What is the company’s business model?
Expedia is the world’s leading online travel company and offers travel services to both consumers and businesses. The company offers flights, lodging properties, car rentals, cruises and destination activities, and has a number of travel communities. Our TripAdvisor branded sites actually make up the largest travel community in the world.
Expedia is the parent company to about 100 subsidiaries and 24 core site brands (including Hotels.com, TripAdvisor and Hotwire), but it started off as Expedia.com. Founded within Microsoft in 1995, Expedia.com first went live in 1996, and first went public in 1999.
In 2002, USA Networks—now IAC/InterActiveCorp—led by Barry Diller, bought a controlling stake in Expedia. IAC purchased the remaining stake in 2003. In 2005, IAC and Expedia separated into two publicly traded companies, and Expedia has increased its portfolio of travel companies and brands ever since. All in all, Expedia’s companies operate more than 70 global points of sale in over 40 countries.
How long have you been with the company and what is your background?
I have been with Expedia since 2004, when it was part of IAC, and we only owned about five core brands. Growing with our company along with its expansion has been the best education in trademark and domain name law I could ever ask for.
Before joining Expedia, I was a trademark associate with Perkins Coie in Seattle, and an IP associate at Wildman Harrold in Chicago, where I worked on a wide variety of IP matters, including trademark prosecution, litigation and advertising. I now serve on INTA’s Registration Practice and DNS Administration Subcommittee of the Internet Committee. In the past, I have served on ICANN’s Reserved Names Working Group within the Generic Names Supporting Organization Council.
What does your role at Expedia entail on a daily basis?
I work on trademark prosecution, enforcement, proper use and licensing; domain name registration and enforcement; some keyword issues; and coordination of the IP work on our entity acquisitions, such as due diligence and integration of the brands.
Practically speaking, that translates into a lot of strategic discussions with the business team regarding their IP needs, as well as time spent managing my group. One of the things I most enjoy about this job is helping our business reach our marketing and economic goals, and trying to predict both the business’s needs, and how the latest IP developments could affect us, and working out our best strategies for protecting our IP rights offensively.
When I started here five years ago, we had a relatively small trademark portfolio and my main domain name job was to transfer our domain names over from Microsoft, so I have spent a large amount of my time the last five years simply putting an IP protection program, and efficient and timely processes and policies, in place. Building relationships and trust within the business to make sure my team is looped in on the projects that require IP law attention, at the appropriate point in time, is also a critical part of this job.
How large is your trademark/IP group now?
We have a very small group. As far as trademark and domain name work goes, I am the only in-house attorney and we have two amazing paralegals who really keep the show running. When I started in this role in 2004, I only handled Expedia.com work with one paralegal, though I did our advertising work and some general contract work, as well. Over time, I have taken over work for all of our 24 core brands globally, and we have added one paralegal.
While having such a small team certainly poses its challenges, it has offered me an incredible learning experience as I’ve been able to see how all trademark and domain name issues converge from soup to nuts. I also appreciate that my role has been able to grow and change as the company has grown and changed.
How large is your trademark/IP portfolio?
We own about 1,000 trademarks and 9,000 domain names, which shows you how critical our domain names are to us.
What are the main brands?
Some of our main brands include EXPEDIA, TRIPADVISOR, HOTELS.COM, HOTWIRE, CLASSIC VACATIONS, EGENCIA, VIRTUALTOURIST, VENERE, BOOKINGBUDDY, TRAVELPOD, SMARTERTRAVEL and SEATGURU.
In which main countries do you protect your marks?
We protect our marks all around the world, but the main countries we focus on are our active and planned future points of sale. We’ve operated the longest in the US, Canada and Europe, but we are also heavily focused on protecting some of our brands in our newer points of sale in Asia and Latin America. It is always a balancing act.
Do you do any trademark licensing?
Yes; for example, we obtain licenses from our suppliers, license some of our marks to our affiliates, and license our marks for co-branded deals as well.
How has the brand changed through the years?
As we are still a relatively young company, the most significant change is that our brands have become more distinctive and famous over time, which is exciting to see. For example, we obtained sufficient distinctiveness in the HOTELS.COM word mark to obtain a trademark registration.
Our brands have also significantly expanded internationally, and we simply have a lot more brands as we’ve acquired a number of entities over the years.
As for major re-brands, our Expedia Corporate Travel division recently globally re-branded to the name Egencia. Other than that, our brands have generally stayed the same, or had subtle “re-freshes” as the brands have grown and matured, but our taglines have changed over time.
How has your business model been impacted by the economic downturn?
The whole world is hurting right now and I don’t think there is a consumer company out there that has not been impacted by the economic downturn to some degree. However, we are still planning for the future and we still care about protecting the brand.
