AirBBN.com : Short term rental traffic typo lost in UDRP

Directnic

House rental services provider, AirBNB, is protective of its brand, and challenged the domain AirBBN.com an anagram or typo – via the UDRP process.

Airbnb, Inc. filed the UDRP at the National Arbitration Forum, seeking to acquire control of the domain.

The AIRBNB mark was filed on Apr. 27, 2010 with the USPTO, and was registered on Dec. 14, 2010. The domain AirBBN.com was registered on July 29, 2010, according to DomainTools.

Although technically there was no registered mark when the typo domain was registered, AirBNB formed in 2008 and was quite popular by 2010 already.

The Respondent used the domain with zero click landers, reaping its traffic with the display of content from AirBNB competitors. There was no response from the Respondent, however.

In the end, the sole panelist, Neil Anthony Brown, ordered the domain AirBBN.com to be transferred to the Complainant.

Full details follow.

Airbnb, Inc. v. Domain Hostmaster, Customer ID : 87313851420490 / Whois Privacy Services Pty Ltd

Claim Number: FA1708001746275

PARTIES

Complainant is Airbnb, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Domain Hostmaster, Customer ID : 87313851420490 / Whois Privacy Services Pty Ltd (“Respondent”), Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <airbbn.com>, registered with Fabulous.com Pty Ltd.

PANEL

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.

The Honourable Neil Anthony Brown QC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 25, 2017; the Forum received payment on August 25, 2017.

On Sep 07, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <airbbn.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 August 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@airbbn.com. Also on August 31, 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 September 21, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant, Airbnb, Inc., is a community marketplace for people to list, discover, and book unique accommodations around the world. Complainant uses the AIRBNB mark to market this forum, as well as other travel-related services. Complainant has rights in the AIRBNB mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, filed Apr. 27, 2010, registered Dec. 14, 2010). See Compl., Annex I. Complainant also points to its extensive advertising campaign, sponsorships, celebrity endorsements, and volume of customers and listings as evidence it has common law rights in the mark. Respondent’s <airbbn.com> is confusingly similar to the AIRBNB mark, as the disputed domain name consists entirely of the mark, merely transposing the final two letters in the mark and adding the generic top-level domain name “.com.” This confusing similarity is increased by the clear attempt at typosquatting it represents.

Respondent has no rights or legitimate interests in the <airbbn.com> domain name. Respondent is not commonly known by the disputed domain name, and could not be, because Complainant has not authorized or licensed Respondent to use the AIRBNB mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. RATHER, Respondent uses the disputed domain name to redirect Internet users to <booking.com>, which is the website of a direct competitor of Complainant’s business. Respondent’s typosquatting behavior is further evidence of its lack of rights and legitimate interests in the disputed domain name.

Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent’s use of the disputed domain name to redirect to a competitor of Complainant—presumably for affiliate fees—indicates its purpose to attract and divert consumers for commercial gain. Additionally, Respondent’s typosquatting behavior indicates bad faith. Finally, it is clear Respondent had actual knowledge of Complainant and its rights in the AIRBNB mark when it registered and subsequently used the disputed domain name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. Complainant is a prominent United States company that is a community marketplace for people to list, discover, and book unique accommodations around the world.

2. Complainant has established its registered trademark rights in the AIRBNB mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,890,025, filed Apr. 27, 2010, registered Dec. 14, 2010). Complainant has also established common law rights by showing the AIRBNB mark has taken on a secondary meaning in association with Complainant’s business from at least March 4, 2009.

3. Respondent registered the disputed domain name on July 29, 2010.

4. Respondent uses the disputed domain name to redirect Internet users to <booking.com>, which is the website of a direct competitor of Complainant’s business.

DISCUSSION

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.”).

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the AIRBNB mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,890,025, filed Apr. 27, 2010, registered Dec. 14, 2010). See Compl., Annexes I; J. Registration of a mark with the USPTO is sufficient to establish rights in that mark, and the relevant date of rights in the mark can be extended back to the application filing date for that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark); see also Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). The Panel therefore finds that Complainant’s registration of the AIRBNB mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

Complainant also claims common law rights in the AIRBNB mark for the purposes of Policy ¶ 4(a)(i). Complainant claims common law rights in the mark dating back to the first use of the mark in commerce on March 4, 2009. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant claims it has continually used the AIRBNB mark since its first use in affiliation with its online marketplace, and has boasted many celebrity endorsements of its business. See Compl., Annexes E–G. Traditionally, a secondary meaning is also established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant points to multiple sponsorship and advertising campaigns including sponsorship of an F1 racing team, its position as the official “alternative accommodations” service for the 2016 Olympics in Brazil, and a 2017 Super Bowl advertisement. See Compl., ¶ 9; Annex H. As the Panel finds Complainant has made a strong case on the evidence, it finds that Complainant has established common law rights by showing the AIRBNB mark has taken on a secondary meaning in association with Complainant’s business at least from March 4, 2009.

