HomeAway, Inc. et al v. Airbnb, Inc.

Filing 1

COMPLAINT and Request for Preliminary and Permanent Injunctive Relief ( Filing fee $ 400 receipt number 0542-6116104), filed by HomeAway, Inc., HomeAway.com, Inc.. (Attachments: # 1 Declaration of Carl Shepherd, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20, # 22 Exhibit 21, # 23 Exhibit 22, # 24 Civil Cover Sheet)(Simons, Michael)

IN THE UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
HOMEAWAY, INC., HOMEAWAY.COM,
INC.,
Plaintiffs,
vs.
AIRBNB, INC.,
Defendant.

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CIVIL ACTION NO. 1:13-cv-1087
COMPLAINT FOR TRADEMARK
INFRINGEMENT, DILUTION, FALSE
DESIGNATION OF ORIGIN, UNFAIR
COMPETITION, AND UNJUST
ENRICHMENT

JURY TRIAL DEMANDED
_____________________________________________________________________________________________

PLAINTIFF’S VERIFIED COMPLAINT
AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF
_____________________________________________________________________________________________

Plaintiffs HomeAway, Inc. and HomeAway.com, Inc. (hereinafter collectively referred to
as “Plaintiffs” or “HomeAway”), allege the following facts in support of this action for
trademark infringement, unfair competition and trademark dilution under the Trademark Act of
1946, as amended, 15 U.S.C. § 1051 et seq. (“Lanham Act”); for trademark dilution under
Chapter 16 of the Texas Business and Commerce Code; and for trademark infringement, unfair
competition, and unjust enrichment under Texas common law.
I.

NATURE OF THE ACTION
1.

HomeAway is an award-winning market leader in the provision of online

marketplaces for vacation and short term rental properties. Soon after its inception in 2005,
HomeAway began using and has continued to use a unique and arbitrary logo of a birdhouse
(“Birdhouse Mark”) in connection with its online rental services. HomeAway has also engaged in
other distinctive bird- and birdhouse-themed promotional activities that have only increased the
strength and recognition of the Birdhouse Mark among property owners and managers
(collectively “Owners”), travelers, renters, other consumers (collectively “Travelers”) and the
general public.

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2.

HomeAway’s online marketplace serves Owners and Travelers in the United States

and around the world through dozens of branded websites in multiple languages. HomeAway’s
Birdhouse Mark is a global unifying brand for its websites and businesses, both in the United
States and around the world. Whether an Owner or a Traveler accesses, for example, Abritel.fr in
France, AlugueTemporada.com.br in Brazil, or HomeAway.com in the United States, the
appearance of the Birdhouse Mark confirms that a single source, HomeAway, stands behind the
services.
3.

Airbnb, Inc. (“Airbnb” or “Defendant”), a more recent entrant into the highly

competitive market for online travel and short term rental services, markets online travel rental
services and has described its services as “the easiest way for people to monetize their extra
space.” Like HomeAway, Defendant targets travelers around the world, but, does so through a
single Internet website – airbnb.com.
4.

Defendant is well aware of HomeAway and its use and promotion of the Birdhouse

Mark. In 2011, Defendant’s CEO visited HomeAway’s headquarters and physically stood inside
the two story replica of a birdhouse that dominates HomeAway’s headquarters.
5.

Despite its knowledge of HomeAway’s rights, on December 16, 2013, Defendant

launched a birdhouse-themed national advertising campaign to drive bookings to its airbnb.com
rental engine, including, among a plethora of birdhouse images and sounds, a birdhouse logo
confusingly similar to HomeAway’s Birdhouse Mark (“Birdhouse Promotion”). Defendant’s
Birdhouse Promotion even goes so far as to present three-dimensional birdhouses in the style of
vacation homes, historically HomeAway’s primary market segment, a market segment that
Defendant ignored until recently. Despite a myriad of non-infringing trademarks and promotional
themes available to it, Defendant deliberately copied HomeAway’s global brand to promote its
own business, to obtain unfair commercial advantage while it is attempting to expand into the
vacation home rental segment, and to damage the brand that HomeAway has grown and protected
for nearly eight years. Defendant’s Birdhouse Promotion is a blatant and intentional infringement

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and dilution of HomeAway’s Birdhouse Mark causing incalculable damage to HomeAway’s
goodwill.
6.

Defendant chose a birdhouse logo and a birdhouse-centered theme for its first

national marketing campaign with full knowledge of HomeAway’s ownership and extensive use of
the Birdhouse Mark and with the intent to trade off of the goodwill that HomeAway has developed
in its Birdhouse Mark through years of extensive use and promotion. Although Airbnb’s use of the
Birdhouse Promotion for property rental services infringes the Birdhouse Mark and damages
HomeAway regardless of the specific characteristics of Airbnb’s properties, Airbnb’s recent
attempts to expand its business into traditional vacation markets only exacerbates the already
substantial harm to HomeAway.
7.

