Tilt.com: Airbnb failed to reclaim allegedly stolen #domain via the UDRP process

The domain Tilt.com became part of the IP portfolio of Airbnb, when they acquired the company Crowdtilt.

A third party allegedly stole the domain using a devious method and by risking $17,000 dollars.

That domain was then sold to domain investor, James Booth, who was able to halt the exchange and handed the domain over to the law firm Greenberg & Lieberman as a neutral keeper.

The latter became the Respondent of a UDRP filed by Airbnb at the National Arbitration Forum. In their Response, they stated the following in part:

Respondent was not the individual or entity responsible for the transfer of the Domain Name from Complainant.  Rather Respondent holds the Domain Name as an escrow agent, subject to an escrow contract on behalf of two third parties, namely the seller and buyer of the Domain Name.  The Domain Name has been held under Respondent’s control since July 19, 2021. 

Following the notification that the Domain Name had a connection to the Complainant, the buyer has cancelled the Domain Name purchase and the Respondent has been in negotiation with Complainant to transfer the Domain Name to Complainant.  Respondent submits that the Panel has no basis to transfer the Domain Name as the proceeding arises out of a civil dispute between Complainant and Respondent over the terms on which Respondent will assist Complainant in recovering the Domain Name.

The sole panelist decided on behalf of the Respondent, stating:

The Panel is conscious of the possibility that a bad faith participant in the Domain Name System may seek to avoid the consequences of a UDRP proceeding by transferring the Domain Name to a third party agent to hold the Domain Name, however such a slippery slope argument does not make it appropriate to make a finding that a Respondent who acquired a Domain Name on a temporary basis, solely to provide an escrow service, has acquired the Domain Name in bad faith. 

Furthermore, in such cases, Panels have and will continue to exercise their judgement as to whether the named respondent, be it a privacy service, third party agent or other entity, is acting in bad faith as an agent of a bad faith participant, or (as in the present case) acquired the Domain Name in order to provide a legitimate escrow service.

Final decision: Deny transfer of Tilt.com to the Complainant. The saga of Tilt.com continues!

The domain transfer was denied.

Airbnb, Inc. v. Stevan Lieberman / Greenberg & Lieberman, LLC

Claim Number: FA2109001964944

PARTIES

Complainant is Airbnb, Inc. (“Complainant”), represented by Nichole Chollet of Kilpatrick Townsend & Stockton LLP, Georgia, USA. Respondent is Stevan Lieberman / Greenberg & Lieberman, LLC (“Respondent”), District of Columbia, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tilt.com> (“Domain Name”), registered with GoDaddy.com, LLC.

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.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 23, 2021; the Forum received payment on September 23, 2021.

On September 24, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <tilt.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2021 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@tilt.com. Also on September 29, 2021, 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 October 21, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.

On October 25, 2021 the Panel issued a further order seeking to clarify whether the matter had been settled. Following confirmation from the Respondent that the matter had not been settled, on October 28, 2021 the Panel issued a further order seeking additional submissions from the parties providing further information and context surrounding the Respondent and its role in the proceeding. On November 1, 2021 Respondent filed a Response annexing a declaration and correspondence between himself and Complainant’s representative. On November 4, Complainant filed further submissions and material in response to the Respondent’s additional. The Panel has had regard to this additional material filed by both parties.

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, Airbnb, Inc., operates a community marketplace for people to list, discover, and book accommodations around the world. Complainant has rights in the TILT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) via assignment from the previous holder of the mark (e.g., Reg. No. 5,791,164, registered July 2, 2019). Respondent’s <tilt.com> domain name is confusingly similar to Complainant’s TILT mark since it consists of the mark verbatim, with the mere addition of the “.com” generic top level domain (“gTLD”).

Respondent does not have rights or legitimate interests in the <tilt.com> domain name because Respondent is not commonly known by the Domain Name and is not authorized to use Complainant’s TILT mark. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use since Respondent acquired the Domain Name by theft and makes no use of it other than to offer it for sale.

Respondent registered and uses the <tilt.com> domain name in bad faith. Respondent offers the Domain Name for sale. Further, Respondent hijacked the Domain Name from Complainant and used a privacy protection service to conceal its identity.

B. Respondent

Respondent initially failed to submit a formal Response in this proceeding. Rather on September 30, 2021 Respondent sent an e-mail stating that the matter had been settled, which was then contradicted by Respondent’s later e-mail of October 26, 2021.

