Airbnb, Inc. v. Vivek jade / Jedx labs
Claim Number: FA2001001881670
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Vivek jade / Jedx labs (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airbnbindia.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2020; the Forum received payment on January 31, 2020.
On February 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <airbnbindia.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 February 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@airbnbindia.com. Also on February 3, 2020, 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 February 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it has rights in the AIRBNB service mark established through its ownership of the portfolio of registered trademarks described below and its extensive use of the AIRBNB mark in its international online accommodation booking business. With regard to its reputation and goodwill in the mark, Complainant claims that it has continuously used AIRBNB as a service mark. and trade name and has maintained its website at the <airbnb.com> address since as early as March 4, 2009. Complainant claims to have more than 7 million active listings on its service and that its services are used by customers in more than 100,000 cities spanning over 220 countries. It also claims more than 16.2 million followers on Facebook, 714,000 followers on Twitter, 4.7 million followers on Instagram, and numerous others on Pinterest, WeChat, and Weibo.
Complainant submits that the disputed domain name <airbnbindia.com> is confusingly similar to its AIRBNB mark as it incorporates the entirety of Complainant’s mark adding only the geographical term “India” and the gTLD “.com” extension. Complainant argues that the disputed domain name is likely to confuse consumers as to its connection with Complainant and submits that in Nikon, Inc. and Nikon Corporation v. Technilab, Inc., Case No. D2000-1774 (WIPO Mar. 7, 2001), the panel wrote “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.”
Complainant submits that the inclusion of a geographically descriptive term (such as “India”) and a gTLD (such as “.com”) does not distinguish the disputed domain name from a mark. See Airbnb, Inc. v. Jan Everno, The Management Group II, Case No. FA1807001795874 (Forum Aug. 16, 2018) (“The addition of a geographic term and a gTLD to a mark in the creation of a domain name does not differentiate the disputed domain from said mark in a Policy ¶ 4(a)(i) analysis.”).
Complainant submits that coupling Complainant’s mark with the word “India” conveys the false message that Respondent is Complainant’s affiliate in India or that the website to which the disputed domain name resolves is in fact Complainant’s website for India, thus increasing the confusing similarity of the disputed domain name to Complainant’s mark.
Complainant submits that Respondent has neither rights nor legitimate interests in the disputed domain name arguing that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. See Airbnb, Inc. v. Norman King / Target Marketing Group, Case No. FA1707001738345 (Forum July 27, 2017) (“When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name.”).
Complainant further argues that on information and belief Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services, but instead the disputed domain name resolves to a potentially competing site that appears to offer bookings of accommodation. Complainant submits that such activity does not constitute a bona fide use of the disputed domain name.
Complainant adds that Respondent cannot be commonly known by the disputed domain name because Complainant has not authorized Respondent to use its AIRBNB mark.
Complainant alleges that the disputed domain name was registered and is being used in bad faith. Complaint alleges that the disputed domain name was registered with Complainant’s mark in mind and with an intent to cause confusion. Complainant asserts that is used the AIRBNB mark at least as early as March 4, 2009 and the disputed domain name was not registered until nearly ten years later, on February 6, 2019.
Complainant alleges that Respondent has been using the AIRBNB mark to direct traffic to its website and further was using Respondent’s Bélo logo as the favicon to mislead those visitors into believing that Respondent’s services (if they exist) are offered or endorsed by, or associated with, Complainant. Complainant submits that this is the essence of bad faith under Policy ¶ 4(b)(iv). See Fossil Group, Inc. v. Oliver Fernandez, Case No. FA1809001804541 (Forum Oct. 1, 2018) (“Complainant provides a screenshot of the resolving webpage, which does contain the FOSSIL mark and logo . . . also purporting to sell fashion related products. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).”).
Complainant adds that the website to which the disputed domain name resolves is similar to the Complainant’s website but is not currently fully operational. Complainant alleges that visitors to Respondent’s website are likely to believe that Complainant’s service is not working properly, potentially damaging Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the provider of a well-known accommodation booking service and is the owner of a portfolio of trademark registrations for the AIRBNB trademark including the following United States federal trademark registrations on the Principal Register:
United States service mark registration AIRBNB, registration number 3,890,025 registered on December 14, 2010 for services in International Class 35;
United States service mark registration AIRBNB, registration number 3,890,027 registered on December 14, 2010 for services in International Class 43;
United States service mark registration AIRBNB, registration number 3,963,410, registered on May 17, 2011 for services in International Class 45;
United States service mark registration AIRBNB, registration number 4,289,397 registered on February 12, 2013 for services in International Classes 36,42 and 45;
United States service mark registration AIRBNB, registration number 4,495,076 registered on March 11, 2014 for services in International Class 38.
Also within Complainant’s portfolio is a number of trademark registrations in India where Respondent is established including Indian trademark registration number 2044547, registered on August 16, 2016 for services in international class 41.
Complainant has an established Internet presence providing its online services through the website to which Complainant’s domain name <airbnb.com> resolves.
The disputed domain name was registered on June 2, 2019 and resolves to a website that purports to offer accommodation booking services but appears not to be currently fully operational.
There is no information available about Respondent except for that provided in the Compliant, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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 has adduced uncontested evidence that it has rights in the AIRBNB trademark established through its ownership of the abovementioned portfolio of registered service marks and the goodwill it has established in the mark through its extensive use in Complainant’s online accommodation booking business.
The disputed domain name <airbnbindia.com> is composed of Complainant’s AIRBNB mark in its entirety in combination with the word “India” and the gTLD “.com” extension. Complainant’s distinctive service mark AIRBNB is the initial, only distinctive and dominant element in the disputed domain name. The word “India” does not contribute any distinctive characteristic to the disputed domain name, except perhaps to create the impression that it relates to Complainant’s business in India.
In the circumstances of the present case, the gTLD extension may be ignored in making the comparison for the purposes of Policy ¶ 4(a)(i).
This Panel finds that the disputed domain name is confusingly similar to Complainant’s AIRBNB trademark and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name; that Respondent cannot be commonly known by the disputed domain name because Complainant has not authorized Respondent to use its AIRBNB mark; that on information and belief Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead the disputed domain name resolves to a potentially competing site that appears to offer bookings of accommodations, similar to Complainant’s website.
It is well established that in such circumstances, the burden of production shifts to Respondent to prove that it has rights or legitimate interests. As Respondent has failed to respond to the Complaint it has not discharged that burden, this Panel must find therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Having considered the evidence adduced, this Panel finds that on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind with an intent divert Internet traffic intended for Complainant to Respondent’s website. The disputed domain name was registered long after Complainant’s name and mark acquired its global reputation and it is most improbable that the registrant of the disputed domain name was unaware of Complainant and its mark when the disputed domain name was selected and registered.
Respondent is using the disputed domain name as the address of a website that creates the impression that it is offering accommodation services. It appears that this website is not fully operational, but insofar as it is operational it creates the false and misleading impression that it is owned, controlled, affiliated with or endorsed by Complainant.
Having considered the uncontested evidence adduced by Complainant, this Panel finds that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's AIRBNB mark as to the source, sponsorship, affiliation, or endorsement of his web site and a product or service on his web site.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <airbnbindia.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________
James Bridgeman SC
Panelist
Dated: February 26, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page