WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Homeaway.com, Inc. v. Registration Private, Domains By Proxy, LLC / Trish Dalcourt
Case No. D2017-0864
1. The Parties
The Complainant is Homeaway.com, Inc. of Bellevue, Washington, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (“United States” or “US”).
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Trish Dalcourt of Calgary, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <rvrbo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2017. On May 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, 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 May 8, 2017 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 9, 2017.
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 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was initially May 30, 2017, but, following a request received on May 29, 2017 for an automatic four calendar day extension, the due date for the Response was extended to June 3, 2017. The Response was filed with the Center on June 4, 2017.
On June 9, 2017, the Complainant submitted a Supplemental Statement to the Center. By email of June 9, 2017, the Respondent expressed its wish to respond to the Complainant’s Supplemental Statement. By email of June 9, 2017, both Parties were informed that the Panel would decide on the admissibility of any supplemental filings after its appointment.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on June 22, 2017. 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.
On June 27, 2017, the Respondent informed the Center by email that it did not wish to file any further statements.
4. Factual Background
The Complainant operates an online marketplace for the vacation rental industry, offering bookable listings for vacation rental homes, apartments, recreational vehicles and boats. It is the owner of the following trademark and service mark registrations in the United States, Canada and the European Union (“EU”):
- US service mark No. 2,820,989 VRBO (registered March 9, 2004)
- US service mark No. 4,041,089 VRBO FROM HOMEAWAY and Design (registered October 18, 2011)
- US service mark No. 4,048,332 VRBO FROM HOMEAWAY and Design (registered November 1, 2011)
- US service mark No. 4,098,206 VRBO FROM HOMEAWAY and Design (registered February 14, 2012)
- US service mark No. 4,048,344 VRBO FROM HOMEAWAY and Design (registered November 1, 2011)
- US service mark No. 4,044,354 VRBO FROM HOMEAWAY and Design (registered October 25, 2011)
- US service mark No. 4,044,355 VRBO FROM HOMEAWAY and Design (registered October 25, 2011)
- Canada trademark No. TMA889736 VRBO (registered November 10, 2014)
- EU trademark No. 15778848 VRBO (registered March 3, 2017).
The Complainant and its predecessors have been using the VRBO marks since 1995 to offer property rental services. The Complainant’s website “www.vrbo.com” and the related mobile app have been recognized as belonging to the most popular rental websites or apps.
According to the WhoIs records, the disputed domain name <rvrbo.com> was registered on November 15, 2002. The Complainant alleges that the disputed domain name was registered by the Respondent on or around December 4, 2015, while the Respondent claims that it acquired the disputed domain name on January 9, 2015 for CAD 6,160.
At first, the disputed domain name was used by the Respondent’s company RVRBO, Inc. to offer rental by owner services for recreational vehicles. On October 27, 2016, the Respondent changed the name of its company to GROOVYLIFE, Inc. and has been using the disputed domain name to direct users to its website “www.groovylife.com”, offering the same rental by owner services for recreational vehicles.
In 2016, the Respondent filed two applications to register the mark RVRBO in Canada and in the United States, respectively. Following opposition by the Complainant, the Respondent abandoned its applications.
In April 2017, the Respondent has listed the disputed domain name for sale at USD 12,500.
5. Parties’ Contentions
The Complainant’s position can be summarized as follows:
The disputed domain name is confusingly similar to the Complainant’s trademark, as it consists of the Complainant’s VRBO trademark along with an “r” and a generic Top-Level Domain (“gTLD”), creating the misleading impression of an association with the Complainant. Thus, users searching the Internet for information related to the renowned VRBO business of the Complainant are likely to be misdirected to the Respondent’s website.
The Respondent has no legitimate interest in the disputed domain name, as it neither identifies itself by the disputed domain name nor was authorized by the Complainant to use a domain name incorporating the VRBO trademark. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, but is rather using it to profit from the Internet traffic attracted by the Complainant’s trademark.
According to the Complainant, the Respondent has shown bad faith by holding the disputed domain name with the sole purpose of selling it for profit at USD 12,500 – an amount which far exceeds the normal out-of-pocket costs associated with the registration of a domain name.
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s trademark. The only similar element is the “rbo”-part of the disputed domain name, which is not trademarked and is a common abbreviation of the words “rental by owner”, which best describe the Respondent’s business model. For the remaining part, the letters “rv” in the disputed domain name stand for “recreational vehicle”, whereas the letter “v” in the Complainant’s trademark stands for “Vacation”.
Furthermore, the Respondent alleges that its business model is different from the Complainant’s. While the Complainant is in the vacation real estate rental business, the Respondent is in the recreational vehicle rental business and does not offer vacation home rentals. According to the Respondent, its business is modeled after the Complainant’s competitor, Airbnb. The logos, color palettes, fonts and symbols used by the Respondent are different than those used by the Complainant.
