Background
Alex Smith, proceeding pro se, registered the domain name airbnbseo.com to offer search engine optimization services for the travel industry. After Airbnb successfully transferred the domain under the Uniform Domain-Name Dispute-Resolution Policy, Smith filed suit to block the transfer, alleging violations of the Anticybersquatting Consumer Protection Act and Arizona common law. The district court granted Airbnb’s motion to dismiss the second amended complaint without leave to amend.
The court’s reasoning
The court reviewed the dismissal de novo and concluded that Smith failed to meet his burden to establish that his domain registration was not unlawful. The court found the domain name confusingly similar to the famous AIRBNB mark because adding the descriptive acronym SEO did not negate the likelihood of confusion in sight, sound, or meaning. Furthermore, the court held that Smith’s intentional use of the famous mark to leverage its brand for commercial purposes constituted bad faith intent to profit. The court also rejected Smith’s arguments regarding nominative fair use, statutory fair use, and the ACPA safe harbor provision.
The dissent
Confusing similarity is a factual question, and in my view the district court erred in resolving it here on a motion to dismiss.
Miller
What it means going forward
The decision reinforces that plaintiffs challenging domain transfers under the ACPA must plead specific facts to negate confusing similarity and bad faith intent, particularly when the mark is famous. It clarifies that adding descriptive terms to famous marks does not automatically shield a registrant from liability.