How are you handling the challenges?
Our legal team’s philosophy is that we’re partners with our business and we want the business to succeed, so we have always thought about both the short and long-term economic impact of our decisions, and that has not changed. However, we have had to adapt to the economic environment. We are simply trying to protect the brand in the most cost-effective and efficient manner possible, and despite our small team, we do try to handle as much as possible in-house, we question which expenses are truly valuable and necessary, and we try to be as efficient in our work as humanly possible.
How big a problem are domain name disputes for you?
Our domain names are our storefront and protecting them, and owning the right domain names is incredibly important to our business. Due to practices such as domain name tasting and kiting, and the monetization of domain names with pay-per-click sites, domain name infringement of any online consumer brand is rampant.
How do you police your domain names?
We use an online tool to police for domain name infringements, and like all online businesses, we vigilantly protect our rights while trying to balance and maximize the economics of the situation.
How often are you involved in litigation?
We are not often involved in full-on litigation, but we do pursue and settle a fair amount of trademark infringements, and we file a decent number of UDRPs.
One of the few, but interesting, matters where we were a defendant was a TTAB opposition to our IAN trademark, which represents the Hotels.com affiliate program, by the hotelier Ian Schrager (one of the founders of the renowned NYC nightclub Studio 54 and the holder of a JD himself). He opposed our mark on the basis that his rights to his famous name trumped our trademark rights. I can’t discuss the terms of settlement, but we still own both the trademark and domain name. I understand that he has since focused on protecting his full name, so I’m happy that we both ended up a winner.
What are the unique challenges of protecting a web-based brand?
The challenge is that the playing field is always changing, and infringement of online brands is a sophisticated business these days. Just as online companies have become more sophisticated with their technology over time, so have the infringers. We constantly have to keep on top of the latest infringement methods and how infringers are trying to benefit from our brands’ goodwill and traffic, and we try to be strategic in our approach. We also have to deal with infringers who scrape and steal our actual content in addition to the brand infringement issues.
Also, we often have to coordinate with quite a number of groups within the business to best locate and address the issues. We do not view legal means as the only line of defense.
The other interesting aspect is that legal protection of online brands is still relatively young, and the laws and domain name policies that are used to address various online infringements do not, or cannot, always adapt as quickly as necessary to properly address the issues. I think we have a way to go to achieve the proper policies that will allow companies to cost-effectively protect their brands online. Also, at least regarding domain name infringements, I think many companies are looking to ICANN to do the right things in the years ahead for optimal protection. I do not see a need for the very pricey new gTLDs, and I would like to see registered brands be able to protect themselves without having to pay to register a new TLD, or to register their domain name in third party TLD extensions, and without having to pay the current exorbitant costs to challenge infringement of a brand in the new gTLD space.
ICANN’s new Add Grace Limits Policy is a step in the right direction in the fight against domain name tasting and kiting, and more policies along those lines would be most welcome.
What other changes to the trademark system would you most welcome?
I would like to see more harmonization of and more affordable global enforcement options. In addition, I would welcome more harmonization of global filing options, such as the CTM. The Madrid Protocol has not really turned out to be a complete solution.
I am also particularly interested in domain name system changes that would save companies time and money in this economic environment, such as a central database of protected brands that could not be registered in relevant domain name extensions. Harmonization of domain name enforcement options, and domain name policies in general, across TLDs globally would also be ideal.
Have you used the Madrid system at all?
We do not make much use of the Madrid System. The feedback I’ve received from those who have used it is that it ended up being just as expensive as individual country filings, due to all the follow-up that is necessary and because your end rights are not always as well respected by each country in a dispute. Therefore, some companies end up paying to maintain their country filings on top of their Madrid Protocol filings. On the other hand, we do make regular use of the CTM filing, and it has offered true cost savings for us over individual country filings.
What do you like most about working with trademarks?
I am passionate about both trademark and domain name work, and I feel very fortunate to have found a career that is such a good match for me. It’s funny, because I don’t think anybody really says “I want to be a trademark attorney when I grow up”, but you rarely meet an unhappy trademark attorney!
Trademark professionals tend to be very interesting, well-rounded people and working with other trademark professionals all around the world is one of my favorite parts of the job. I also love that this is a fast-paced, constantly evolving area of law, so there is always something new to learn, and you can really contribute to the law’s evolution by participating in INTA committees.
As an in-house trademark attorney, I enjoy the heavy interaction with people from so many divisions within our business and feeling like I am able to directly contribute. These days, I am most interested in the intersection of IP protection and economics, and the pursuit of maximizing our bottom line in both the short and long term, via both use and protection of our IP rights and controlling costs through efficient practices. I truly enjoy that challenge.