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AIRBNB mark. Complainant submits Respondent’s <airbbn.com> domain name is confusingly similar to the AIRBNB mark, as the disputed domain name consists completely of the mark, merely differing through the transposition of the final two letters in the mark, and the addition of the “.com” gTLD. Addition of a gTLD to a mark is an irrelevant change for the purposes of Policy ¶ 4(a)(i). See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Similarly, transposing two letters in a mark does not sufficiently distinguish a domain name in a confusingly similar analysis. See Google Inc. v. Jon G., FA 106084 (Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel therefore finds the disputed domain name to be confusing similar to the AIRBNB mark per Policy ¶ 4(a)(i).

Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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) (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.”).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s AIRBNB mark and to use it in its domain name with only slight changes to the spelling of the trademark;

(b) Respondent registered the domain name on July 29, 2010;

(c) Respondent uses the disputed domain name to redirect Internet users to <booking.com>, which is the website of a direct competitor of Complainant’s business;

(d) Respondent has engaged in these activities without the consent or approval of Complainant;

(e) Complainant argues that Respondent has no rights or legitimate interests in the <airbbn.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the AIRBNB mark in any way. 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. 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 Panel notes that a privacy service was used by Respondent, and was not lifted despite the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Domain Hostmaster, Customer ID : 87313851420490 / Whois Privacy Services Pty Ltd.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;

(f) Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by Respondent’s failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant contends that the disputed domain name redirects Internet users to <booking.com>, which is a travel services competitor of Complainant’s business. See Compl., Annex K. Use of a disputed domain name to divert consumers to a competitor of a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name due to its failure to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a noncommercial or fair use of the domain name per Policy ¶ 4(c)(iii);

(g) Complainant also contends that Respondent’s registration of the <airbbn.com> domain name constitutes typosquatting and is further evidence of Respondent’s lack of rights and legitimate interests in the same. Registration of a domain name that contains a simple misspelling of a complainant’s mark is known as typosquatting and can be independent evidence of a respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s <indymac.com> website but mistakenly misspell Complainant’s mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel notes that in registering its disputed domain name, Respondent merely transposed the final two letters in the AIRBNB mark and added the “.com” gTLD. The Panel find that this amounts to typosquatting and finds it to be independent evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).

All of these matters go to make out the prima facie case against Respondent.

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

First, Complainant contends that Respondent uses the <airbbn.com> domain name to redirect Internet users to a competing travel service, which is evidence Respondent registered and is using the disputed domain name in bad faith. Use of a confusingly similar domain name to attract Internet users and divert them to a competitor can be evidence of bad faith per Policy ¶¶4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Complainant submits that the disputed domain name redirects to <booking.com>, which offers travel services which are directly competitive with Complainant’s business. See Compl., Annex K. The Panel agrees Respondent’s use of the <airbbn.com> domain name indicates it has registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).

Secondly, Complainant also contends that Respondent’s typosquatting behavior serves as further evidence of its bad faith registration and use of the <airbbn.com> domain name. Typosquatting can be used as independent evidence of bad faith per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel recalls the disputed domain name differs from the AIRBNB mark only through the transposition of the final two letters in the mark and the addition of the “.com” gTLD. The Panel agrees this change is an attempt to take advantage of a typographical error and amounts to bad faith typosquatting per Policy ¶ 4(a)(iii).

Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant’s AIRBNB mark, it is inconceivable that Respondent could have registered the <airbbn.com> domain name without actual knowledge of Complainant’s rights in the mark. Complainant notes that the disputed domain name was registered July 29, 2010, which was after consumers had come to recognize the mark, a situation reflected in the finding of the Panel that Complainant has established by strong evidence common law trademark rights in the AIRBNB mark and that they existed since at least March 4, 2009, which was prior to the registration of the domain name . See Compl., Annexes A; I. Further, Respondent’s use of the disputed domain name to redirect to a direct competitor of Complainant indicates Respondent knew of Complainant and the AIRBNB mark. The Panel here finds that arguments of bad faith based on constructive notice are generally not successful because UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).

Fourthly, in addition and having regard to the totality of the evidence, the Panel

finds that, in view of Respondent’s registration of the disputed domain name using the AIRBNB mark and in view of the conduct that Respondent has

engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

Complainant has thus made out the third of the three elements that it must establish.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <airbbn.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honourable Neil Anthony Brown QC, Panelist

Dated: September 22, 2017


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