The Complainant is Airbnb, Inc. of San Francisco, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Domain Admin, Claim.Club of Berlin, Germany.
The Registry of the disputed domain name <airbnb.eu> (the “Domain Name”) is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the Domain Name is TLD Registrar Solutions Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2018. On March 16, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the Domain Name. On March 22, 2018, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was May 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on May 16, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the ADR Rules, Paragraph B(5).
On June 13, 2018 the Panel issued Procedural Order No. 01, seeking further information from the Complainant in relation to the eligibility requirements of Paragraph 4(2)(b) of Regulation (EC) No 733/2002 (referred to further below). The Complainant responded with further information on June15, 2018 and June 18, 2018. The Respondent did not file any submission in response to the Complainant’s submissions.
The Complainant is the owner of the AIRBNB brand, known worldwide for its revolutionary approach to people-powered travel and hospitality. The Complainant is a community marketplace for people to list, discover, and book accommodation around the world – online or from a mobile phone or tablet. The Complainant connects people to travel experiences in more than 65,000 cities and 191 countries. The Complainant matches renters of temporary lodging with owners of rental properties, provides registered users with directories of rental properties, and property reviews and renter feedback. The Complainant provides other services too. Since its launch in 2009, the Complainant has enjoyed considerable growth. In November 2010, the Complainant raised USD 7.2 million in venture funding. In February 2011, the Complainant announced its 1 millionth booking since its inception and a few months later, the Complainant announced the opening of its first European office in Hamburg, Germany.
The Complainant’s main website, at “www.airbnb.com”, enjoys widespread popularity. The Complainant is the owner of the service mark and trademark AIRBNB (hereafter the “AIRBNB Mark” or “Complainant’s Mark”) and the trade name Airbnb. The Complainant first used its AIRBNB Mark in the United States at least as early as March 4, 2009 and it has been in continuous use since at least that date. The Complainant’s Mark is protected by trademark registrations in many countries around the world including in the European Union. For instance, it owns United States Trademark Registration No. 3,890,025 for AIRBNB, issued on December 14, 2010 and European Union Trademark Registration No. 009376468 for AIRBNB, issued on March 1, 2011.
The Respondent registered the Domain Name on February 8, 2011 and used one or more associated email accounts to direct Internet users to the Complainant’s website through an intermediate link. The Respondent has also listed the Domain Name for sale on “www.undeveloped.com” for the asking price of EUR 9,999.
The following is a summary of the Complainant’s main contentions.
The Domain Name is identical or confusingly similar to a name in respect of which the Complainant has a right or rights recognized or established by national law of a Member State and/or Community law.
The Respondent registered the Domain Name after the Complainant had launched its business and first used its AIRBNB Mark, after the Complainant raised USD 7.2 million in venture funding, after the Complainant’s AIRBNB Mark became known worldwide, after the Complainant registered its AIRBNB Mark in the United States (and elsewhere), and in the same month in which the Complainant announced its 1 millionth booking.
The Domain Name consists of the AIRBNB Mark plus the country code Top-Level Domain (“ccTLD”) “.eu,” (which does not distinguish a domain name from a mark). It therefore wholly incorporates the Complainant’s Mark. The Domain Name therefore is identical or confusingly similar to the Complainant’s Mark and as such is likely to confuse consumers as to its connection with the Complainant.
The AIRBNB Mark is a well-known, distinctive, and strong mark. This fame, distinctiveness and strength only serve to increase the likelihood of confusion between the AIRBNB Mark and Domain Name.
The Respondent is using one or more of the email addresses associated with the Domain Name to masquerade as the Complainant in communications with the Complainant’s hosts. This use is calculated to deceive the Complainant’s hosts into thinking, falsely, that the Respondent is either the Complainant or is affiliated or connected with, or endorsed or approved by, the Complainant.
Given the Complainant’s clear rights to the AIRBNB Mark and the public’s overwhelming association with the Complainant, the Respondent’s registration and use of the Domain Name is likely to cause consumer confusion.
The Respondent has no rights or legitimate interests in respect of the Domain Name:
The Respondent has neither rights nor legitimate interests in the Domain Name. The Respondent is not using and it is believed has never used the Domain Name in connection with a bona fide offering of goods or services. The Respondent has however offered the Domain Name for sale for EUR 9,999.
The Respondent is not commonly known by the Domain Name. In fact, the Respondent cannot be commonly known by the Domain Name because the Complainant has not authorized the Respondent to use its AIRBNB Mark.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, but instead is using one or more email addresses associated with it (including […]@airbnb.eu) to induce the Complainant’s hosts to click on a link to “complete an account review”.
