HomeAway.com, Inc. v. Thilo Becker
Claim Number: FA1107001397797
Complainant is HomeAway.com, Inc. (“Complainant”), represented by Nicole H. Chiu of Kokka & Backus, PC, California, USA. Respondent is Thilo Becker (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vrbo-florida.com>, registered with 1&1 Internet AG.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 12, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <vrbo-florida.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 July 13, 2011, the Forum informed the Complainant of two deficiencies of the Complaint, namely 1) the Complaint missed a copy of the ICANN Policy, and 2) as the Registration Agreement with the Registrar was in German, the Complaint must be translated into German, absent an alternative agreement between the parties.
On July 18, 2011, the Complainant replied to the Forum, with 1) the copy of the Policy, as well as 2) the Complaint translated into German.
On July 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2011 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 email@example.com. Also on July 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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. The Written Notice was sent both in English, as well as in German (“Schriftliche Beschwerdemitteilung”).
A timely Response was received and determined to be complete on August 8, 2011. The language of the Response was in English.
An Additional Submission from Complainant was received on August 15, 2011, and was considered as received in a timely manner according to The Forum's Supplemental Rule #7.
On August 9, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Petter Rindforth as Panelist. The Panelist shall issue its decision based on the Complaint, the Response, the Policy, the UDRP Rules and the Forums Supplemental Rules.
The case before the Panel was conducted in the English language – see further statement below “Findings: Language of the Proceeding”.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant informs that it owns and operates “vrbo.com”, which the Complainant states is one of the oldest and most popular vacation rental listing websites on the Internet. The popularity of the site has resulted in several instances of cyber piracy of various forms in which third parties have tried to capitalize on the site’s success by either misappropriating its name and/or creating misleadingly similar variants of the name. Complainant refers to VRBO.com, Inc. v. Linda Grizzle, FA 1283513 (Nat. Arb. Forum Oct. 26, 2009), and VRBO.com, Inc.v. Vacation Rental Partners, FA 1260798 (Nat. Arb. Forum June 17, 2009) as an examples of prior cases.
The Complainant states that the Respondent’s registration and use of the disputed domain name is yet another example of a competitor attempting to pass itself off as the Complainant in the eyes of the consumer.
The Complainant is the owner of the United States Patent & Trademark Office (USPTO) registration for the mark VRBO, U.S. Reg. No. 2,820,989, which has been registered since March 9, 2004, and used since 1996. (Exhibit C of the Complaint showing a U.S. Registry copy).
The Complainant states that, although the VRBO trademark registration did not issue before Respondent’s registration of the disputed domain name, the federal registration of VRBO is sufficient for purposes of Policy 4(a)(i). The original owner of the VRBO trademark, VRBO.com, Inc. merged with and into the Complainant on December 31, 2010.
As of June 2011, the VRBO website has in excess of 160,000 rental property listings worldwide and it prominently features the Complainant’s registered trademarks with the ® denoting trademark registration. The Complainant states that the domain name <vrbo-florida.com> is substantially identical and confusingly similar to Complainant’s trademark. The Complainant informs that it owns and operates 95 domain names that incorporate the VRBO mark, including <floridavrbo.com> and <vrboflorida.com>, which were registered by the Complainant’s predecessor before Respondent registered the disputed domain name (Exhibit J and K of the Complaint).
The Complainant claims that the Respondent has not made a bona fide offering of goods or services under UDRP Policy ¶4(c)(i). As Respondent advertises and offers his own vacation home rental services on the website connected to the disputed domain name, Respondent’s use of the domain name is competitive in nature with Complainant’s vacation rental listing services.
The Complainant also argue that Respondent is not commonly known by the disputed domain name, as the WHOIS listing for <vrbo-florida.com> shows the
registrant name as Thilo Becker. Further, Respondent owns and operates domain names such as <florida3.de>, <naples.at> and <cape-coral-vacation-rentals.com>, offering the same vacation rental listing services, which the Complainant claims as further evidence that Respondent is not commonly known by and does not solely operate under the disputed domain name.
The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. Rather, Respondent’s intent is to misleadingly divert customers to Respondents competing site for commercial gain is evidenced by the competitive nature of Respondent’s use of <vrbo-florida.com>.
The Complainant has never authorized Respondent to use its VRBO trademark.
The Respondent offered the disputed domain name for sale for $900 USD on February 10, 2005, as listen on a special web site (shown by Exhibit O of the Complaint). The Complainant states that this is evidence of Respondent’s bad faith registration and use of the disputed domain name. Currently, Respondent uses <vrbo-florida.com> to list vacation rentals in Florida (Exhibit P of the Complaint). Respondent’s attempt to use a virtually identical domain name to confuse website viewers, divert traffic, and display his directly competing website for commercial gain constitutes bad faith registration and use.
The Complainant argues that he registration and use of the domain name containing the Complainant’s trade mark to direct Internet users to a directly competitive website constitutes trademark infringement, which violates Complainant’s rights and renders Respondent’s domain registration in bad faith, regardless of whether Respondent had Complainant’s mark “in mind” at the time of registration or not. At the very least, Respondent knew or should have known of the Complainant’s prior use of VRBO. The Complainant’s predecessor first used VRBO in 1996 and registered and began using the domain name <vrbo.com> that same year. Thus, the Complainant’s common law VRBO trademark predates the Respondent’s registration of the disputed domain name in 2003.