On information and belief, Defendant, through mimicry and deception is attempting

to increase its business overall and in the traditional vacation rental market segment, expanding
from its usual property offerings in major cities while at the same time destroying the
distinctiveness of HomeAway’s Birdhouse Mark in the online travel industry.

Defendant’s

copying of HomeAway’s distinctive mark is likely to confuse consumers and other members of the
relevant public, initially and/or at the point of sale, as to the source or sponsorship of Defendant’s
product or service, or to lead consumers to believe incorrectly that Defendant is authorized by,
sponsored by, or affiliated with HomeAway, or that airbnb.com is yet the latest addition to
HomeAway’s dozens of birdhouse-branded websites serving clients in the United States and
around the world. In addition, Defendant’s Birdhouse Promotion, including the use of a logo very
similar to the Birdhouse Mark, has diluted and is likely to continue to dilute the distinctiveness of
HomeAway’s Birdhouse Mark, if not enjoined.
II.

JURISDICTION AND VENUE
8.

This Court has original subject matter jurisdiction over the federal law claims

pursuant to Section 39 of the Lanham Act, 15 U.S.C. § 1121, pursuant to the provisions of
28 U.S.C. §§ 1331 and 1338. This Court has jurisdiction over the state law claims in this action
pursuant to 28 U.S.C. § 1367(a) because the state law claims are so related to the federal claims
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that they form part of the same case or controversy and derive from a common nucleus of
operative facts.
9.

The Court has personal jurisdiction over Defendant. Defendant has engaged in a

continuous and systemic course of doing business in Texas, and a substantial portion of the
activities complained of herein have occurred and continue to occur in this District.

On

information and belief, Defendant lists and rents rental properties located in Austin, Texas, in this
judicial district, and elsewhere in the State of Texas.
10.

Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 because

defendant has committed and continues to commit tortious acts in this judicial district, and a
substantial part of the events or omissions giving rise to the claims asserted herein occurred within
this judicial district.
III.

THE PARTIES
11.

Plaintiff HomeAway, Inc., is a corporation duly organized and existing under the

laws of the State of Delaware with a principal place of business located at 1011 W. Fifth Street,
Austin, Texas. Plaintiff HomeAway.com, Inc. is a corporation organized under the laws of the
State of Delaware and a wholly owned subsidiary of Plaintiff HomeAway, Inc., with its principal
place of business located at 1011 W. Fifth Street, Austin, Texas.
12.

HomeAway is informed and believes that Defendant Airbnb, Inc. is a corporation

organized and existing under the laws of the State of Delaware, with its principal place of business
at 888 Brannan Street, 4th Floor, San Francisco, California 94103. Like HomeAway, Defendant
facilitates lodging for travelers through an online website.
IV.

HOMEAWAY AND ITS BUSINESS
13. Founded in 2005, HomeAway, Inc. operates an online vacation rental property

marketplace that enables property owners and managers to market properties available for rental to
Travelers who rely on HomeAway’s websites to search for and find available properties. Travelers
use the network of websites to search for vacation rentals that meet their desired criteria, including
location, size and price. Travelers that find properties that meet their requirements through
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HomeAway’s marketplace are able to contact Owners directly by phone or through form-based
communication tools on HomeAway’s websites. See Declaration of Carl Shepherd (“Decl.”) at ¶1.
14.

HomeAway initially integrated several websites into a single online marketplace,

and, in June 2006, HomeAway launched HomeAway.com, a vacation rental website with about
60,000 listings.

Today, HomeAway operates the world’s largest online marketplace in the

vacation rental industry, comprising a number of websites, including the following:
HomeAway.com, VRBO.com®, VacationRentals.com, OwnersDirect.co.uk, HomeAway.de,
Abritel.fr, Homelidays.com, CyberRentals.com, GreatRentals.com, BedandBreakfast.com, FeWoDirekt.de (Germany), HomeAway.co.uk (UK) , HomeAway.es and TopRural.com (Spain),
AlugueTemporada.com.br (Brazil), HomeAway.com.au (Australia), HomeAway.se (Sweden),
HomeAway.pt

(Portugal),

HomeAway.ca

(Canada),

HomeAway.mx

HomeAway.com.co (Colombia), HomeAway.com.ar (Argentina),

(Mexico),

HomeAway.at (Austria),

HomeAway.dk (Denmark), HomeAway.no (Norway) and HomeAway.it (Italy).

