Airbnb, Inc. v. Terry McDaniel
Claim Number: FA1706001737771
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, U.S.A. Respondent is Terry McDaniel (“Respondent”), California, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <luxairbnb.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2017; the Forum received payment on June 28, 2017.
On June 29, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <luxairbnb.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 June 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2017 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@luxairbnb.com. Also on June 29, 2017, 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 July 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the AIRBNB mark in connection with worldwide, user-powered temporary lodging.
Complainant registered the AIRBNB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,890,027, registered Dec. 14, 2010), as well as in numerous other jurisdictions, which demonstrates its rights in the mark.
Respondent’s <luxairbnb.com> domain name is confusingly similar to Complainant’s AIRBNB mark because it incorporates that mark in its entirety and merely adds a generic word, “lux”, which is a reference to Complainant’s luxury rental properties, and a generic top-level domain (gTLD), “.com”.
Respondent has no rights or legitimate interests in the disputed domain name because Respondent is neither commonly known by the disputed domain name nor is Respondent using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to resolve to a parked website.
Respondent registered and is using the disputed domain name in bad faith. Respondent registered the domain name with the intent to cause confusion, trading in on the fact that AIRBNB is a distinctive mark that has been associated with Complainant for a long time previous to Respondent’s registration of the disputed domain name. Additionally, Respondent had actual knowledge of Complainant’s rights at the time of registration, which can be inferred from the notoriety of Complainant’s AIRBNB mark. Furthermore, Respondent has failed to make active use of the disputed domain name in connection with an active website. Finally, when Complainant offered Respondent $5,000.00 to transfer the disputed domain name, Respondent made a counter-offer of $100,000.00 and such a demand that is clearly in excess of “out-of-pocket” costs demonstrates bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AIRBNB mark through its registration of such mark with the USPTO as well as through additional registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its AIRBNB trademark.
Respondent’s <luxairbnb.com>domain name addresses a parking webpage displaying links to Complainant’s competition.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its AIRBNB mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
The at-issue domain name consists of Complainant’s entire AIRBNB trademark prefixed with the suggestive term “lux” and followed by the country code top-level domain name “.com”. The slight differences between the domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that the at-issue <luxairbnb.com>domain name is confusingly similar to Complainant’s AIRBNB mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also, Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Terry McDaniel.” Further, there is no evidence in the record which otherwise suggests that the Respondent is known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii) that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <luxairbnb.com> domain name addresses a parking page which displays links to services competing with those offered by Complainant. Respondent’s use of the at-issue domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent’s <luxairbnb.com> domain name addresses a parking webpage displaying links to Complainant’s competition. In light of the domain name’s overt inclusion of Complainant’s well know mark, it appears that Respondent’s intent in registering and using the <luxairbnb.com> domain name was to capitalize on the goodwill associated with the AIRBNB trademark, rather than for some benign reason. Respondent, having no affiliation with Complainant, endeavors to confuse internet users into believing its <luxairbnb.com> website is somehow sponsored or authorized by Complainant. Respondent does so ostensibly so that it will benefit from increased web traffic to the <luxairbnb.com> website. Thereby, Respondent demonstrates its bad faith registration and use of the domain name under the Policy ¶ 4(b)(iv). See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously connected with well-known products,” its very use by someone with no connection to these products can evidence opportunistic bad faith). Moreover, the failure of Respondent to associate the at-issue domain name with an active website likewise indicates Respondent’s bad faith. See TV Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) the respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site).
Additionally, according to assertions by Complainant Respondent counteroffered to sell the <luxairbnb.com> domain name to Complainant for $100,000.00 after Complainant, on its own initiative, offered to purchase the domain name for $5,000.00. Respondent’s counteroffer, although clearly in excess of its “out-of-pocket” costs regarding the at-issue domain name, is not significant to the Panel’s Policy ¶ 4(a)(iii) analysis. The buy-sell exchange, initiated by Complainant, was an attempt to settle the parties’ dispute. There is no evidence consistent with Policy ¶ 4(b)(i) showing that Respondent registered the domain name primarily to offer the domain name for sale to Complainant.
Finally, Respondent registered the <luxairbnb.com>domain name knowing that Complainant had trademark rights in the AIRBNB trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s overt coupling of a term suggestive of Complainant’s business with Complainant’s mark in forming the <luxairbnb.com> domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some inoffensive reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <luxairbnb.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <luxairbnb.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 26, 2017
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