Airbnb, Inc. v. CHIP / Jan Jansen
Claim Number: FA1908001860090
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is CHIP / Jan Jansen (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <airbnb.cooking>, <airbnb.earth>, <airbnb.fashion>, <airbnb.fishing>, <airbnb.horse>, <airbnb.moe>, <airbnb.osaka>, <airbnb.rodeo>, <airbnb.surf>, <airbnb.tube>, <airbnb.vodka>, and <airbnb.wedding>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2019; the Forum received payment on August 29, 2019.
On September 5, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <airbnb.cooking>, <airbnb.earth>, <airbnb.fashion>, <airbnb.fishing>, <airbnb.horse>, <airbnb.moe>, <airbnb.osaka>, <airbnb.rodeo>, <airbnb.surf>, <airbnb.tube>, <airbnb.vodka>, and <airbnb.wedding> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 September 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@airbnb.cooking, postmaster@airbnb.earth, postmaster@airbnb.fashion, postmaster@airbnb.fishing, postmaster@airbnb.horse, postmaster@airbnb.moe, postmaster@airbnb.osaka, postmaster@airbnb.rodeo, postmaster@airbnb.surf, postmaster@airbnb.tube, postmaster@airbnb.vodka, postmaster@airbnb.wedding. Also on September 9, 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 October 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the globally famous trademark AIRBNB which is used in connection with its exceptionally popular business of matching renters of temporary lodgings with owners of rental properties and helping its customers find classes, excursions, and other experiences related to travel. Complainant has rights in the AIRBNB mark through its use in commerce since 2009 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and many other national trademark offices around the world dating back to 2010. Respondent’s <airbnb.cooking>, <airbnb.earth>, <airbnb.fashion>, <airbnb.fishing>, <airbnb.horse>, <airbnb.moe>, <airbnb.osaka>, <airbnb.rodeo>, <airbnb.surf>, <airbnb.tube>, <airbnb.vodka>, and <airbnb.wedding> domain names, all filed on April 20, 2019, are all identical to Complainant’s AIRBNB mark as each incorporates the mark in its entirety along with a generic top-level domain (“gTLD”) (“.cooking,” “.earth,” “.fashion,” “.fishing,” “.horse,” “.moe,” “.osaka,” “.rodeo,” “.surf,” “,tube,” “.vodka,” or “.wedding”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s AIRBNB mark nor is it commonly known by any of the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names do not resolve to any active websites.
Respondent registered and uses the disputed domain names in bad faith. Respondent is believed to have registered the disputed domain names, which resolve to inactive websites, with the intent to sell them to Complainant, one of its competitors, another cybersquatter, or worse, to a fraudster. Furthermore, Respondent had actual knowledge of Complainants’ rights in the AIRBNB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) each of the disputed domain names was registered and is being used by Respondent in bad faith.
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 rights in the AIRBNB mark based upon registration of the mark with the USPTO and the trademark offices of many other countries. Registration of a mark with the USPTO alone is sufficient to establish rights in that mark for purposes of the Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the AIRBNB mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that each of Respondent’s <airbnb.cooking>, <airbnb.earth>, <airbnb.fashion>, <airbnb.fishing>, <airbnb.horse>, <airbnb.moe>, <airbnb.osaka>, <airbnb.rodeo>, <airbnb.surf>, <airbnb.tube>, <airbnb.vodka>, and <airbnb.wedding> domain names are identical or confusingly similar to the AIRBNB mark, as the names incorporate the mark along with a gTLD (“.cooking,” “.earth,” “.fashion,” “.fishing,” “.horse,” “.moe,” “.osaka,” “.rodeo,” “.surf,” “,tube,” “.vodka,” or “.wedding”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”) Furthermore, where the TLD bears some relation to the Complainant’s business confusion can be enhanced. See Dell Inc. v. Asri Fahmi / drivers.inc, Claim No. FA 1799045 (Forum Aug. 11, 2018) (because the term “drivers” is directly relevant to the Complainant’s computer business “the addition of the word ‘drivers’ in the disputed domain name adds to the confusion with Complainant’s trade mark.”) As Complainant promotes, to its customers, various travel experiences that include such things as cooking classes, horseback riding, surfing, river tubing, and wedding receptions, the TLD’s chosen by the Respondent appear to focus on elements of Complainant’s business and thus to enhance the confusing similarity of the disputed domain names. The Panel therefore determines that each of the disputed domain names is confusingly similar to the 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by such names nor has Complainant authorized Respondent to use the AIRBNB mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the at-issue domain name as “CHIP / Jan Jansen,” and no information on the record indicates that Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by any of the disputed domain names.
Complainant also asserts that Respondent’s inactive holding of the disputed domain names indicates that it does not have any rights or legitimate interests in the name. Many prior UDRP decisions have held that inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends that Respondent’s domain name does not resolve to an active webpage but it fails to provide any screenshots or other evidence to support this claim. Nevertheless, the Panel’s own attempts at browsing to the disputed domain names resulted in no resolving websites. The Panel therefore determines that Respondent does not have rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that in light of the widespread fame and notoriety of Complainant's AIRBNB mark, including the extensive media attention and celebrity endorsements it has received, its broad following on social media, and taking into account its many trademark registrations, it is inconceivable that Respondent could have registered the disputed domain names without actual or constructive knowledge of Complainant's rights in its mark. The Panel finds that arguments of bad faith based on constructive notice are most often irrelevant, however, because UDRP case precedent typically declines to find bad faith as a result of constructive knowledge. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, the Panel agrees with Complainant that Respondent must have had actual knowledge of Complainant's rights in the AIRBNB mark prior to registering the disputed domain name and finds that actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). 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.”) Complainant further asserts that Respondent’s registrations of twelve domain names, all of which incorporate the entire AIRBNB mark, well after Complainant’s rights in the mark was established, indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark when it registered the disputed domain names.
Next, the Panel notes that Complainant does not make any arguments that are contemplated under Policy ¶ 4(b). However, it is well accepted that the examples set out in ¶ 4(b) are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances).
Complainant does assert, however, that Respondent’s failure to use the disputed domain names is, itself, evidence of its bad faith. Under the theory known as passive holding, inactive ownership of a domain name can serve as evidence of 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).”); Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”) The Panel notes that, despite Complainant’s contention that the domain names do not resolve to any active websites, no screenshots or other evidence is provided to support this argument. However, as noted above, the Panel has confirmed this contention itself and so it will be accepted. In the absence of any Response or other submission by the Respondent that could shed some light on its intentions, the Panel therefore determines that Respondent does inactively hold the disputed domain names and finds, by a preponderance of the evidence before it, that Respondent has registered and used the disputed domain names in bad faith per 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 <airbnb.cooking>, <airbnb.earth>, <airbnb.fashion>, <airbnb.fishing>, <airbnb.horse>, <airbnb.moe>, <airbnb.osaka>, <airbnb.rodeo>, <airbnb.surf>, <airbnb.tube>, <airbnb.vodka>, and <airbnb.wedding> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 4, 2019
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