Through

HomeAway’s online marketplace, Travelers can search and/or book fully furnished, privately
owned residential properties, including homes, condominiums, villas, cabins, houseboats, tee-pees,
tree houses, and other unique properties, that Owners rent to the public on a nightly, weekly or
monthly basis. HomeAway’s online marketplace brings together millions of Travelers seeking
vacation rentals online with hundreds of thousands of Owners of vacation rental properties located
in all 50 of the United States and 171 countries around the world. See Decl. at ¶1.
15.

HomeAway’s online marketplace serves two major constituents: Owners on one

side and Travelers on the other. Owners for some properties pay listing fees, which are typically
annual subscriptions, to provide detailed listings of their properties on HomeAway’s websites and
reach a broad audience of Travelers seeking vacation rentals. Additionally, certain Owners may
choose to rent their properties on a commission basis via a HomeAway product launched in
September 2013. Travelers visit HomeAway’s marketplace at no charge and are able to search and
compare HomeAway’s large and detailed inventory of listings to find vacation rentals meeting

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their requirements. Travelers transact directly with Owners to arrange their stay. Travelers do not
pay a fee to HomeAway for the services it provides. See Decl. at ¶ 1-2.
16.
and

HomeAway operates six (6) online rental websites directed principally to Owners

Travelers

in

the

United

States,

including

HomeAway.com,

VRBO.com®,

VacationRentals.com, BedandBreakfast.com, Cyberrentals.com and GreatRentals.com.

The

combination of Homeaway.com, VRBO.com and VacationRentals.com alone offer one of the
largest vacation rental distribution networks in the world.
17.

HomeAway derives its primary revenue from Owners who advertise on its

websites, but the ability to attract Travelers to its sites with a robust portfolio of listed properties is
a critical part of its ability to generate revenue. Using a well-established, internet based technique
called the network effect, Travelers who visit HomeAway’s website are attracted by the wide
selection, and the ability to reach these Travelers attracts more Owners to list which in turn
provides more and better rental options to attract more Travelers.

HomeAway also provides 24

hour/7 day customer service, an online community support for Owners, as well as property
software solutions for property managers and innkeepers. See Decl. at ¶2.
18.

Since its inception in 2005, HomeAway has experienced rapid growth and financial

success. See Decl. at ¶3.
19.

HomeAway’s operations expanded from 87 employees on December 31, 2005, to

worldwide total of 1,461 employees as of September 30, 2013. See Decl. at ¶3.
20.

From 2006 to September 30, 2013, the number of listings on HomeAway’s network

of websites grew from a single site with 60,000 listings to several sites with an aggregate of
773,000 paid listings. HomeAway’s revenues have grown each year since 2008. In 2012, total
revenue increased by over 20% from the prior year and exceeded $280 million. See Decl. at ¶3.
21.

HomeAway and its online marketplace have received numerous accolades and

awards, including Travel Weekly Magellan Awards Gold Winner (2013) (one of the best vacation
rental services in the hospitality industry); Ernst & Young Entrepreneur of the Year (2012); Travel
+ Leisure Best Apps and Websites for Travelers (August 2012); Leisure and Tourism – Customer
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Service Department of the Year (February 2012); Deloitte Technology Fast 500 (2011)
(HomeAway recognized as one of the fastest growing companies in North America); Kiplinger’s
Personal Finance Best of Everything 2010 (HomeAway named best vacation rental site).
22.

HomeAway engages in charitable giving through its internal Corporate Giving

Committee which donates volunteers and funds to organizations as voted on by HomeAway
employees.
23.

HomeAway, Inc. is public company with shares traded on the Nasdaq OMX

Exchange (Ticker: AWAY).
24.

The market to provide online listing, searching and marketing services for the

vacation rental industry is highly competitive and fragmented with few barriers to entry.
HomeAway’s trademarks, including the Birdhouse Mark, are essential assets of its business which
gives it a competitive advantage in the online market for vacation rental listings. See Decl. ¶¶7-11.
V.

HOMEAWAY’S “BIRDHOUSE MARK”
25.

Since as early as July 2006, HomeAway has used the bird house design shown

below as a service mark in connection with its provision of a variety of vacation rental and travel
related services (the “Birdhouse Mark”). See Decl. at ¶6.

26.

The Birdhouse Mark is inherently distinctive as applied to the subject services and

serves to identify and indicate the source of HomeAway’s services to the consuming public. See
Decl. ¶6-11; Exhibits 1-7.
27.