The Response, filed on November 1, 2021 provides more detail and context on Respondent’s activities. Respondent is a lawyer/law firm, experienced in domain name matters. Respondent was not the individual or entity responsible for the transfer of the Domain Name from Complainant. Rather Respondent holds the Domain Name as an escrow agent, subject to an escrow contract on behalf of two third parties, namely the seller and buyer of the Domain Name. The Domain Name has been held under Respondent’s control since July 19, 2021. Following the notification that the Domain Name had a connection to the Complainant, the buyer has cancelled the Domain Name purchase and the Respondent has been in negotiation with Complainant to transfer the Domain Name to Complainant. Respondent submits that the Panel has no basis to transfer the Domain Name as the proceeding arises out of a civil dispute between Complainant and Respondent over the terms on which Respondent will assist Complainant in recovering the Domain Name.

C. Complainant’s Additional Submission

On November 4, 2021 Complainant filed additional submissions and evidence in response to the Panel Order made on October 28, 2021. Complainant submits that the proceeding is properly brought before the Respondent is the registrant of record and because Respondent has failed to disclose the identity of the domain owner or transfer the Domain Name to Complainant.

Complainant then restates the allegations made in its Complaint, noting that it has rights in the Domain Name, which was hijacked from Complainant’s possession. Respondent is the present holder of the Domain Name as escrow attorney and Respondent and Complainant have been in negotiations to transfer the Domain Name. The matter had apparently been close to resolution until Respondent refused to sign a settlement agreement providing for transfer under the UDRP and requested Complainant make a payment to it for his time as lawyer involved in this matter. Complainant and Respondent have failed to reach agreement on such a payment.

Complainant submits that were the Panel to accept Respondent’s arguments, it would be possible for an illegitimate Respondent to avoid the consequences of a UDRP proceeding by transferring the Domain Name to a third party to hold the domain name in good faith.

FINDINGS

Complainant having failed to establish bad faith registration of the domain name <tilt.com> has not established all required elements of its claim, and thus its Complaint must be denied.

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.

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet its burden of proof of bad faith registration under Policy ¶ 4(a)(iii), and thus the Panel need not consider the other elements. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”).

While the Panel has sympathy for Complainant’s situation, namely that it appears Complainant was the victim of a Domain Name hijacking, it is necessary, in order for a transfer order to be made under the Policy, for the Panel to reach a conclusion that in registering or acquiring the Domain Name, the Respondent was acting in bad faith. The Panel has closely reviewed the material provided by both parties and does not reach that conclusion.

The Uniform Domain Name Dispute Resolution Policy, is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). See also Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”)

In the present case, Respondent acquired possession of the Domain Name solely in the capacity as escrow agent to facilitate the transfer of the Domain Name from one entity to another. Upon being made adware of the circumstances relating to the hijack of the Domain Name, Respondent took steps to transfer the Domain Name to Complainant. Those negotiations have now broken down and the Panel makes no comment on the actions of either party in the negotiations other than to note that it is not prepared to infer from Respondent’s conduct in those negotiations that it acquired the Domain Name in bad faith (or on any basis other than as an escrow agent to facilitate a transfer of a Domain Name between two unrelated entity).

The Panel is conscious of the possibility that a bad faith participant in the Domain Name System may seek to avoid the consequences of a UDRP proceeding by transferring the Domain Name to a third party agent to hold the Domain Name, however such a slippery slope argument does not make it appropriate to make a finding that a Respondent who acquired a Domain Name on a temporary basis, solely to provide an escrow service, has acquired the Domain Name in bad faith. Furthermore, in such cases, Panels have and will continue to exercise their judgement as to whether the named respondent, be it a privacy service, third party agent or other entity, is acting in bad faith as an agent of a bad faith participant, or (as in the present case) acquired the Domain Name in order to provide a legitimate escrow service.

The Panel notes the unusual nature of the present proceeding, and that the proceeding may have had a different outcome had the proceeding commenced against the intended seller or purchaser of the Domain Name, rather than at the precise time where the Domain Name was being held in escrow. In the event that further information arises that suggests the motives of Respondent acquiring the Domain Name was to protect the previous owner of the Domain Name from the consequences of a decision under the Policy, or if the Domain Name is transferred from Respondent, either to the earlier registrant, or to a third party who (based on the publication of this decision alone) may acquire the Domain Name in awareness that the Domain Name had been hijacked from Complainant, there may be grounds to consider a refiled complaint, subject to the applicable criteria.

As reasoned above, the Panel finds that Complainant has failed to prove that the Domain Name was registered in bad faith.

DECISION

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 <tilt.com> domain name REMAIN WITH Respondent.

Nicholas J.T. Smith, Panelist

Dated: November 5, 2021

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