Airbnb, Inc. v. Sol De La Cruz
Claim Number: FA1904001840421
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Sol De La Cruz (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airbnbhelp.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2019; the Forum received payment on April 24, 2019.
On April 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <airbnbhelp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@airbnbhelp.com. Also on April 26, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is known for its revolutionary approach to people-powered travel and hospitality. Complainant has rights in the AIRBNB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, registered December 14, 2010). See Compl. Annex. I. The disputed domain name is confusingly similar to Complainant’s mark as Respondent incorporates the entirety of Complainant’s mark and adds the generic word “help” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Furthermore, Respondent does not use the domain name with a bona fide offering of goods or services as the disputed domain name resolves to a parked website. Additionally, Respondent has offered to sell the disputed domain name to Complainant, showing that Respondent lacks legitimate interest in the domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s AIRBNB mark. Furthermore, use of a domain name that resolves to a parked website is sufficient to establish Respondent’s bad faith. Additionally, Respondent’s offer to sell the disputed domain name to Complainant is further evidence of bad faith. Lastly, Respondent was well-aware of Complainant’s rights in the AIRBNB mark due to Complainant’s extensive, global use and fame of the mark.
B. Respondent
Respondent did not submit a response.
1. Respondent registered the <airbnbhelp.com> domain name on June 10, 2015.
2. Complainant has established rights in the AIRBNB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, registered December 14, 2010).
3. The disputed domain name resolves to an inactive webpage which displays the message “This Web page is parked FREE, courtesy of GoDaddy.”
4. Complainant’s email transactions with Respondent show Respondent’s desire to sell the disputed domain name for $6,000.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the AIRBNB mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chan hut / Beyoncé Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the AIRBNB mark (e.g. Reg. No. 3,890,025, registered December 14, 2010). See Compl. Annex I. Therefore, the Panel finds Complainant has rights in the AIRBNB mark per Policy ¶ 4(a)(i).
Complainant further argues that the disputed domain name is confusingly similar to Complainant’s mark as Respondent incorporates the entirety of Complainant’s mark adds the generic word “help” and the “.com” gTLD. Panels have previously held that the addition of a generic term to a complainant’s mark does not distinguish the domain name from a complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Further, the addition of a gTLD is irrelevant in the analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AIRBNB mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant asserts Respondent has no rights or legitimate interests in the <airbnbhelp.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s AIRBNB mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ (c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information identifies Respondent as “Sol De La Cruz” and there is nothing in the record to suggest that Respondent is or was authorized to use the AIRBNB mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ (c)(ii).
Next, Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services as the disputed domain name resolves to a parked website. Panels have consistently found that registrants that ‘park’ their domain names using redirecting services have not made a bona fide offering of goods or services per Policy ¶ 4(c)(i). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant has provided the Panel with a screenshot of the resolving webpage, which displays the message “This Web page is parked FREE, courtesy of GoDaddy.” See Compl. Annex L. Therefore, the Panel finds that Respondent’s does not make a bona fide offering of goods or services per Policy ¶ 4(c)(i), and/or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant argues that Respondent has offered to sell the disputed domain name to Complainant, showing that Respondent lacks legitimate interest in the domain name. Panels have previoulsy held that a respondent’s offer to sell a domain name is evidence that respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant has provided screenshots of email transactions with Respondent that show Respondent’s desire to sell the domain name for $6,000. Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name provides evidence that Respondent lacks rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent engaged in bad faith by offering to sell the disputed domain name to Complainant. Panels have previously held that offers to sell specifically targeted at a complainant is evidence of bad faith under Policy ¶ 4(b)(i). See State Farm Mutual Automobile Insurance Company v. Yu Ke Rong, FA 1750476 (Forum Oct. 25, 2017) (finding bad faith where the respondent attempted to sell the domain name to the complainant for $800.00: “offers targeted specifically at a complainant may serve as evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant has provided screenshots of email transactions with Respondent that show Respondent’s desire to sell the domain name for $6,000. See Compl. pg. 9. Therefore, the Panel finds that Respondent’s offer to sell the disputed domain name provides evidence that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(i).
Next, Complainant contends that Respondent engaged in bad faith by attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s AIRBNB mark. Attempts to confuse Internet users into believing a respondent is affiliated with a complainant can provide evidence of bad faith per Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered the disputed domain name to capitalize off the notoriety associated with the AIRBNB mark in bad faith per Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent’s use of the disputed domain name to resolve to a parked website is sufficient to establish Respondent’s bad faith. Parking a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshot of the resolving webpage, which displays the message “This Web page is parked FREE, courtesy of GoDaddy.” See Compl. Annex L. Accordingly, the Panel agrees and finds that Respondent’s use of the disputed domain name to host a parking page provides evidence of bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant argues Respondent was well-aware of Complainant’s rights in the AIRBNB mark at the time Respondent registered and subsequently used the disputed domain name and this indicates bad faith registration and use. Actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name can adequately evince find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant contends that its extensive, global use, and fame of the AIRBNB mark allows for the inference that Respondent had actual knowledge of Complainant’s rights in the mark. As such, the Panel infers that Respondent had actual notice of Complainant’s rights in the AIRBNB mark, providing additional evidence of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <airbnbhelp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 30, 2019
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