This mark has been used and continues to be used prominently on several websites

in the HomeAway global marketplace, including HomeAway.com website. Other websites that
utilize the Birdhouse Mark include, HomeAway.de (Germany), FeWo-Direkt.de (Germany),
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HomeAway.co.uk (UK), Arbritel.fr (France), HomeAway.es (Spain), AlugueTemporada.com.br
(Brazil), HomeAway.com.au (Australia), HomeAway.se (Sweden), HomeAway.pt (Portugal),
HomeAway.ca

(Canada),

HomeAway.com.ar

HomeAway.mx

(Argentina),

(Mexico),

HomeAway.at

HomeAway.no (Norway) and HomeAway.it (Italy).

HomeAway.com.co

(Austria),

HomeAway.dk

(Colombia),
(Denmark),

Because it chooses to publish some of its

marketplaces under names other than “HomeAway,” HomeAway adopted and deployed the
Birdhouse Mark as a global unifying brand both in the United States and in its operations around
the world. When HomeAway includes in its marketplace websites with regionally appropriate
domain name, such as AlugeTemporada.com.br in Brazil or Abritel.fr in France or FeWoDirekt.de in Germany, the Birdhouse Mark is used to signify that a HomeAway service is offered,
uniting the Brand around the world. See Decl. at ¶7. Examples of HomeAway’s use of the
Birdhouse Mark on its websites are shown below.
28.

HomeAway.com

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29.

AlugueTemporada.com.br

30.

Abritel.fr

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31.

Fewo-Direkt.de

See Decl. at ¶7, Exhibits 1 – 5.
32.

HomeAway has increased the strength and significance of its Birdhouse Mark

through its promotional activities. HomeAway has featured the Birdhouse Mark in television
commercials, including two Television commercials aired during the Super Bowl in 2010 and
2011. Stills from those commercials are included below. See Decl. at ¶8, Exhibit 6.

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33.

The Birdhouse Mark is used in a wide variety marketing and advertising including

print ads, the HomeAway websites, social media sites, conferences, and other promotional
material. See Decl. ¶8, Exhibit 7. Examples are included below.

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34.

The Birdhouse Mark is prominently displayed on the exterior of HomeAway’s

headquarters building, and the interior of its headquarters houses a two-story, three-dimensional
birdhouse, enclosed by glass windows that face a major intersection in downtown Austin to
further promote Birdhouse brand that has become synonymous with HomeAway’s business and
its Austin roots. See Decl. ¶9, Exhibit 8.

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35.

Because the Birdhouse Mark is the signature, unifying brand of HomeAway, the

company invites all newly-hired employees to paint and decorate a small, wooden birdhouse of
their own to display at HomeAway’s worldwide headquarters in Austin, Texas. More than 120
employee-decorated birdhouses are on display in glass cases on the first and fourth floors of
HomeAway’s headquarters and HomeAway has posted photos of the collection on the
“Blueprints” page of its HomeAway.com website. See Decl. at ¶16.

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See Exhibit 17.
36.

HomeAway has spent millions of dollars advertising and promoting its Birdhouse

Mark that has been used as the primary identifying symbol of the business for nearly 8 years.

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HomeAway has raised more than $450 million in private financing to build its business and its
brand, and that brand is directly tied to the Birdhouse Mark. See Decl. at ¶¶7-9, 11.
37.

As a result of these efforts and the success of HomeAway’s business, the Birdhouse

Mark is distinctive and famous, and has come to identify the product and services of HomeAway
in the minds of Owners, Travelers, consumers, and of other individuals working in the vacation
rental industry, and the general consuming public. The results of HomeAway’s investment is
tangible and substantial: “HomeAway” and the Birdhouse Mark as well as HomeAway’s excellent
service have attracted hundreds of thousands of Owners and Travelers, and have generated
enormous goodwill as the world’s largest and most complete online marketplace of vacation and
travel rental properties. Through its efforts and expenditures, HomeAway has established itself in
the marketplace among its Owners and Travelers as a reliable and credible source for searching,
viewing, and locating vacation rental properties. See Decl. ¶¶7-11.
38.

As a result of HomeAway’s long use and promotion of the Birdhouse Mark,

HomeAway has acquired extremely valuable rights in the Birdhouse Mark as an indicator of
source of its services. See Decl. ¶¶7, 9, 11.
39.

HomeAway has taken many steps to protect its valuable Birdhouse Mark.

HomeAway’s wholly-owned U.S. subsidiary, HomeAway.com, Inc. owns several trademark
registrations for marks containing or comprising a stylized bird house and uses and licenses such
marks for use in HomeAway’s business. See Decl. at ¶10.

