Airbnb, Inc. v. JAMES GRANT
Claim Number: FA1711001760182
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is JAMES GRANT (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customer-service-airbnb.com>, registered with Enom, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2017; the Forum received payment on November 28, 2017.
On November 29, 2017, Enom, LLC confirmed by e-mail to the Forum that the <customer-service-airbnb.com> domain name is registered with Enom, LLC and that Respondent is the current registrant of the name. Enom, LLC has verified that Respondent is bound by the Enom, 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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@customer-service-airbnb.com. Also on December 5, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
1. Complainant’s basis for its Amended Complaint is its use, registration, and ownership of the AIRBNB mark as well as the AIRBNB.COM domain name, other domains incorporating the AIRBNB Mark (e.g., AIRBNB.FR), and their corresponding websites and services.
2. Complainant is the owner of the exceptionally popular AIRBNB brand, known worldwide for its revolutionary approach to people-powered travel and hospitality. Complainant is a trusted community marketplace for people to list, discover, and book unique accommodations around the world—online or from a mobile phone or tablet. Airbnb connects people to unique travel experiences, at any price point, in more than 65,000 cities and 191 countries.
3. Airbnb uses the power of the internet to provide virtual communities in which users can connect with each other and with unique properties and geographic locations throughout the world. Specifically, Airbnb matches renters of temporary lodging with owners of rental properties, provides registered users with directories of rental properties, and property reviews and renter feedback.
4. In addition, Airbnb also offers curated “Trips” (travel experiences, including but not limited to handcrafted activities), “Guidebooks” (collections of recommendations and tips about cities from local hosts and other influencers), travel recommendations, and other resources sourced from local experts in destinations around the world. Airbnb also provides users with opportunities to engage in a wide range of new experiences involving food and drink, entertainment, music, sports, fashion, the arts, history, and nature as well as travel and lodging. Through Airbnb’s services, travelers can book a wide range of activities as part of their travel plans.
5. Since Complainant’s launch, its business has enjoyed staggering growth. In February 2011, Complainant announced its 1 millionth booking since its inception. In January 2012, Complainant accounted its 5 millionth booking. Five months later, Complainant announced that this number had doubled, to 10 million bookings.
6. By November 25, 2014, there were 640,000 Airbnb hosts. By May 2015, over 500,000 people were staying in Airbnb properties per night. More than one million guests booked rooms on Airbnb on December 31, 2015. By July 2016, Airbnb had celebrated its 100 millionth guest. As of April 2017, 1.2 million people were staying at Airbnb listed properties per night. There are now more than 3 million active listings on Complainant’s service.
7. Each year, Airbnb hosts a three-day event called the Airbnb Open event which highlights the business’s growth and development. In 2014, over 1,500 attendees from 41 countries attended Airbnb Open 2014. Those numbers grew to over 5,000 attendees from 110 countries for Airbnb Open 2015, and 20,000 attendees from 103 countries for Airbnb Open 2016. The Facebook Live feed for the 2016 event had 5 million followers, with almost 24 million total views during the event. The Twitter feed had 3.5 million video views, the Snapchat feed had 1.4 million video views, and the Instagram feed had 1.6 million video views.
8. In 2015, Airbnb had 40 million travelers check into Airbnb listings. That number grew to close to 80 million in 2016. As of October 2017, the company had hosted more than 200 million guests through more than 3 million property listings. The breadth of use has been staggering.
9. Airbnb has received extensive media attention, with celebrity endorsements from Neil Patrick Harris, Kim Kardashian, Kourtney Kardashian, and Britney Spears, among many others. Airbnb has entered into numerous sponsorships and partnerships, further expanding its recognition worldwide:
a. In April 2015, following the Obama administration’s easing of restrictions on U.S. businesses operations in Cuba, Airbnb expanded to Cuba, one of the first U.S. companies to do so.
b. In June 2015, Airbnb sponsored the Manor F1 Team.
c. In August 2015, Airbnb partnered with Tesla Motors to provide chargers at certain host houses.
d. Airbnb was the official “alternative accommodations” service for the 2016 Olympics in Brazil, featuring over 66,000 guest arrivals for the event, with host income estimated to be approximately $25 million for the event.
e. Airbnb also distributed a much-discussed and well-received commercial during the 2017 Super Bowl, which had an estimated 111.3 million viewers, according to Nielsen.
