Airbnb, Inc. v. Li Peiji / Shenzhen Seamoon Technology Co.,Ltd.
Claim Number: FA2107001955777
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Li Peiji / Shenzhen Seamoon Technology Co.,Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airbnk.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2021; the Forum received payment on July 19, 2021.
On July 21, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <airbnk.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 July 22, 2021, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 11, 2021 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@airbnk.com. Also on July 22, 2021, the Chinese language 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.
A timely Response was received and determined to be complete on August 16, 2021.
On August 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
Respondent Li Peiji / Shenzhen Seamoon Technology Co.,Ltd. submitted a Response in English, however, this response was received late. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). Having regard to all the circumstances, the Panel exercises its discretion to accept and consider the Response. The proceeding may therefore go forward on that basis.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. The Panel may decide, per Rule 11, that because the Respondent signed an agreement in Chinese, the Complaint should be resubmitted in Chinese and the case recommenced.
Alternatively, the Panel may decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceeding, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends that since the disputed domain name contains an English word, Respondent registered the disputed domain name in connection with the “.com” gTLD, which primarily targets Internet users who speak English, and Respondent has communicated with Complainant extensively in English, Respondent is at least proficient in the English language. See Amend. Compl. Annex M. Further, Complainant is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents. The Panel has considered all relevant circumstances and having done so determines that the proceeding should be conducted in the English language. The proceeding may go forward on that basis.
A. Complainant
Complaint made the following contentions.
Complainant, Airbnb, Inc., operates an online marketplace for lodging, primarily homestays for vacation rentals. See Amend. Compl. Annex E. Complainant has rights in the AIRBNB mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,543,713, registered June 3, 2014). See Amend. Compl. Annex I. Respondent’s <airbnk.com> domain name is confusingly similar to Complainant’s mark since the domain name consists of a close and common misspelling of Complainant’s mark, replacing the single letter “b” at the end of “AIRBNB” with “k,” and appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <airbnk.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AIRBNB mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent intends to use the disputed domain name for personal gain.
Respondent registered and uses the <airbnk.com> domain name in bad faith because Respondent registered the domain name with an intent to cause confusion. Specifically, Respondent registered for a domain name which incorporates Complainant’s whole mark and simply replaces the last letter “b” with “k,” thereby creating the same commercial impression as Complainant’s AIRBNB mark. Respondent also passes itself off as Complainant on the resolving website by making use of a close variation of Complainant’s trademarked Rausch color. Moreover, Respondent had actual knowledge of Complainant’s rights in the AIRBNB mark based on the global fame of the mark and Respondent’s clear intent to associate the disputed domain name with Complainant’s services.
B. Respondent
Respondent made the following contentions.
The domain name <airbnk.com> is sufficiently different from Complainant’s mark. Although there is a difference of only one character between the domain name and the mark, many other companies have domains that are only one character different from well-known brands such as Apple and including Airbnb.
Respondent has rights and legitimate interests in the <airbnk.com> domain name. Respondent is commonly known by the disputed domain name since it has been doing business under the name “Airbnb.” Respondent uses the <airbnk.com> domain name for a bona fide offering of goods and services as its uses of the domain corresponds with the domain name. “Airbnk” is descriptive of Respondent’s business since Air stands for “wireless, like transmits in air,” B stands for “Bank,” N means “and,” and K stands for “key and lock,” as the first letter of “Key” and the last letter of “Lock.”
Complainant has failed to demonstrate bad faith since Respondent has been using the disputed domain name for business purposes corresponding to the name. Respondent has never used the AIRBNB mark “for publicity stunt,” never implied affiliation with Complainant, never procured unjust enrichment, and never intended to transfer the domain name. In other words, Respondent has not registered and used the domain name in bad faith.
1. Complainant is a United States company that operates an online marketplace for lodging, primarily homestays for vacation rentals.
2. Complainant has established its trademark rights in the AIRBNB mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,543,713, registered Jun. 3, 2014).