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MARK

REGISTRATION
NO. AND DATE
3,596,173

Goods/Services
Providing temporary lodging information
via the Internet

March 24, 2009

3996179
July 19, 2011

4082610
January 10,
2012

4082611
January 10,
2012

Vacation real estate listing services;
Providing vacation real estate listing
services via a global computer network;
Providing
vacation
home
rental
information via the internet.
Providing online newsletters featuring
lodging, travel information, featured
destinations,
reviews,
and
other
information related to lodging and travel
providers; conducting workshops and
seminars in the field of vacation property
rental.
Computer services for providing a real
estate search platform configured to allow
users to request and receive content from a
website; Application Service Provider
(ASP) featuring software in the field of
rentals and sales related to real estate; ASP
featuring software for use by real estate
and travel based companies to advertise
specials, make reservations, offer coupons,
specials, discounts, and directions and for
use in interactive customer services related
to the rental or purchase of real estate;
Providing information services in the field
of ASP featuring software for real estate
rental or sales; ASP featuring software for
use by companies and individuals to
advertise specials, make reservations, offer
coupons, offer specials, offer discounts,
sell real estate, provide directions, and for
use in accessing interactive customer
services of others; Design and development
of
visualization
technologies
for
advertisement of real-estate and business of
others; Application service provider,
namely, hosting, managing, developing,
analyzing, and maintaining applications,
software, and web sites, of others in the
fields of advertising and marketing;
Computer service, namely, acting as an
application service provider in the field of

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 16

4082609
January 10,
2012

4082608
January 10,
2012

knowledge management to host computer
application software for creating searchable
databases of information and data;
Computer service, namely, acting as an
application service provider in the field of
knowledge management to host computer
application software for searching and
retrieving information from databases and
computer networks; Computer services in
the nature of customized web pages
featuring user-defined information and
personal profiles. Computer services,
namely, providing search engines for
obtaining data on a global computer
network; Providing a website that gives
users the ability to create customized web
pages featuring user-defined information.
Providing a website for the arrangement
and booking of eco-travel and ecotours;
Providing a web site and web site links to
geographic information, map images, and
trip routing; Providing a web site featuring
travel information and commentary;
Providing an on-line computer database in
the field of travel information services;
Providing an on-line searchable computer
database featuring information on travel;
Providing
information,
news
and
commentary in the field of travel;
Providing links to web sites of others
featuring travel; Providing reviews of
travel service providers; Travel guide and
travel information services.
Providing an interactive website that
promotes real estate properties through
offering prospective tenants and buyers
photographs, property descriptions, text,
price, location, maps and other information
to be considered by a prospective tenant or
buyer in making a rental or purchase
decision; Providing an interactive website
for advertising specials, offering of
coupons, rebates, discounts and special
offerings promoting the services of others,
and responding to customer inquiries for
others in the field of real estate; On-line
advertising and marketing services related
to the rental or sale of real property; Real
estate marketing services in the field of
temporary accommodations.

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40.

Attached as Exhibits 9 – 14 are true and correct copies of registrations for

Trademarks owned by HomeAway from the Trademark Electronic Search System (TESS)
database of the United States Patent and Trademark Office. See Decl. at ¶10.
VI.

DEFENDANT’S BUSINESS
41.

After HomeAway had established itself and invested substantial amounts of money

and time promoting its services through the Birdhouse Mark, Defendant launched in 2008 an
online travel rental website. Defendant’s website allows Travelers to rent accommodations in
private residences in the United States and worldwide. Defendant provides guidance on rates,
processes payments and receives a transaction fee for bookings. On information and belief,
Defendant receives commissions primarily from the Traveler, but also a charges a small fee to the
advertiser earning a total commission of between 12-15% on each transaction. See Decl. at ¶11,
12.
42.

Defendant and HomeAway target and provide services to an overlapping class of

Travelers for their respective services, through overlapping channels of trade. On information and
belief, Defendant, has long targeted the tenants in landlord owned apartments in major cities (such
as New York, Paris, San Francisco, Berlin, etc.) as its major supplier of listings. However,
Defendant has recently increased its efforts to attract business in traditional vacation rental markets
(such as the Gulf Coast, Rocky Mountains, Provence and Tuscany), in which HomeAway has long
been well-established. See Decl. ¶ 5, 16, 18.
VII.

DEFENDANT’S INFRINGING ACTIVITIES
43.

Defendant is well aware of HomeAway and its Birdhouse Mark. In 2001, the CEO

of Defendant visited the headquarters of HomeAway.

He was given a personal tour of

HomeAway’s headquarters and physically stood inside the large replica of the Birdhouse Mark
that dominates the upper level of HomeAway’s Austin, Texas headquarters. See Decl. at ¶13,
Exhibit 8.
44.