10. Airbnb’s main website, located at the domain name AIRBNB.COM, enjoys widespread popularity. Per Alexa, as of October 30, 2017, the website is the 121st most popular website in the United States, and 341st most popular website in the world. In the past six months alone, AIRBNB has moved up 64 positions in the global rankings.
11. Airbnb has almost 10 million followers on Facebook, 627,000 followers on Twitter, 2.4 million followers on Instagram, and numerous others on Pinterest, WeChat, and Weibo. There have been more than 95 million video views for Complainant’s social media posts, resulting in more than 15 million clicks to Complainant’s services. Airbnb has become one of the fastest hyper-growth companies of all time.
12. Complainant is the owner of the service mark and trademark AIRBNB (“Complainant’s Mark”, the “AIRBNB Mark” or the “Mark”), the trade name AIRBNB, and the domain name AIRBNB.COM, among others. In continuous use since at least as early as March 4, 2009, Complainant’s Mark has become one of the most recognized brands in the world.
13. Complainant’s well-known and famous AIRBNB Mark is protected in countries around the world including the United States. Airbnb owns numerous trademark registrations for the AIRBNB Mark around the world, including but not limited to the following federal trademark registrations in the United States:
a. Registration No. 3,890,025, first used March 4, 2009, filed April 27, 2010, issued December 14, 2010, covering “Providing online business directories featuring temporary lodging” in International Class 35;
b. Registration No. 4,495,076, first used March 4, 2009, filed April 26, 2010, issued March 11, 2014, covering “providing online interactive bulletin board for transmission of messages among computer users concerning listing, rental and leasing of real estate; electronic mail service; providing online electronic bulletin boards for transmission of messages among computer users concerning rankings, ratings, reviews, referrals, and recommendations relating to business organizations and service providers; telecommunications services, namely, the electronic transmission of data and information; providing an online, interactive bulletin board for the transmission of messages among computer users concerning the sale of goods and services via a global communications network; providing on-line forums and discussion groups for transmission of messages among computer users; and electronic transmission of images” in International Class 38;
c. Registration No. 3,890,027, first used March 4, 2009, filed April 27, 2010, issued December 14, 2010, covering “Arranging temporary housing accommodations; Providing online reservation services for temporary lodging; Travel agency services, namely, making reservations and bookings for transportation and lodging; Providing temporary lodging information via the Internet” in International Class 43;
d. Registration No. 3,963,410, first used March 4, 2009, filed April 26, 2010, issued May 17, 2011, covering “Providing a social networking web site for entertainment purposes” in International Class 45; and
e. Registration No. 4,289,397 (citing International Registration Nos. 1154097 and 1141260):
i. First used March 4, 2009, filed April 27, 2010, issued February 12, 2013, covering “Providing an online interactive website featuring the listing and rental of temporary lodging; Providing online computer database and online searchable databases featuring information, listings and announcements about housing, apartments, condominiums, townhouses, real estate, commercial real estate and rental and leasing advertisements for the foregoing; Real estate listing, rental and leasing services for residential housing, apartments, rooms in homes, sublets, vacation homes, cabins and villas and office space in commercial properties on a global computer network; Providing reviews and feedback about listers and renters of real estate” in International Class 36;
ii. First used April 30, 2012, filed April 27, 2010, issued February 12, 2013, covering “Computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking featuring the rental and listing of real estate” in International Class 42; and
iii. First used March 4, 2009, filed April 27, 2010, issued February 12, 2013, covering “On-line social networking services” in International Class 45; and
A trademark assignment for the foregoing registrations, reflecting Complainant’s change of name, is attached. As discussed below, Airbnb’s rights in its AIRBNB Mark, and variations thereof, predate Respondent’s registration of the Infringing Domain Name.