Thus, the Respondent is using or has used one or more email accounts associated with the Domain Name to masquerade as the Complainant in communications with its hosts and to induce those hosts to click on a link that re-directs them to the Complainant’s website, all for the purpose of earning unauthorized affiliate revenue or for other nefarious purposes.
The Complainant’s Terms of Service expressly prohibit users from “registering and/or using Airbnb or derivative terms in domain names, trade names, trademarks or other source identifiers, or registering and/or using domains names, trade names, trademarks or other source identifiers that closely imitate or are confusingly similar to Airbnb domains, trademarks, taglines, promotional campaigns or Collective Content.”
In summary, the Respondent’s illegitimate interest is established by: (a) its registration and use of the Domain Name which wholly incorporates the Complainant’s Mark; (b) its offer to sell the Domain Name for EUR 9,999, which far exceeds its costs associated with registration; and (c) its use of one or more email addresses associated with the Domain Name to trick the Complainant’s customers into clicking on a link that re-directs to the Complainant’s website. The Respondent clearly registered the Domain Name with the Complainant’s Mark in mind and with the intention of diverting Internet traffic intended for the Complainant and otherwise for the Respondent’s financial gain. The Respondent’s use is neither legitimate nor fair.
The Domain Name was registered or is being used in bad faith:
Whilst under the ADR Rules (and Commission Regulation (EC) No. 874/2004) registration or use of a Domain Name in bad faith is an alternative rather an additional requirement to registration without rights or legitimate interests, there is ample evidence of bad faith.
The Respondent registered the Domain Name with the Complainant’s Mark in mind and with intent to cause confusion - the Complainant first made use of its AIRBNB Mark at least as early as March 4, 2009, but the Respondent did not register the Domain Name until February 8, 2011, the same month in which the Complainant announced its 1 millionth booking, and after consumers worldwide had come to recognize the Complainant’s Mark and rely upon it to identify and distinguish the Complainant’s website and services from the goods and services of others. Because of the fame of the Complainant’s Mark, there can hardly be any doubt that the Respondent was aware of the AIRBNB Mark and associated reputation.
Even a cursory Internet search would reveal that the Complainant offers its services in various countries using domain names consisting of its AIRBNB Mark and the corresponding ccTLD, such as <airbnb.ca> (Canada), <airbnb.de> (Germany), <airbnb.fr> (France) and <airbnb.jp> (Japan). As a result, Internet users have come to believe that domain names and their associated email addresses that consist of “airbnb” and a ccTLD, are owned or operated by the Complainant. By registering the Domain Name and using email addresses associated with it, the Respondent is seeking to pass itself off as the Complainant.
The Complainant is not aware that the Respondent has ever used the Domain Name in a relevant way, much less for at least two years from the date of its registration (as contemplated under Paragraph B(11)(f)(2)(ii) of the ADR Rules)
The Complainant believes that the Respondent registered the Domain Name not only with the Complainant’s Mark in mind, but also with the intent to prevent the Complainant from reflecting its AIRBNB Mark in a corresponding domain name under the ccTLD “.eu”.
The Respondent has also listed the Domain Name for sale on “www.undeveloped.com” for the asking price of EUR 9,999, which far exceeds any reasonable registration costs it may have incurred. Such is a clear indication of the Respondent’s bad faith.
The Respondent apparently registered the Domain Name so it could use the associated email addresses to direct the Complainant’s hosts to the Complainant’s website through an intermediate link, it is believed for the purpose of gaining unauthorized affiliate revenues. This too is bad faith.
In summary, it is clear that the Respondent has registered and used the Domain Name in bad faith. The Respondent registered a domain name that incorporates the Complainant’s Mark in its entirety. It has no legitimate interest in the Domain Name and is offering to sell it for an astronomical sum while using one or more associated email addresses to trick the Complainant’s users. This demonstrates that the Respondent is merely trading off of the Complainant’s Mark and reputation for its own financial gain, if not also for other, as yet undiscovered, nefarious purposes.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph B(11)(d)(1) of the ADR Rules, the Complainant must establish:
(i) that the Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) that the Domain Name has been registered by the Respondent without rights or legitimate interest in the name; or
(iii) that the Domain Name has been registered or is being used in bad faith.
The Complainant must establish that the above criteria are satisfied even in a case where no Response has been filed.
The Complainant has established that it is the owner of registered trademark rights for its AIRBNB Mark which are effective within the EU. The Domain Name incorporates the AIRBNB Mark in its entirety and is its only component, apart from the ccTLD “.eu”, which may be disregarded for the purposes of assessing identity or confusing similarity. The Domain Name is therefore identical to the AIRBNB Mark.