3. Respondent is a company in China that provides dynamic password products to banks and other units.
4. Respondent registered the disputed domain name on June 13, 2017.
5. Respondent’s intention from the time of the registration of the domain name and currently has been to use the domain name for its own personal benefit and it has passed itself off as Complainant.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the AIRBNB mark through its registration with the USPTO (e.g., Reg. No. 4,543,713, registered Jun. 3, 2014). See Amend. Compl. Annex I. Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AIRBNB mark. Complainant argues that Respondent’s <airbnk.com> domain name is confusingly similar to Complainant’s AIRBNB mark because the domain name consists of a close and common misspelling of Complainant’s mark, replacing the single letter “b” at the end of “AIRBNB” with “k,” appending the gTLD “.com.” Substituting one letter with another to create a simple misspelling and adding the gTLD “.com” to the complainant’s mark do not negate confusing similarity. See Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is identical and/or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AIRBNB trademark and to use it in its domain name;
(b) Respondent registered the domain name on June 13, 2017;
(c) Respondent’s intention from the time of the registration of the domain name and currently has been to use the domain name for its personal benefit and it has passed itself off as Complainant.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <airbnk.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AIRBNB mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “Li Peiji / Shenzhen Seamoon Technology Co.,Ltd” as the registrant of the domain name. See Registrar Verification Email. Additionally, Complainant asserts that it has not authorized Respondent to use the AIRBNB mark. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent intends to use the disputed domain name for personal gain and Respondent has used the domain name to pass itself off as Complainant. Specifically, Respondent hosts a website where Respondent passes itself off as Complainant, using similar logo and color scheme, in order to offer products and services that target tenants, landlords, and homeowners, who could also be Complainant’s customers. Passing off as complainant by imitating complainant’s color scheme and offering related goods and services on the website do not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see additionally Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1784943 (Forum June 7, 2018) (“the <trulia.co> domain name resolves to a variety of pages, including real-estate-related advertising and to the website of a direct competitor of the Complainant in the online real estate field. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots showing that Respondent hosts a website that purports to be a residential or rental home security company. See Amend. Compl. Annex K. Respondent also advertises smart locks and Bluetooth unlock services, targeting typical customers of Complainant. See Amend. Compl. Annex N. Additionally, Respondent uses variations of Complainant’s trademarked Belo Design logo Rausch color, thus increasing the potential confusion. See Amend. Compl. Annex L. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. Respondent has filed a Response and by that means has attempted to rebut the prima facie case against it. However, although the Panel has given careful consideration to the Response, the Panel is not influenced by it and finds that it does not rebut any of the submissions of Complainant. This is particularly on the issue of why Respondent felt it was necessary to register a domain name that was so similar to that of Complainant and why Respondent could not have achieved its objectives by choosing a domain name that more accurately reflected its activities. The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <airbnk.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) because Respondent registered the domain name with an intent to cause confusion. Specifically, Respondent registered a domain name which incorporates Complainant’s whole mark and simply replaces the last letter “b” with “k,” thereby creating the same commercial impression as Complainant’s AIRBNB mark. The evidence is that Respondent also passes itself off as Complainant on the resolving website by making use of a close variation of Complainant’s trademarked Rausch color. Registration of a domain name which appropriates a complainant’s mark for commercial gain, and especially when respondent passes itself off as complainant on the website and offers competing or unrelated goods and services, is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see additionally PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). The Panel notes Complainant’s argument that the disputed domain name is confusingly similar to Complainant’s mark, and that Complainant provides screenshots showing that Respondent’s website makes use of a color scheme closely similar to Complainant’s Rausch color. See Amend. Compl. Annex L. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complaint argues that Respondent registered the <airbnk.com> domain name with actual knowledge of Complainant’s rights in the AIRBNB mark based on the global fame of the mark and Respondent’s clear intent to associate the disputed domain name with Complainant’s services. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark as well as the respondent’s use of the disputed domain name to advertises related goods. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see additionally Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). The Panel notes that Complainant provides evidence of Respondent’s use of the website to advertise goods and services that target Complainant’s typical customers. See Amend. Compl. Annexes. K & N. Therefore, as the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the AIRBNB mark, it finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airbnk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 23, 2021
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