WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Homeaway.com, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Farhan Aslam, Home Away Home Vacation Rentals
Case No. D2018-0826
1. The Parties
The Complainant is Homeaway.com, Inc. of Bellevue, Washington, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Farhan Aslam, Home Away Home Vacation Rentals of Sahiwal, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <home-away-home.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 1, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 22, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on June 6, 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 Rules, paragraph 7.
4. Factual Background
The Complainant is a subsidiary of Expedia, Inc., a large, international travel company. Since approximately 2006, the Complainant has promoted short term rental vacation properties and associated reservation services. It operates internationally, and its various websites provide over two million bookable listings of vacation rental properties in 190 countries. The websites through which the Complainant promotes its listings include <homeaway.com> (for properties in the United States), <homeaway.co.uk> (for properties in the United Kingdom of Great Britain and Northern Ireland) and <homeaway.de> (for properties in Germany).
The Complainant's services and its "HOMEAWAY" brand are promoted in multiple jurisdictions through online, print and television advertising campaigns, direct email marketing and sponsorships as well as through a variety of social media platforms.
The Complainant owns a number of registered trade marks for HOMEAWAY, in word only form as well as in conjunction with a "Birdhouse" device. These include United States Trade Mark Registration No. 3596177 dated March 24, 2009, for HOMEAWAY, in International Class 43. Similar marks are registered in other territories, including in Canada and the European Union.
The disputed domain name was registered by the Respondent on October 18, 2017. It resolves to a website which is headed "Home Away Home". The Respondent's website purports to offer online vacation rental services which are substantially the same as those offered by the Complainant. It also incorporates some similar features, such as a search function with the same question prompt, "Where do you want to go", and the same search options as those on the Complainant's website.
According to the Complainant, its investigations suggest that there is not actually a business located at the contact address for the Respondent in Chicago, Illinois, United States, which is provided on its website, nor is any business entity known as "Home Away Home" licensed to do business in the State of Illinois. Moreover, it transpires from records disclosed by the Registrar for the disputed domain name, that the Respondent is actually located in Pakistan and not the United States.
The Complainant has provided examples of what it asserts is evidence of confusion by Internet users between the Complainant's and the Respondent's respective websites. These include a posting on a discussion forum on the Complainant's website in March 2018 which sets out a promotional email the poster has received from the Respondent. The posting is headed "Just received an offer from HA. Is it a scam?". and contains the comment; "Chicago address and gmail - seems like a scam. Is it?". Another posting contains a further promotional email received from the Respondent and poses a question, evidently directed at the Complainant; "Just got this bulk email in my primary in box. I would assume you'd want to go after these folks, assuming it's not you all in a strange game. A lot of those in play right now".
5. Parties' Contentions
The Complainant says that the disputed domain name is identical and confusingly similar to trade marks in which it has rights. The generic Top Level Domain ("gTLD") ".com" is disregarded for the purposes of assessing similarity or identicality. The hyphens between the separate words which comprise the disputed domain name are also of no significance for these purposes and can be disregarded. The disputed domain name comprises the Complainant's HOMEAWAY trade mark in its entirety and simply adds to the end of the trade mark the "HOME" component of the mark. See Formula One Licensing B. V. v. Ismail Altunzade, Goldzade CV, WIPO Case No. D2009-0797, where the domain name <f-one-1.com> was found to be confusingly similar to the complainant's F1 trade mark.
The Complainant asserts also that the Respondent has no rights or legitimate interests in the disputed domain name. As the Complainant adopted and made extensive use of its HOMEAWAY trade marks before the Respondent started to use the disputed domain name, the burden is on the Respondent to establish rights or legitimate interests in it; see PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. However, where, as is the case with the disputed domain name, a complainant's mark is fully incorporated into a respondent's domain name, the respondent cannot have any rights or legitimate interests in it; see Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, WIPO Case No. D2004-0483.
The Complainant has been unable to find any trade mark use, or registration of "Home Away Home" or any similar term, by the Respondent prior to its registration of the disputed domain name. Moreover, the corporate entity which purports to be operating the Respondent's business does not exist and, even if it did, its establishment after the registration of the Complainant's trade mark does not confer any legitimate rights on the Respondent to use that mark.
There is no relationship between the Complainant and the Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant's HOMEAWAY trade mark.
The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods and services, nor making a legitimate noncommercial or fair use of it. The Respondent has used the disputed domain name, without permission or authorisation from the Complainant, to attract Internet users and direct them towards his website, which purports to offer vacation rental services. However, the Respondent's website is fraudulent in that users cannot book legitimate rentals through it. The Respondent's use of the disputed domain name is likely to confuse Internet users into believing that the Respondent's website is affiliated with or somehow connected to the Complainant's HOMEAWAY services. Such use does not comprise a bona fide use of the disputed domain name. The Respondent is using the disputed domain name to profit from Internet traffic, attracted by the HOMEAWAY mark, which is then diverted to the Respondent's website; see Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, where the panel found that intentionally trading on the fame of another cannot constitute a bona fide offering of goods and services.