FACTUAL AND LEGAL GROUNDS
This Amended Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Infringing Domain Name is identical or confusingly similar to Complainant’s Mark. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent registered CUSTOMER-SERVICE-AIRBNB.COM on January 18, 2016, well after Complainant’s AIRBNB Mark became known worldwide and well after Complainant registered its AIRBNB Mark in the United States (and elsewhere).
14. Respondent’s CUSTOMER-SERVICE-AIRBNB.COM domain name incorporates the entirety of Complainant’s Mark and adds generic verbiage. The Infringing Domain Name therefore is identical or confusingly similar to Complainant’s Mark, and as such, is likely to confuse consumers as to its connection with Airbnb. As the Panel wrote in Nikon, Inc. and Nikon Corporation v. Technilab, Inc., Case No. D2000-1774 (WIPO Mar. 7, 2001), “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.”
15. The addition of the generic phrase “customer-service” to the Infringing Domain Name does nothing to differentiate that domain name from Complainant or the services that Complainant renders under its AIRBNB Mark. See Land Rover v. Michael Kooyman a/k/a Impowered, Case No. FA1108001403899 (Forum Sept. 16, 2011) (“Each domain name wholly contains Complainant’s mark, adding the generic terms ‘customer care’ and ‘customer service.’ The Panel holds that these generic terms cannot serve to distinguish the disputed domain names, as both ‘customer care’ and ‘customer service’ are important aspects of Complainant’s business.”). Indeed, “[c]oupling Complainant’s mark with these terms [‘customer care’ and ‘customer service’] falsely implies some affiliation with Complainant, rendering the disputed domain name[ ] confusingly similar under Policy ¶4(a)(i).”
16. The inclusion of a gTLD (such as “.com”) does not distinguish the disputed domain name from a mark. In the words of the WIPO Overview 2.0, “[t]he applicable top- level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration) . . . .”). WIPO OVERVIEW OF WIPO PANEL VIEWS ON SELECTED UDRP QUESTIONS, ¶1.2 (Second Edition 2011); see Airbnb, Inc. v. Ashley B, Airbnb NOW, Case No. D2017-1135 (WIPO Aug. 2, 2017) (“The Panel . . . agrees that the incorporation of a gTLD suffix and the word “now” do nothing to further distinguish the disputed domain name from the Mark.”); Airbnb, Inc. v. Nima Rahnemoon, Case No. FA1706001737766 (Forum May 31, 2017) (“The gTLD .org does not serve to distinguish the Domain Name from the AIRBNB Mark, which is the distinctive component of the Domain Name.”).
17. AIRBNB is a well-known, distinctive, and strong mark. See Airbnb, Inc. v. Nima Rahnemoon, Forum Case No. FA1706001737766 (“Complainant’s AIRBNB mark . . . has a significant reputation”). This fame, distinctiveness, and strength only serve to increase the likelihood of confusion between Airbnb’s Mark and the Infringing Domain Name. See Nokia Corporation v Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (WIPO Oct. 31, 2001) (“It is clear that in this combination the well-known and distinctive trademark NOKIA stands out so that the public may think the domain name is somehow connected to the NOKIA trademark.”).
18. Indeed, as shown in more detail below, Respondent has used email addresses associated with other domain names incorporating the AIRBNB Mark (including AIRBNB.NETWORK and AIRBNB-MAIL.COM) to masquerade as Complainant, convince Airbnb’s customers to reserve lodgings with Respondent, and trick Airbnb’s customers into sending money to Respondent. On information and belief, Respondent’s registration of the Infringing Domain Name is similarly calculated to deceive Complainant’s users into thinking, falsely, that Respondent either is Complainant or is affiliated or connected with, or endorsed or approved by, Complainant.
19. Based on Complainant’s clear rights to the AIRBNB Mark and the public’s overwhelming association of Airbnb’s Mark with Airbnb, Respondent’s registration and use of the Infringing Domain Name is likely to cause consumer confusion. Respondent’s Infringing Domain Name is identical or confusingly similar to Complainant’s Mark.
