Airbnb, Inc. v. Hu Xiao Jin
Claim Number: FA2003001890120
Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Hu Xiao Jin (“Respondent”), represented by Sunny Gao of 3-04, Victoria Goldberg, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airbnb-china.com> (“Domain Name”), registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On March 31, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <airbnb-china.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 April 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@airbnb-china.com. Also on April 6, 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.
A timely Response was received and determined to be complete on April 13, 2020.
On April 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates an online marketplace for hospitality services. Complainant has rights in the AIRBNB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, registered Dec. 14, 2010). Respondent’s <airbnb-china.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s AIRBNB mark and adds the geographically descriptive term “-china” and a gTLD.
Respondent lacks rights or legitimate interests in the <airbnb-china.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is inactive.
Respondent registered and uses the <airbnb-china.com> domain name in bad faith. Respondent registered the Domain Name to sell it to Complainant or another party, indeed when contacted by Complainant, Respondent requested that Complainant purchase it for $3,500USD. Respondent registered the Domain Name with Complainant’s AIRBNB mark in mind given the worldwide consumer recognition of the AIRBNB mark.
B. Respondent
According to the international domain name application registration principle, Respondent has the right to apply for the registration of any domain name. Respondent legally registered the Domain Name on October 10, 2019.
Respondent registered the domain name with the intent to operate online baby stores. The Domain Name stands for “Air Baby + Baby and China” This project does not conflict with Complainant’s business.
Complainant does not have trademark rights to “AIRBNB-CHINA.COM” as at least 10 different entities own trademarks containing the letters “AIRBNB” in China. It is not a unique mark solely belonging to Complainant.
Respondent did not register the Domain Name with any intent to misleadingly divert consumers or tarnish Complainant’s mark. Complainant does not provide evidence in support of this accusation.
Respondent did not register the Domain Name with the intent to sell or lease it to Complainant. Complainant offered to purchase the Domain Name for $100USD. Respondent counteroffered $3,500USD. Notably Respondent has received an offer of US25,000 from third parties for the Domain Name, and the failure of the Respondent to accept this offer is evidence of its good faith.
Complainant’s conduct constitutes reverse domain name high jacking. Complainant is attempting to obtain the Domain Name for a much lower price than Respondent’s asking price.
Complainant holds trademark rights for the AIRBNB mark. The Domain Name is confusingly similar to Complainant’s AIRBNB mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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.
Complainant has rights in the AIRBNB mark based on registration with the USPTO (e.g. Reg. No. 3,890,025, registered Dec. 14, 2010). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <airbnb-china.com> domain name is confusingly similar to Complainant’s AIRBNB mark as it fully incorporates the AIRBNB mark and adds the geographically descriptive term “-china” and a gTLD. The addition of a geographic term and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). The Panel holds that Complainant has made out a prima facie case and Respondent has failed to show that it does have rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the AIRBNB mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Hu Xiao Jin” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive which by itself does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Respondent argues that it intends to use the Domain Name in connection with online baby stores, arguing that the Domain Name stands for “Air Baby + Baby and China”. This claim is implausible on a grammatical and branding basis and Respondent provides no evidence to support this claim. While the Panel is sympathetic to Respondent’s claim of difficulties starting the business due to the Covid-19 pandemic, given the Complainant’s prima facie case, the burden is shifted to Respondent to provide any evidence showing demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent has provided none, and none of its remaining arguments on this point (regarding the claim that it is entitled to register the Domain Name and that there is more than one entity entitled to use the AIRBNB mark in China) have no validity under the Policy.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, October 10, 2019, Respondent had actual knowledge of Complainant’s AIRBNB mark. The AIRBNB Mark is incredibly well-known mark and a coined term, combining the word “air” and the unrelated abbreviation “bnb” (short for bed and breakfast). Respondent’s does not deny awareness of the AIRBNB mark and its explanation as to why it registered a domain name that wholly incorporated to the AIRBNB mark is both implausible and unsupported by any evidence. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the AIRBNB mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative (plausible and supported) explanation (or other active use), registered a domain name that wholly incorporates the AIRBNB mark and has both offered to sell the Domain Name to Complainant for valuable consideration in excess of any out-of-pocket costs ($3,500USD) and has purportedly received offers of $25,000USD for this Domain Name. An offer to sell a disputed domain name (regardless of whether Complainant or Respondent initiated the offer) may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). In the present case, given the nature of the Domain Name, the lack of use, and the lack of alternative plausible explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Respondent has also sought a finding that Complainant engaged in Reverse Domain Name Hijacking. As Complainant has been successful in this proceeding this allegation must fail. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
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-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 18, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page