Despite this knowledge, Defendant, on December 16, 2013, launched what it is

calling its first ever major multimedia national advertising campaign dubbed “Home to You”
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replete with images of birdhouses and a birdhouse logo (referred to herein as the Birdhouse
Promotion). Defendant’s “Birdhouse Promotion” is viewable online at the Defendant’s website
(www.birdbnb.com), which links directly to Defendant’s main rental website. See Decl. at ¶14.
Despite Defendant’s indisputable knowledge of HomeAway’s prior rights in its signature brand,
the Birdhouse Mark, Defendant’s Birdhouse Promotion displays a birdhouse logo substantially
similar to the Birdhouse Mark, placed adjacent to the slogan “Home to You,” making
misassociation with HomeAway even more likely. See Decl. at ¶14-15.

See Exhibit 15.
45.

The birdhouse logo used in Defendant’s Birdhouse Promotion comprises

essentially the same features as the Birdhouse Mark, and is confusingly similar in overall
commercial impression:

Airbnb Birdhouse

HomeAway Birdhouse Mark

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46.

Moreover, the Birdhouse Promotion viewable on Defendant’s birdbnb.com site

contains a nearly 5 minute video featuring 50 different birdhouses, further increasing the likely
misassociation between HomeAway and Defendant and their respective services.

47.

Underneath the embedded video pane are pictures of the 50 birdhouses featured in

the video. A user can roll over the birdhouses, hear an audio clip of birdsong, and link to the
corresponding rental property listed for rent on Defendant’s website. Examples are included
below. See Decl. at ¶16.

See Exhibit 15.

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48.

As demonstrated below, the birdhouses featured repeatedly and prominently in

Defendant’s Birdhouse Promotion are similar to the birdhouses HomeAway highlights at its
headquarters and on its Blueprints website to promote its business to the relevant consuming
public. See Decl. at ¶16.

See Exhibit 17.
49. On information and belief, HomeAway’s first use and registration of the Birdhouse
Mark long predates Defendant’s use of the birdhouse logo and the Birdhouse Promotion.
Defendant had constructive and actual notice of HomeAway’s trademark rights in the Birdhouse
Mark for identical or closely related services. See Decl. at ¶¶ 13-14.
50.

On information and belief, Defendant’s simulation of HomeAway’s signature

Birdhouse Mark for substantially identical online rental listing services is deliberate and calculated
to damage HomeAway, its Birdhouse Mark, its business and its goodwill.
51.

See Decl. ¶22.

Defendant chose to feature a birdhouse logo and use birdhouses as the overarching

and dominant theme for the Birdhouse Promotion with full knowledge of HomeAway’s use of the
Birdhouse Mark and with the unlawful intent to dilute HomeAway’s mark, obtain consumer
recognition and interest based upon the success and reputation of HomeAway, and to confuse
consumers. See Decl. ¶22.
52.

In addition to its own site, Defendant’s Birdhouse Promotion featuring the

infringing birdhouse logo and theme are linked and displayed on many other Internet websites that
PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 21

are fully accessible in the United States twenty-four hours a day, seven days a week. See Decl.
¶14.

See Exhibit 16.
53.

Defendant is not affiliated with or sponsored by HomeAway and has not been

authorized by HomeAway to use the Birdhouse Mark or any confusingly similar marks, or the
Birdhouse Promotion.
54.

Defendant is using a logo confusingly similar to the Birdhouse Mark and the

Birdhouse Promotion in commerce, in connection with substantially identical or related services,
provided to overlapping classes of customers through overlapping channels of trade. Defendant’s
use of a logo confusingly similar to the Birdhouse Mark and the Birdhouse Promotion began long
after HomeAway had established rights in the Birdhouse Mark, and after such mark had become
famous. See Decl. ¶¶ 6-9, 14-15, 18; Exhibit 16.
VIII.

EFFECT OF DEFENDANT’S ACTIVITIES
55.

Defendant’s Birdhouse Promotion and unauthorized use of a logo confusingly

similar to the Birdhouse Mark is likely to cause confusion, to cause mistake, and/or to deceive
customers and potential customers of the parties at least as to some affiliation, connection or

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 22

association of Defendant with HomeAway, or as to the origin, sponsorship, or approval of
Defendant’s services by HomeAway. See Decl. ¶¶15-21.
56.

There has been widespread media coverage of Defendant’s Birdhouse Promotion to

date. Attached as Exhibit 20 is a list of some of the mentions that have appeared in the media to
date regarding the promotion. See Decl. ¶17; Exhibit 20.
57.

Defendant’s unauthorized use of the Birdhouse Mark and the Birdhouse Promotion

falsely designates the origin of its services. The likelihood of confusion and dilution of the
Birdhouse Mark is obvious. See Decl. ¶¶ 17-21.
58.