[b.] Respondent has no rights or legitimate interests in the Infringing Domain Name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii).
20. The primary factors the Panel considers when evaluating whether the Respondent has rights or legitimate interests in the domain name at issue are: (1) whether the Respondent previously used the domain name in connection with the bona fide offering of goods or services; (2) whether the Respondent has been commonly known by the domain name; and (3) whether the Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy ¶4(c).
21. “[O]nce a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.” Tumblr, Inc. v. Duanxiangwang, Case No. D2013- 0441 (WIPO May 18, 2013).
22. Respondent has neither rights nor legitimate interests in the Infringing Domain Name. First, Respondent is not using—and, on information and belief, has never used—the Infringing Domain Name in connection with the bona fide offering of goods or services. The CUSTOMER-SERVICE-AIRBNB.COM domain name resolves to a parked page. “Previous panels have held that inactively using a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.” The Toronto-Dominion Bank v. G Tegelberg, Case No. FA1709001751355 (Forum Nov. 14, 2017) (ordering transfer); see also Zumasys, Inc. v. Steven Erickson / zumays, Case No. FA1709001749926 (Forum Nov. 1, 2017) (“Generally, parked pages containing links to unrelated, third-parties fail to show rights or legitimate interests in a disputed domain name.”) (citation omitted).
23. Second, Respondent is not commonly known by the Infringing Domain Name, but instead refers to himself as “JAMES GRANT.” Thus, nothing in Respondent’s Whois information or the record demonstrates that Respondent is commonly known by the Infringing Domain Name. See Airbnb, Inc. v. Domain Hostmaster, Customer ID : 87313851420490 / Whois Privacy Services Pty Ltd, No. FA1708001746275 (Forum Sept. 22, 2017) (“Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. . . . The Panel notes that a privacy service was used by Respondent, and was not lifted despite the commencement of this proceeding.”).
24. Indeed, Respondent cannot be commonly known by the Infringing Domain Name because Complainant has not authorized Respondent to use its AIRBNB Mark. See, e.g., Yahoo! Inc. v. John Morgan, Case No. FA1195421 (Forum July 9, 2008) (“The [Whois] domain name registration information for each of the disputed domain names lists the registrant as ‘John Morgan,’ which bears a strong dissimilarity to the disputed domain names. More to the point, there is no inference of any express or implied authority or license on behalf of [r]espondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that [r]espondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶4(c)(ii).”).
25. The fact that AIRBNB is an internationally-known mark and name further establishes that Respondent cannot be known by the Infringing Domain Name. See, e.g., Yahoo! Inc. and GeoCities v. Eitan Zviely a/k/a comyahoo.com, et al., Case No. FA162060 (Forum July 24, 2003) (“The worldwide fame of Complainant’s marks permit a finding that anyone other than Complainant could [not] be commonly known as YAHOO!...” and that the respondent could therefore not have shown that it was commonly known by any of the disputed domain names pursuant to Section 4(c)(ii) of the UDRP); Compaq Information Technologies Group, L.P. v. Express Technology, Inc., Case No. FA00104186 (Forum Mar. 13, 2002) (“[D]ue to the distinct nature of Complainant’s COMPAQ mark it is not possible for Respondent to be commonly known as <compaqspares.com> pursuant to Policy ¶4(c)(ii).”).
26. Finally, Respondent is not making a legitimate non-commercial or fair use of the Infringing Domain Name, but on information and belief, is using or intends to use the Infringing Domain Name, or the email addresses associated with it, or both, to induce Airbnb’s customers to email Respondent off the Airbnb platform. Respondent previously has engaged in this conduct with the email addresses associated with AIRBNB.NETWORK and AIRBNB-MAIL.COM, which Respondent recently owned, as shown in the screen capture included in the complaint.
27. Respondent used those email addresses to impersonate Airbnb in emails to Airbnb’s customers, to phish for their personal information, and to defraud them by inducing them to transfer money to Respondent (off the Airbnb platform) in return for lodgings that, on information and belief, are nonexistent. Shown below, for example, is a complaint about Respondent from one of Airbnb’s users:
Dear Air BNB,
Hi, recently i had booked an apartment for my upcoming trip to london. End up i found this host is a fake Air BNB. I got to know the host from your airbnb apps. The host sent me this:
To make a reservation for this property please contact booking@airbnb.network. I cannot update my calendar so please contact that email for making a reservation.