As other evidence of bad faith registration and use, the Complainant argues that Respondent has diverted Internet users seeking Complainant’s vacation rental services to Respondent’s directly competing website offering similar services at the disputed domain.
In using Complainant’s trade mark on the website homepage and in the disputed domain name, which is confusingly similar to both Complainant’s trade mark and websites, Respondent has engaged in a clear effort to pass himself off as the Complainant – further diluting the Complainant’s trade mark and confusing customers.
The Complainant has sent three cease and desist letters to Respondent, who has failed to respond to any of these letters and has continued to use the disputed domain name.
The Respondent states that the Complainant’s trade mark rights are later than Respondent’s registration and first use of the disputed domain name.
The Respondent claims that the VRBO was used as common abbreviation for Vacation Rentals By Owner – which is spelled out too long for domain names.
The Respondent, stating his curiosity that nobody asked Respondent kindly before the dispute resolution process, points out that there is no reason to make this a legal case because Respondent has routed a different, “shorter & better domain” for his web pages – and “the domain in question (vrbo-florida.com) is set to be forwarded to vrbo.com”.
C. Additional Submissions
In Complainant’s additional submission, the Complainant states that the Panel shall not consider the Respondent’s Response, as it has failed to meet the requirements for a response under the UDRP Rules.
Further, the Complainant file additional arguments regarding the fact that the VRBO trademark application was filed before the registration date of the disputed domain name.
The Complainant informs that the Respondent has now redirected the disputed domain name to Complainant’s <vrbo.com> website, but points out that this action is not authorized by Complainant and that the requested decision to transfer <vrbo-florida.com> to the Complainant remains.
Finally, the Complainant argues that the Respondents electronic e-mail communication to the Forum clearly demonstrates Respondent’s proficiency with the English language. The Complainant therefore request English to be the language of the proceeding.
Language of the Proceeding
According to the Registrar in this matter, the Registration agreement in place for the <vrbo-florida.com> domain name is in the German language. The Panel notes that ICANN UDRP Rule 11(a) states, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In this matter, while the Registration Agreement is in the German language and Respondent is located in Germany, and the Notice and information was sent to the Respondent in both English and German, the Panel notes that Respondent submitted a Response via email correspondence in the English language. See Norgren, Inc v. Lars Landefeld, FA1006001330274 (Nat. Arb. Forum July 29, 2010) (holding that the language of the proceedings would be English where the German Respondent had shown himself fully capable of understanding and drafting a high standard of English from communicating with Complainant almost entirely in English).
Accordingly, the Panel considers the Respondent’s response as an acceptance of English as the proper language for this administrative proceeding.
Deficient Response Discussion
As stated above, a timely Response, although only in an electronic format, was received and determined to be complete on August 8, 2011.
In the interests of fairness and in accordance with ICANN Rule 10(b), the Panel has decided to consider the Response in spite of the lack of a hard copy Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
The Panel also wish to point out the fact that even if the Respondent had not responded at all, a respondent’s default does not automatically result in a decision in favor of the complainant, as the complainant (see further below under Discussion) always must prove each of the three elements required by Paragraph 4(a) of the Policy to obtain an order that a domain name should be cancelled or transferred.
Complainant’s Trademark Rights and Respondent’s domain name registration
The Panel finds that Complainant has established trademark rights in the following trademark:
U.S. No 2,820,989 VRBO (word mark)
First use in commerce on January 1, 1996
Filed on April 11, 2003
Published for opposition on December 16, 2003
Registered on March 9, 2004
The Respondent registered the disputed domain name <vrbo-florida.com> on November 29, 2003.
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.
The Complainant bases its Complaint on the VRBO mark which it has acquired through an assignment of abstract title from the original owner of the mark. The VRBO mark is registered with the United States Patent and Trademark Office ("USPTO").
The Panel finds that Complainant has established rights in the VRBO mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO that date back to the filing date of April 11, 2003, regardless of where Respondent is a resident. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues that the <vrbo-florida.com> domain name is confusingly similar to its VRBO mark. Complainant notes that the domain name contains its entire mark in addition to a hyphen, the geographic identifier “florida,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions to Complainant’s mark are not sufficient to render the domain name distinct from Complainant’s mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s VRBO mark according to Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name, together with the fact that the WHOIS information lists “Thilo Becker” as the registrant of the disputed domain name, which the Panel finds is not similar to <vrbo-florida.com>, establishes a prima facie case under the Policy.
Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 Respondent’s use of the disputed domain name to offer directly competing vacation rental finding services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Accordingly, the Panel has found no reason to see that Respondent has any legitimate rights or interest in the disputed domain name.
Although the Respondent registered the disputed domain name on November 29, 2003, and the VRBO trademark was registered on March 9, 2004, the VRBO trademark was in fact first used in commerce on January 1, 1996 and the U.S. trademark application was filed on April 11, 2003 – all clearly prior to the registration of the disputed domain name.
As the Respondent - although based in Germany – is obviously in the same business as the Complainant and offering services in the same geographical area as Complainant, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) as Respondent obviously had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Further, the Panel finds that Respondent registered the disputed domain name in order to disrupt Complainant’s business, as Respondent’s <vrbo-florida.com> domain name resolves to a website which lists vacation rentals in Florida in direct competition with Complainant’s business. This is evidence of bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Finally, the Complainant alleges that Respondent is commercially benefitting from its use of the disputed domain name. The Panel finds, absent any counter to this argument by the Respondent, that Respondent is profiting from its vacation rental website. This is a further evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vrbo-florida.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 16, 2011
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