For example, one commentator at the “AdverBlog” wrote “I can’t help but wonder

if it’s just a coincidence that the No. 1 competitor to [Defendant] (HomeAway) has as bird house
as a logo.”

The message was followed by an emoticon smiley face and a picture of the

HomeAway Logo.

Consumers have also noted Airbnb’s copying. In a message left on

Defendant’s birdbrb.com website displaying the Birdhouse Promotion, a user writes “This is so
“HOMEAWAY . . . .” See Decl. at ¶17, Exhibits 18 – 19.

See Exhibit 19.
59.

Defendant’s use of the birdhouse logo and Birdhouse Promotion is likely to lead

consumers seeking HomeAway online to be at least initially interested, attracted, or distracted by
PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 23

Defendant’s birdbnb.com and Defendant’s travel rental site linked to it, to HomeAway’s detriment
and damage. Defendant’s unauthorized use of a logo confusingly similar to the Birdhouse Mark
enables Defendant to trade on and receive the benefit of goodwill built up at great labor and
expense by HomeAway over many years, and to gain acceptance for their services not solely on
their own merits, but on the reputation and goodwill of HomeAway, its Birdhouse Mark, and its
products and services. The Birdhouse Promotion may lead customers to improperly assume that
the Bidbnb.com website and the Airbnb services related to it are somehow another extension of the
many websites operated by HomeAway. See Decl. ¶¶ 15-21
60.

Defendant’s Birdhouse Promotion and unauthorized use of a logo confusingly

similar to the Birdhouse Mark is likely to dilute the distinctive quality of the distinctive Birdhouse
Mark. See Decl. ¶ 21.
61.

Defendant’s Birdhouse Promotion and unauthorized use of a logo confusingly

similar to the Birdhouse Mark unjustly enriches Defendant at HomeAway’s expense. Defendant
has been and continues to be unjustly enriched by obtaining a benefit from HomeAway by taking
undue advantage of HomeAway and its goodwill.

Specifically, Defendant has taken undue

advantage of HomeAway by trading on and profiting from the goodwill in the Birdhouse Mark
developed and owned by HomeAway, resulting in Defendant wrongfully obtaining a monetary and
reputational benefit for its own business and services. See Decl. ¶¶ 20-22.
62.

Defendant’s Birdhouse Promotion and unauthorized use of a logo confusingly

similar to the Birdhouse Mark removes from HomeAway the ability to control the nature and
quality of products and services provided under the Birdhouse Mark, and places the valuable
reputation and goodwill of HomeAway in the hands of Defendant, over whom HomeAway has no
control. See Decl. ¶ 21-22.
63.

Unless these acts of Defendant are restrained by this Court, they will continue, and

they will continue to cause irreparable injury to HomeAway and to the public for which there is no
adequate remedy at law.

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 24

FIRST CAUSE OF ACTION
FEDERAL TRADEMARK INFRINGEMENT
64.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
65.

The acts of Defendant complained of herein constitute infringement of

HomeAway’s federally registered Birdhouse Mark in violation of 15 U.S.C. § 1114(1).
66.

Defendant’s acts complained of herein have been deliberate, willful, intentional, or

in bad faith, with full knowledge and conscious disregard of HomeAway’s rights in the Birdhouse
Mark, and with intent to cause confusion and to trade on HomeAway’s vast goodwill in the
Birdhouse Mark.

In view of the egregious nature of Defendant’s infringement, this is an

exceptional case within the meaning of 15 U.S.C. § 1117(a).
SECOND CAUSE OF ACTION
FEDERAL UNFAIR COMPETITION
67.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
68.

The acts of Defendant complained of herein constitute trademark infringement,

false designation of origin and unfair competition in violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a).
69.

Defendant’s acts of trademark infringement, false designations of origin, and unfair

competition have been willful and in bad faith, making this an exception case under 15 U.S.C. §
1117(a).
THIRD CAUSE OF ACTION
FEDERAL TRADEMARK DILUTION
70.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
71.

HomeAway’s Birdhouse Mark became famous prior to the acts of Defendant

complained of herein.
72.

The acts of Defendant’s complained of herein constitute dilution of HomeAway’s

famous Birdhouse Mark in violation of 15 U.S.C. § 1125(c).
PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 25

73.

Defendant’s violations of 15 U.S.C. § 1125(c) have been willful and that

HomeAway is entitled to damages therefor.
74.

HomeAway has been and will continue to be irreparably harmed and damaged by

Defendant’s conduct and HomeAway lacks an adequate remedy at law to compensate for this harm
and damage.
FOURTH CAUSE OF ACTION
VIOLATION OF TEXAS ANTI-DILUTION LAW
75.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
76.