Thus i believed that, so that i send them email. All the while i was taught that is your airbnb customer service, as all the email they contact me as below:
airbnb2rentals@gmail.com booking@airbnb-mail.com
she start asking my personal ID for the confirmation as well as the payment. They send me an invoice link with air bnb logo, i click on the link they reject my payment via credit card, then they ask me to do online transfer. End up i send them the payment USD 2,096.83. Unfortunately, they payment had credited to their account and they had told me they are pirated account.
i am write here to inform you, i felt so insecure to book via your searching system, as the host you all had verified them. Do advice me what can i do?
We wouldn't know who is the real and who is fake. I seriously dunno who can i rely on.
RE: Inquiry at Luxury Apartament in Lovely Soho for Jun 17 - 21, 2017 Joe (Airbnb) <express@airbnb.com> . . .
To make a reservation for this property please contact booking@airbnb.network. I cannot update my calendar so please contact that email for making a reservation. . . .
this is the pirated host.
I got them from the airbnb apps, never ever taught that from the official apps will happen fake host and fake airbnb during the booking. they provide live chat. Kindly investigate and kick the host out. You guys should highlighted on the website while we do browsing. To avoid next victims, i think you should write clearly when we log on the page, beware of the spam email.
I seriously depressed on this incident and cant think what to do next, or whether shall i book again from you all. AS i do not know who is the real now.
Thanks & Best Reagrds [redacted]
Airbnb never asks its users to “pay for anything outside of our site, through email, or through a third-party booker.”
28. Respondent’s previous use of domain names incorporating the AIRBNB Mark was clearly illegitimate, and on information and belief, Respondent registered the Infringing Domain Name for the same illegitimate purposes. See Microsoft Corporation v. Terrence Green, Case No. FA1661030 (Forum Apr. 4, 2016) (“The domain names appear to be used to generate email sent from an account associated with the domains” to “request[ ] pricing and availability of items from one of Complainant’s suppliers. Respondent’s behavior could be considered an attempt to pass itself off as Complainant, which panels have found is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); The Hackett Group, Inc. v. Brian Herns/The Hackett Group, Case No. FA1597465 (Forum Feb. 6, 2015) (“Complainant has provided evidence that Respondent has sent e-mails to various Internet persons that suggest the solicitation of personal information. These correspondences rely on the e-mail string associated with the <thehackettgroups.com> domain name . . . . The Panel finds that Respondent is indeed engaging in a phishing scam effectuated by impersonating Complainant, and finds this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); Qatalyst Partners LP v. Devimore, Case No. FA1393436 (Forum July 13, 2011) (“Respondent is also using the <qatalystpartnerslp.com> domain name to phish for financial information from Complainant’s potential customers by pretending to be Complainant with an e-mail address containing the disputed domain name. The Panel holds that this evidence is clear and convincing proof that Respondent lacks rights and legitimate interests pursuant to Policy ¶4(a)(ii).”).
29. In sum, Respondent’s illegitimate interest is established by its registration of the Infringing Domain Name, which wholly incorporates Complainant’s Mark, as well as Respondent’s use of email accounts associated with AIRBNB.NETWORK and AIRBNB- MAIL.COM to divert Airbnb’s customers to Respondent for its financial or other personal gain. Respondent clearly registered the Infringing Domain Name with Complainant’s Mark in mind and with the intention of diverting communications intended for the Complainant. This use is neither legitimate nor fair.
[c.] The Infringing Domain Name was registered and is being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
31. Respondent registered the Infringing Domain Name with Complainant’s Mark in mind and with intent to cause confusion. Airbnb first made use of its Mark at least as early as March 4, 2009. Respondent did not register the Infringing Domain Name until almost seven years later, on January 18, 2016, well after consumers worldwide had come to recognize Complainant’s Mark and rely upon that mark to identify and distinguish Complainant’s website and services from the goods and services of others.