The Respondent offers a bona fide service. Since acquiring the disputed domain name, the Respondent has intended to use the website linked to it as its place of business, although the Respondent has never received a booking through this website. After transitioning to a new company name and a new website, the Respondent has used the disputed domain name to direct its customers to its new website. By doing so, the Respondent was not attempting to leverage off the notoriety of the VRBO trademark.
The Respondent did not acquire or use the disputed domain name in bad faith; it simply registered a domain name that was the acronym to its company name.
The Respondent is not holding the disputed domain name for profit or to disrupt the Complainant’s business; it is simply looking to sell the disputed domain name at a fair market value.
Finally, the Respondent states that it has complied with all of the Complainant’s requests to cease using the name RVRBO in its advertising and social media, except for transferring the disputed domain name, which the Respondent is ready to sell at a fair price. The Respondent requests the Panel to lift all claims and “holds” over the disputed domain name, so that the Respondent is free to sell it.
6. Discussion and Findings
6.1. Admissibility of the Complainant’s Supplemental Statement
The Rules and the Supplemental Rules contain no explicit provisions regarding supplemental filings from the Parties, with the exception of those cases where such filings have been requested by the Panel itself (Rules, paragraph 12). In accordance with the Rules, paragraph 10, the Panel shall conduct the proceeding “with due expedition” and shall “determine the admissibility, relevance, materiality and weight of the evidence”.
A number of previous UDRP decisions have dealt with the procedural issue of unsolicited filings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, and cases cited therein. For the sake of procedural efficiency, UDRP panels are generally reluctant to accept such unsolicited filings, unless there are “exceptional circumstances” requiring their admission into evidence. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198; Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097.
After having reviewed the content of the Complainant’s Supplemental Statement dated June 8, 2017, the Panel reaches the conclusion that it does not relate to an exceptional circumstance that would justify its admission into evidence. Furthermore, the consideration of this submission would not have changed the outcome of the proceeding at hand. Accordingly, the Panel does not admit the Complainant’s supplemental filing.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s registered trademark and service mark VRBO except for the additional letter “r”.
This is not changed by the fact that the acronyms VRBO and RVRBO may stand for slightly different phrases, namely “Vacation Rentals By Owner” and “Recreational Vehicles Rentals By Owner”, respectively. The Panel finds the Respondent’s remark and argument that “RBO” is a common abbreviation for “Rental By Owner” largely irrelevant here. The similarity of the two acronyms, as well as the fact that the Complainant and the Respondent operate similar or overlapping businesses, is very likely to create confusion among users.
The Panel finds that the disputed domain name is thus confusingly similar to a trademark or service mark in which the Complainant has rights and that the Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has shown that its adoption and extensive use of the VRBO marks predate the first use of the disputed domain name by the Respondent, indicating prima facie the absence of rights or legitimate interests in the disputed domain name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name. The Panel refers to PepsiCo, Inc. v. Amilcar Perez Lisa d/b/a Cybersor, WIPO Case No. D2003-0174.
While the Respondent has come forward with allegations about the existence of rights or legitimate interests in the disputed domain name and operates a business offering listing services for recreational vehicles, this does not mean that it has a right or legitimate interest to use a domain name which fully incorporates and is confusingly similar to the Complainant’s VRBO mark. The Respondent was never authorized by the Complainant to use the VRBO mark.
There are further indications that the Respondent is not using the disputed domain name in connection with a bona fide offering of services: the Respondent has stated that it has never received a booking directly through “www.rvrbo.com”. It follows that the Respondent has only conducted business from its new website “www.groovylife.com”, so that the disputed domain name could not have been a necessary part of the Respondent’s business. In any case, the Respondent is currently only holding the disputed domain name for sale, so that it does not currently serve the purpose of a bona fide offering of goods or services.
The Respondent has not adduced sufficient proof that it is commonly known under the disputed domain name. While it is true that the Respondent had first incorporated its company under the name RVRBO, Inc., on October 27, 2016, the Respondent has moved away from this name, changing the company name to GROOVYLIFE, Inc. Since the Respondent stated that it has never received a booking under RVRBO, it is doubtful whether the Respondent was ever known – especially commonly known – under this name.
In summary, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the circumstances of this case, it appears plausible that the Respondent has acquired and used the disputed domain name in an attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark and services. Based on its own account, the Respondent was aware of the Complainant’s trademark and its services and it appears likely that the Respondent has intentionally sought to profit from the trademark’s notoriety.
The Respondent is currently holding the disputed domain name with the sole purpose of selling it for an amount which exceeds the normal out-of-pocket costs for registering a domain name and which also exceeds the amount which the Respondent claims to have paid to acquire the disputed domain name. This is a further indication of bad faith.
The Panel therefore finds that the Respondent has acquired and used the disputed domain name in bad faith, thus fulfilling paragraph 4(a)(iii) of the Policy.
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 <rvrbo.com> be transferred to the Complainant.
Date: July 6, 2017