Airbnb, Inc. v. xiechunfu
Claim Number: FA1802001770765
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is xiechunfu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airbnbpay.com>, registered with Ourdomains Limited.
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 February 7, 2018; the Forum received payment on February 7, 2018.
On February 7, 2018, Ourdomains Limited confirmed by e-mail to the Forum that the <airbnbpay.com> domain name is registered with Ourdomains Limited and that Respondent is the current registrant of the name. Ourdomains Limited has verified that Respondent is bound by the Ourdomains Limited 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 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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@airbnbpay.com. Also on February 8, 2018, 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 March 5, 2018, 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 is 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.
Complainant has rights in the AIRBNB mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, registered Dec. 14, 2010).
Respondent’s <airbnbpay.com> domain name is identical or confusingly similar to Complainant’s mark as it consists of the AIRBNB mark verbatim, adds the generic term “PAY,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <airbnbpay.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “xiechunfu.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the website associated with the domain name solicits the domain name for sale.
Respondent registered and uses the <airbnbpay.com> domain name in bad faith. Respondent appears to be a cybersquatter who, in addition to the infringing domain name, has registered several domain names containing famous third-party marks. Further, in light of the fame and notoriety of Complainant’s AIRBNB 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AIRBNB mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the AIRBNB mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses <airbnbpay.com> to address a webpage offering the <airbnbpay.com> domain name for sale.
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 ownership of a USPTO registration for AIRBNB is sufficient to demonstrate Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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 …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <airbnbpay.com> domain name contains Complainant’s entire AIRBNB trademark appended with the generic term “pay” followed by the top level domain name “.com”. The differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). In fact the insertion of the suggestive term “pay” in the at-issue domain name, which obliquely references Complainant’s online business, only adds to the confusion produced by including Complainant’s trademark in such domain name. Therefore the Panel concludes that Respondent’s <airbnbpay.com> domain name is confusingly similar to Complainant’s AIRBNB trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also, TPI Holdings Inc. v. Michael Jay, D2009-0441 (WIPO May 25, 2009) (“[T]he Panel considers that the term ‘payments’ denotes an important component of trading or ‘trade’ which increases the chances that the domain name <payments-autotrader.com> is confusingly similar to the Complainant’s marks.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “xiechunfu.” Notably, the record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <airbnbpay.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain 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); see also, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent offers the <airbnbpay.com> domain name “for sale” on a webpage addressed by the domain name. Offering a confusingly similar domain name for sale to the public suggests a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). Such use 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 Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <airbnbpay.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the domain name, pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has registered multiple domain names containing famous third party trademarks. Such domain names include, but are not limited to, <googlepixel.top> and <googlepaycash.com>. Respondent’s trademark laden domain name registrations indicate a pattern of bad faith registration and use, and suggest Respondent’s present bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Next, although expressly discussed by Complainant concerning bad faith, Respondent offers <airbnbpay.com> “for sale” on a webpage addressed by such domain name. Offering a domain name for sale for an amount in excess of the seller’s out-of-pocket costs demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(i). While there is no selling price indicated on the soliciting webpage; those interested in purchasing <airbnbpay.com> are asked to “make an offer.” It is inconceivable that Respondent would reject all offers that are for an amount more than out of pocket costs as being too high or in excess of out-of-pocket costs. Therefore, the Panel finds that the <airbnbpay.com> webpage offer to sell <airbnbpay.com> is evidence of Respondent’s bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name.) see also, Citigroup Inc. v. Kevin Goodman, FA 1623939 (Forum Jul. 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).)
Finally, Respondent registered <airbnbpay.com> knowing that Complainant had trademark rights in the AIRBNB trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, as well as from Respondent’s juxtaposition of the suggestive term “pay” and Complainant’s AIRBNB trademark in the at-issue domain name. It is thus clear that Respondent intentionally registered the domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <airbnbpay.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 <airbnbpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 7, 2018
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