32. Additionally, “[g]iven . . . Complainant’s registration of the Mark and use in association with the noted services among so many people around the world,” Respondent’s use of Complainant’s AIRBNB Mark as part of the Infringing Domain Name, which “clearly associate[s] the disputed domain name with Complainant’s services,” makes it perfectly clear that Respondent had actual knowledge of Complainant’s rights in and to its AIRBNB Mark before registering the Infringing Domain Name. See Airbnb, Inc. v. Ashley B, Airbnb NOW, WIPO Case No. D2017-1135 (finding bad faith registration and use); Airbnb, Inc. v. Terry McDaniel, Case No. FA1706001737771 (Forum July 26, 2017) (“In light of the domain name’s overt inclusion of Complainant’s well know[n] 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.”); Airbnb, Inc. v. Nima Rahnemoon, Forum Case No. FA1706001737766; see id. (“It seems clear that the use of Complainant’s [AIRBNB] mark in the Domain Name would cause people to associate the website at the Domain Name with Complainant and its business and services. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with Complainant’s trade marks [sic] as to the source, sponsorship, affiliation or endorsement of the web site.”).
33. As the panelist wrote in Gap, Inc. and its subsidiaries Banana Republic (Apparel), LLC and Banana Republic (Item), Inc. v. Jan Cerny, “Complainant . . . contends that in light of the fame and notoriety of Complainant’s BANANA REPUBLIC mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. . . . [T]he Panel agrees and finds that Respondent registered <bananareupblic.com> with actual knowledge of Complainant and its rights to the BANANA REPUBLIC mark. This is further evidence of bad faith.” Case No. FA1702001718980 (Forum Apr. 3, 2017). The same is true in this case.
(b) Finally, as detailed above, on information and belief, Respondent selected the Infringing Domain Name to gain access to email accounts that would enable it to: (a) deceive Airbnb’s customers into believing that Respondent is Airbnb or is affiliated with Airbnb; convince Airbnb’s customers to correspond with Respondent off of the Airbnb platform; offer to Airbnb’s customers the opportunity to reserve stays in lodgings that, on information and belief, do not exist; and (d) direct Airbnb’s customers to send funds to Respondent to “reserve” those lodgings—thus engaging in fraud and theft. Numerous panels have found bad faith use and registration where, as here, a respondent uses the email addresses associated with a domain name to pass itself off as the complainant in a fraudulent scheme. See, e.g., Goodwin Procter LLP v. GAYLE FANDETTI, Case No. FA1706001738231 (Forum Aug. 8, 2017) (“Further, the fact that the Domain Name has been used to attempt to misdirect funds in an e[-]mail for an illegal and fraudulent purpose underlines the bad faith in this case.”); Microsoft Corporation v. Terrence Green, Forum Case No. FA1661030 (“Respondent appears to use the disputed domain names to send fraudulent emails to Complainant’s suppliers while posing as Complainant. . . . The Panel thus finds that Respondent competes and disrupts Complainant’s business in bad faith pursuant to Policy ¶4(b)(iii).”); The Hackett Group, Forum Case No. FA1597465 (“Respondent is using the e-mail string associated with the disputed domain name to send fraudulent e-mails. The Panel finds that Respondent’s conduct contains the requisite competitive nature under Policy ¶4(b)(iii), and finds this is evidence of bad faith disruption.”).
34. In conclusion, based on the facts and circumstances enumerated above, it is clear that Respondent registered the Infringing Domain Name in bad faith and in violation of the Policy: Respondent registered a domain name that incorporates Complainant’s mark in its entirety; Respondent has no legitimate interest in the Infringing Domain Name; and Respondent previously has used email addresses associated with other infringing domain names (AIRBNB.NETWORK and AIRBNB-MAIL.COM) to engage in fraud, thus demonstrating that Respondent is merely trading off of Airbnb’s Mark and reputation for its own financial gain and nefarious purposes.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the AIRBNB mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, registered Dec. 14, 2010). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country (Scotland in this case). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has established its rights in the AIRBNB mark.
