AirDNA, LLC v. ding zhi qiang / bei jing yi rui sheng wu ji shu you xian gong si
Claim Number: FA2207002006430
Complainant is AirDNA, LLC (“Complainant”), represented by Amanda Marston of Holland & Hart LLP, Colorado, USA. Respondent is ding zhi qiang / bei jing yi rui sheng wu ji shu you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airdna.com>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 29, 2022. The Forum received payment on July 29, 2022.
On August 2, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <airdna.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, which is in Chinese, 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 August 2, 2022, the Forum served the Complaint and all Annexes, including an English and Chinese Written Notice of the Complaint, setting a deadline of August 22, 2022 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 firstname.lastname@example.org. Also on August 2, 2022, the English and Chinese language 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 August 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the Alibaba Cloud Computing (Beijing) Co., Ltd. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <airdna.com> domain name shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant, AirDNA LLC, is a leading provider of data and analytics for the $140 billion short-term rental industry and has been operating since at least as early as 2016. Complainant has rights in the AIRDNA mark through registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <airdna.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <airdna.com> domain name. Respondent is not commonly known by the domain name and does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Rather, Respondent is passively holding the domain name, which does not resolve to an active website.
Because Respondent’s information is not publicly available, Complainant does not have information regarding the date of registration of the domain name. Although the WHOIS record indicates an August 30, 2011 “Creation Date”, Complainant has no basis to conclude that Respondent is the original registrant of the domain name, including because Respondent has been unresponsive to Complainant’s efforts to contact Respondent in 2017, 2018, and again in 2022.
Respondent renewed the domain name on June 19, 2021, well after Complainant first began using and had registered its AIRDNA mark and well after Complainant had developed strong rights in the same. Respondent renewed the domain name without Complainant’s permission or consent. Respondent is not and never has been associated or affiliated with Complainant, and Complainant has never authorized Respondent to use its trademark, nor any variations thereof.
Respondent registered and uses the <airdna.com> domain name in bad faith. Respondent has had constructive notice of Complainant’s rights dating back to at least May 2019 when Complainant’s mark was registered, more than two years before Respondent renewed the domain name. Moreover, Complainant operates in over 120,000 global markets and is regarded as the “world’s leading provider of short-term vacation rental data and analytics.” Thus, it is highly unlikely that Respondent, regardless of its location, was unaware of Complainant’s use of, and rights in, the AIRDNA mark at the time of, at least, the most recent renewal.
Renewal of the domain name by Respondent violates ¶ 2 of the Policy, which requires registrants applying to register a domain name or requesting maintenance or renewal of a domain name to represent and warrant that: (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
As explained in Eastman Sporto Group LLC v. Jim and Kenny, Case No. D2009-1688 (WIPO, March 1, 2010), “bad faith under paragraph 4(a)(iii) may be determined retroactively by subsequent bad faith use” and paragraph 2 “effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights . . . including trademark.” In Eastman Sporto, use of the disputed domain name, at the time of its latest renewal, had changed to “classic cybersquatting.” Id. As such, despite previous good faith in the acquisition, the renewal by the respondent in Eastman Sporto was in violation of paragraph 2 and constituted bad faith registration under ¶ 4 of the Policy. Id.
Respondent failed to submit a Response in this proceeding.
Complainant has failed to establish all the elements entitling it to relief.
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 shown that it has rights in the AIRDNA mark through registration with the USPTO (Reg. No. 5,755,290, registered on May 21, 2019, claiming first use in commerce in April, 2016 and first use in commerce in a different form at least as early as December 2014). The Panel finds Respondent’s <airdna.com> domain name to be identical to Complainant’s AIRDNA mark as it incorporates the entire mark and adds only the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
In light of the Panel’s finding in relation to the third element, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The <airdna.com> domain name was created on August 30, 2011. Complainant asserts that it has no basis to conclude that Respondent is the original registrant of the domain name. However, Complainant has provided no evidence that Respondent is not the original registrant.
The Panel is not persuaded that Respondent’s failure to respond to Complainant’s efforts to contact Respondent in 2017, 2018 and 2022 have any bearing upon the date when Respondent registered the domain name. Accordingly, the Panel finds that the domain name was registered by Respondent in 2011, several years before the first claimed use in commerce of Complainant’s AIRDNA mark, so Respondent could not possibly have had Complainant’s mark in mind at that time. Complainant has not shown that registration to have been in bad faith.
Complainant notes that Respondent renewed its registration of the domain name in on June 19, 2021 and bases its case on that renewal being in bad faith in breach of ¶ 2 of the Policy, as explained in Eastman Sporto Group LLC v. Jim and Kenny, Case No. D2009-1688 (WIPO, March 1, 2010).
There is an important difference between the circumstances of the present case and those of the Eastman Sporto case. In Eastman Sporto respondent used the <sporto.com> domain name between 1997 and 2008 for businesses that did not compete with complainant. Thereafter all use was cybersquatting on complainant’s SPORTO mark.
“If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterised as use in bad faith.”
The <airdna.com> domain name does not resolve to an active website and there is no evidence of any change in the inactive use of the domain name prior to or after Complainant’s first claimed use of its mark. Although panels have held passive use to constitute bad faith in certain circumstances, such as in the leading case Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000), those circumstances predominantly involve domain names registered after the relevant trademark rights have arisen. Those circumstances are not present here.
Hence the Panel is not persuaded that Respondent’s renewal of the domain name registration amounted to registration in bad faith nor that Respondent’s continued passive use of the domain name amounts to use in bad faith, either before or after Respondent’s renewal of the domain name registration.
Complainant has failed to establish this element.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <airdna.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: August 29, 2022
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