Lastly, the Complainant says that the disputed domain name was registered by the Respondent and is being used by him in bad faith. The Respondent has sought to benefit from the goodwill and notoriety associated with the Complainant's HOMEAWAY trade marks. In particular, the disputed domain name was registered long after the Complainant's rights in its trade marks were established. Registration of a disputed domain name, obviously connected with a well-known brand, by someone with no connection with that brand suggests opportunistic bad faith; see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The Respondent registered the disputed domain name after it had actual or constructive knowledge of the Complainant's rights in its HOMEAWAY trade marks. Moreover, the Respondent has used a confusingly similar imitation of the Complainant's Birdhouse logo on its website which suggests an affiliation or connection with the Respondent. Furthermore, the Respondent is using the disputed domain name in connection with services which are identical to those offered by the Complainant under its HOMEAWAY trade marks and thereby diverting traffic to the Respondent's website that otherwise would be interested in the Complainant's services; see Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244. Internet users will mistakenly believe that the disputed domain name is connected to, associated with or endorsed or sponsored by the Complainant. Such confusion is sufficient to demonstrate bad faith.
Finally, at the time the Complainant filed its original Complaint, the Respondent was actively concealing his identity by using a privacy service and by providing contact information on his website that appeared to be bogus.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Dealing, first, with the Respondent's failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of a number of registered trade marks it has registered for HOMEAWAY, including the mark in respect of which full details are set out above. As explained at section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") "[w]here the complainant holds a nationally or regionally registered trade mark or service mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case".
The insertion of hyphens between the three words which comprise the disputed domain name does not affect the perception of its character. For the purposes of comparing the disputed domain name with the Complainant's trade marks, the gTLD (".com", in the case of the disputed domain name) is typically disregarded as a technical requirement of registration.
When assessing whether a domain name is confusingly similar to a complainant's trade mark, a panel is required to make an assessment as to whether the mark is recognisable within the domain name. Where the entirety of a trade mark is recognisable within the domain name, it will normally be considered confusingly similar. The disputed domain name includes the entirety of the Complainant's HOMEAWAY trade mark. The repetition of the first element of the Complainant's HOMEAWAY mark, that is "HOME", at the end of the disputed domain name does not serve to prevent it from being confusingly similar to that mark; see Formula One Licensing B.V (supra).
The Panel accordingly finds that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As explained at section 2.1 of the WIPO Overview 3.0: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Complainant has submitted evidence which strongly indicates that the Respondent's website is not bona fide. Amongst other matters, the address in the United States, which the Respondent has stated on his website is his place of business, would appear to be bogus and the Complainant has asserted that it is not, in fact, possible to book a property through the Respondent's website.
Section 2.13.1 of the WIPO Overview 3.0 explains that "Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent". The line between a website which is not genuine and a website which is actually illegal is not always clearly drawn but, even if the Respondent's website is not being used for unlawful activity, there is sufficient detail and substance in the Complainant's allegations for the ball to have been placed firmly in the Respondent's court to rebut them, if he considered that they were untrue. Having failed to take the opportunity to do so by serving a response, the Panel concludes that the Complainant's contentions are correct and that the website to which the disputed domain name resolves is not a bona fide offering of goods and services.
The Respondent's website is plainly commercial in character and, the Respondent is accordingly not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, there is no evidence which indicates that the Respondent has been commonly known by the disputed domain name, nor is there any other information available to the Panel which might indicate that the Respondent might be able to establish rights or legitimate interests in it.
The Panel accordingly concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As explained at section 3.1.4 of the WIPO Overview 3.0, "Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith".
As at the date of registration of the disputed domain name in October 2017, the Complainant had been established for approximately 11 years. It has produced extensive evidence which demonstrates that its HOMEAWAY brand has been very actively promoted through a wide variety of marketing channels during that period. In these circumstances, the likelihood of the Respondent having registered the disputed domain name, incorporating, as it does, the entirety of the Complainant's trade mark, without being aware of the Complainant and its business is so low as to be discounted. The Respondent would therefore have been fully aware of the likelihood that prospective and actual customers of the Complainant were likely to visit the website to which the disputed domain name resolved and either confused the Respondent's business with that of the Complainant or assumed that it was closely associated with it in some way. And, in fact, the Complainant has provided evidence which substantiates that Internet users are confused between the two businesses.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, will be considered evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv), in summary is if by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or the location or of a product or service on it.
As explained at section 3.1.4 of the WIPO Overview 3.0, factors which tend to support a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy include actual confusion, seeking to cause confusion for the respondent's commercial benefit, even if unsuccessful, the lack of a respondent's own rights to or legitimate interests in a domain name and the absence of any conceivable good faith use.
Accordingly, the Respondent's activities fall within the circumstances described at paragraph 4(b)(iv) of the Policy. This is the case irrespective of whether the website to which the disputed domain name resolves is simply bogus or is being actively used in furtherance of illegal activity. In either case, both the content of the website to which the disputed domain name resolves and the confusing and intentional similarities between the disputed domain name and the Complainant's HOMEAWAY trade marks are clearly aimed at fostering confusion on the part of Internet users between the Complainant's services and those which the Respondent purports to provide.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <home-away-home.com> be transferred to the Complainant.
Date: June 20, 2018