Complainant claims Respondent’s <customer-service-airbnb.com> domain name is identical or confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s mark and adds the generic terms “customer” and “service,” hyphens, and the “.com” gTLD. Generally, adding generic or descriptive terms are not sufficient changes to adequately differentiate a disputed domain name from a mark. Adding one or more hyphens is not a sufficient change to adequately differentiate a disputed domain name from a mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶4(a)(i).); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). The <customer-service-airbnb.com> domain name is confusingly similar to the AIRBNB mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <customer-service-airbnb.com> domain name. Where there is no response, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. The WHOIS identifies “James Grant / James Grant” as the registrant. No evidence exists to show Respondent has ever been legitimately known by the AIRBNB mark because there is no obvious relationship between the disputed domain name and Respondent’s 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). Respondent has never been affiliated with Complainant and has never been known by the disputed domain name prior to its registration. Complainant has not given Respondent permission to use the disputed domain name (or Complainant’s mark). The Panel must conclude Respondent is not commonly known by the <customer-service-airbnb.com> domain name under Policy ¶4(c)(ii).
Complainant claims the disputed domain name redirects users to a website without any content. Failure to make an active use of a confusingly similar domain name demonstrates a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). Respondent has never made an active use of the disputed domain name, with the possible exception of sending out fraudulent emails which impersonate Complainant. Respondent has failed to provide 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). Respondent has no rights or legitimate interests in the <customer-service-airbnb.com> domain name.
Complainant claims Respondent does not use the <customer-service-airbnb.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domain name as an email server to pass off as Complainant to scam Complainant’s actual and potential clients (essentially phishing). Using a disputed domain name to pass off as a complainant by offering competing services does not create any rights or legitimate interests in a disputed domain name. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶4(c)(iii)). Respondent poses as Complainant to convince customers to pay outside the AirBNB platform (by sending money directly through wire transfers or Western Union type payment services). The scams break down into the following major categories (with the word “you” referring to a customer of Complainant):
· Advance Fee Scam: Someone offers to pay you or give you something if you pay through a service outside of Airbnb.
· Phishing Scam: Someone sends an email or link that looks like it's from Airbnb or another trusted site. These messages are designed to trick you into providing confidential information such as passwords or other email addresses. Phishing messages may contain malware, which is malicious software that gains access to your computer to gather your personal information, including passwords.
· Travel Scam: Someone offers you a great deal on a listing if you pay or send a deposit using a wire transfer. After receiving your money, they don’t give you the reservation they advertised.
· Overpayment Scam: Someone offers to pay a host more than the price of the reservation, and then asks the host to give them cash to cover the difference.
· Third-party booking scam: Someone offers to reserve and pay for an Airbnb listing through their third-party website or service, often claiming to have an Airbnb coupon or discount. These reservations are typically paid for using stolen credit cards.
The public should heed this list of common scams. Respondent’s actions do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration of the disputed domain name demonstrates a pattern of bad faith registration. Complainant relies upon Policy ¶4(b(ii), which provides “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct…” Complainant cannot prevail using this authority because Complainant reflects its mark in <airbnb.com>. The Panel will not find bad faith on this ground.
There is no doubt Respondent is trying to pass itself off as Complainant. Passing off as a complainant to conduct a phishing scheme constitutes bad faith. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶4(a)(iii)). Using a misleading email address to defraud unwary customers certainly constitutes bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the AIRBNB mark prior to registration of the disputed domain name. The non-exclusive nature of Policy ¶4(b) allows the Panel to consider additional conduct in an analysis of a respondent’s actions for bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). Actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name can be determined from the name used for the disputed domain name and the use made of it per 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.”). There is an argument to be made Complainant’s mark is famous. The more compelling argument (at least to this Panel) is Respondent has done this before with Complainant’s mark. Respondent has a pattern of defrauding Complainant’s clients specifically, which certainly shows bad faith registration and use of the disputed domain name.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <customer-service-airbnb.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, December 28, 2017
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