The Panel finds that the Domain Name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law for the purposes of Paragraph B(11)(d)(1)(i) of the ADR Rules.
Paragraph B(11)(e) of the ADR Rules provides a non-exhaustive list of circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for the purposes of Paragraph B(11)(d)(1)(ii) of the ADR Rules. The circumstances listed include, by way of example, the Respondent making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
By its submissions, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not participated in these proceedings and has not disputed the Complainant’s contentions. Nevertheless, the Panel must still be satisfied that the Respondent does in fact lack rights or legitimate interests.
The Domain Name comprises the Complainant’s AIRBNB Mark in unadorned form. The AIRBNB Mark is a coined term with no meaning other than to refer to the Complainant and its business. The Respondent appears to be using one or more email accounts associated with the Domain Name to pass itself off as the Complainant in communications with third parties who are re-directed to the Complainant’s website. It is suggested that this is for the purposes of earning unauthorized affiliate revenue or for other nefarious purposes. The Respondent has not answered these allegations and the Panel has no cause to doubt their veracity, particularly in circumstances where the Respondent’s use of the Domain Name so obviously cries out for explanation but none has been provided.
On the material before it, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name for the purposes of Paragraph B(11)(d)(1)(ii) of the ADR Rules.
Lack of rights or legitimate interests, and registration or use in bad faith, are alternative requirements under the ADR Rules. Thus, given the finding that the Respondent lacks rights or legitimate interests in the Domain Name, it is not strictly necessary to deal with bad faith. However, for the sake of completeness, the Panel also finds that the Respondent registered and has used the Domain Name in bad faith for the purposes of Paragraph B(11)(d)(1) of the ADR Rules. The Respondent clearly had knowledge of the Complainant’s AIRBNB Mark and has sought to take unfair advantage of it by registering an identical domain name for the purposes of impersonating the Complainant, and misleading those dealing with or seeking to deal with the Complainant presumably for its (the Respondent’s) own benefit. With respect to the bad faith use, the Respondent has used the Domain Name to create one or more email accounts and pass itself off as the Complainant in communications with third parties who were induced to click on a link and then were
re-directed to the Complainant’s website through an intermediate link. This cannot be considered as bona fide use but is rather an attempt to divert Internet users, for commercial gain, to an intermediate link before arriving at the Complainant’s website by creating a likelihood of confusion with the Complainant’s AIRBNB Mark as to the source, sponsorship, affiliation or endorsement of email communications and associated links. Offering the Domain Name for sale for EUR 9,999, which far exceeds the out-of-pocket costs associated with the Domain Name’s registration, is further evidence of bad faith.
The Panel therefore concludes, in all the circumstances, that the Domain Name has been registered or is being used in bad faith for the purposes of Paragraph B(11)(d)(1)(iii) of the ADR Rules.
The remedies available under the ADR Rules are dealt with in Paragraph B(11)(b). This paragraph provides for the remedy to be limited to one of revocation of the Domain name in dispute, unless the Complainant satisfies the general eligibility criteria for registration (of domain names) set out in Article 4(2)(b) of Regulation (EC) No 733/2002, in which case a transfer of the Domain Name to the Complainant may be ordered.
The eligibility requirements of Article 4(2)(b) of Regulation (EC) No 733/2002 provide that
“The Registry shall:
…………..
(b) register domain names in the .eu TLD through any accredited .eu Registrar requested by any:
(i) undertaking having its registered office, central administration or principal place of business within the Community, or
(ii) organization established within the Community without prejudice to the application of national law, or
(iii) natural person resident within the Community;”
The Complainant is a United States entity but clearly has economic operations established within the European Union, namely Hamburg in Germany. Moreover, in response to the Procedural Order No. 01, the Complainant has stated that it has “registered offices” in Dublin, Ireland (Airbnb Ireland UC, private unlimited company) and in London, United Kingdom of Great Britain and Northern Ireland (Airbnb Payments UK Ltd). The Panel finds that the requirement that the Complainant is an organization established within the Community for the purposes of Article 4(2)(b) of Regulation (EC) No 733/2002 (and therefore Paragraph 11(b) of the ADR Rules) has been satisfied.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the Domain Name <airbnb.eu> be transferred to the Complainant’s registered office in Dublin (Airbnb Ireland UC) or in London (Airbnb Payments UK Ltd).
Jon Lang
Sole Panelist
Date: June 22, 2018