protection, he says. On the other hand, the mergers and acquisitions have resulted in changes in the domain name registration strategy.

“We will no longer attempt to register a large number of defensive domain names with as many typo variations as before, hyphenated terms, lookalike characters, etc.,” he explains. “At the same time, we have increased our use of Uniform Domain-Name Dispute-Resolution Policy proceedings to challenge typosquatters and trademark infringers.”

As a business that depends on consumers finding its brands via the Internet and social media, “the relationship between trademarks and domain names is especially important for us,” says Mr. Graham.

“We have therefore established strong domain name watch and challenge programs to protect our primary domain names against cybersquatters, prevent typosquatting by affiliates and competitors, and identify other infringements of our trademarks and intellectual property.”

Fighting Fake Travel Sites

Mr. Graham explains that one of Expedia Group, Inc.’s challenges is protecting its brands and websites against counterfeit online travel websites. Because Expedia Group, Inc. only offers online services—not goods—it is unable to take advantage of the more robust seizure and injunction options, law enforcement engagement, or enhanced damages and attorneys’ fees available in successful cases in the United States with respect to counterfeit goods..

“We can’t get the sort of quick orders from a court to shut down a website that are available to stop the sale of counterfeit goods, and, even more importantly, we lose the ability to engage with law enforcement to find these people and close them down. It’s easier to engage the FBI when you have counterfeit goods,” says Mr. Graham.

Another challenge for Expedia Group, Inc. is the clearance of its many trademarks worldwide, he says, adding that searches must increasingly include searches not only of domain names, but also of social media handles and common law uses, among others. The trademark team also faces challenges in searching and registering trademarks and brands that have different levels of distinctiveness worldwide.

“For example, EXPEDIA is a fanciful term entitled to immediate protection as a trademark, whereas HOTELS.COM, which began as a suggestive mark for a telephone reservation service and has been used worldwide as a domain name URL and trademark, has been considered descriptive and has therefore had to gain consumer recognition and goodwill through its more than 21 years of use and marketing worldwide to be registrable in most of the world,” Mr. Graham explains.

A New Home

While the rebrand has kept Mr. Graham busy, he and the rest of the team are preparing for another major milestone in the company’s history—in 2019, Expedia Group, Inc. is moving its headquarters from Bellevue, Washington, to Seattle, Washington, just a 15-minute drive away..

Mr. Graham calls it “a huge step,” not just for the company and its employees, but for the city of Seattle. He says the new Interbay location, a 40-acre waterfront campus overlooking Elliott Bay, has not seen much development since biotech company Amgen Inc. moved from the site in 2015.

“The area hasn’t seen renewal like the rest of the city, such as Downtown Seattle, which is rapidly changing,” he says. “We want to bring vibrancy and new life to this part of the city. The area has a lot of promise.”

Mr. Graham adds that as Expedia Group, Inc. gears up for the move and prepares the campus for the adaptive reuse of the buildings, “one key component is looking at unique ways to repurpose and salvage different elements of the campus—everything from building materials and landscape to furniture and technology left behind by Amgen.”

This approach fits in with the company’s wider strategy on corporate social responsibility (CSR), Mr. Graham concludes.

“CSR is something Expedia Group takes very seriously, and, as expressed in our mission statement, our efforts are aligned with 8 of the 17 United Nations Sustainable Development Goals—initiatives that are focused on protecting the planet, providing quality education, advancing equality, and enabling a more tolerant, just, and peaceful world.”