Defendant’s conduct described above is likely to injure HomeAway business and/or

dilute the distinctive quality of HomeAway’s federally registered mark in violation of Tex. Bus. &
Com. Code § 16.29.
77.

Defendant’s violations of the Texas Anti-Dilution Statute have been willful.

78.

HomeAway has been and will continue to be irreparably harmed and damaged by

Defendant’s conduct and HomeAway lacks an adequate remedy at law to compensate for this harm
and damage.
FIFTH CAUSE OF ACTION
COMMON LAW UNFAIR COMPETITION
79.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
80.

Defendants acts described above trade upon the goodwill established by

HomeAway in the Birdhouse Mark and constitute unfair competition under the common law of the
State of Texas.
81.

Defendant’s acts of unfair competition have been willful.

82.

Defendant has been unjustly enriched by its acts of unfair competition.

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 26

83.

HomeAway has been and will continue to be irreparably harmed and damaged by

Defendant’s conduct and HomeAway lacks an adequate remedy at law to compensate for this harm
and damage.
SIXTH CAUSE OF ACTION
COMMON LAW TRADEMARK INFRINGEMENT
84.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully rewritten herein.
85.

The acts of Defendant complained of herein constitute trademark infringement in

violation of the common law of the State of Texas.
86.

Defendant’s acts of trademark infringement have been willful.

87.

HomeAway has been and will continue to be irreparably harmed and damaged by

Defendant’s conduct and HomeAway lacks an adequate remedy at law to compensate for this harm
and damage.
SEVENTH CAUSE OF ACTION
UNJUST ENRICHMENT
88.

HomeAway repeats and re-alleges the allegations contained in the preceding

paragraphs of this Complaint as though the same were fully written herein.
89.

The acts of Defendant complained of herein constitute unjust enrichment of

Defendant at the expense of HomeAway.

PRAYER FOR RELIEF
WHEREFORE, HomeAway prays for entry of an order and judgment that:
1.

Defendant has infringed the Birdhouse Mark in violation of 15 U.S.C. § 1114(1).

2.

Defendant has engaged in trademark infringement, false designation of origin and

unfair competition in violation of 15 U.S.C. 1125(a).
3.

Defendant is in violation of Tex. Bus. & Com. Code § 16.29.

4.

Defendant has been unjustly enriched.

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 27

5.

Defendant and

its officers,

agents, servants, employees, owners and

representatives, and all other persons, firms or corporations in active concert or participation
with them, be preliminarily and permanently enjoined and restrained from infringing the
Birdhouse Mark by, among other things:
i.

Publishing or making available to the public in any form or media the

“Home to You” birdhouse advertising/promotion currently hosted at www.birdbnb.com
or any other form of this advertising/promotion or variation thereon;
ii.

using the Birdhouse Mark or any other reproduction or colorable imitation

in a manner that is likely to cause confusion as to whether Defendant’s services originate
from HomeAway, or as to an association, affiliation or connection between Defendant
and HomeAway, including promotion of Defendant’s services using actual birdhouses or
birdhouse themes;
iii.

using the Birdhouse Mark and any other reproduction or colorable

imitation in any manner so as to dilute the distinctive quality of such mark in connection
with products and services not originating with HomeAway or authorized by
HomeAway, from otherwise competing unfairly with HomeAway in any manner,
including promotion of Defendant’s services using actual birdhouses or birdhouse
themes.
6.

Defendant, pursuant to 15 U.S.C. § 1116(a), shall file with this Court and serve

upon HomeAway within thirty (30) days after entry of the injunction, a report in writing under
oath setting forth in detail the manner and form in which Defendant has complied with the
injunction;
7.

Defendant, pursuant to 15 U.S.C. § 1118, shall deliver up for destruction, or show

proof of said destruction or sufficient modification to eliminate all products, displays,
advertisements, commercials, Internet postings and advertisements, promotional items or other
matter in the possession, custody or control of Defendant bearing or embodying the Birdhouse
Mark or otherwise infringing or diluting the Birdhouse Mark;
PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 28

8.

HomeAway be awarded Defendant’s profits derived from Defendant’s infringing

acts pursuant to 15 U.S.C. § 1117;
9.

HomeAway be awarded damages to compensate HomeAway for Defendant’s

infringing and willful acts of dilution pursuant and 15 U.S.C. 1125(c)(5), 15 U.S.C. § 1117,
increased up to three times as provided by applicable law;
10.

HomeAway be awarded punitive damages;

11.

HomeAway be awarded its reasonable attorneys’ fees pursuant to 15 U.S.C.

§ 1117; and,
12.

HomeAway recover such other relief as the Court deems just and proper.
DEMAND FOR JURY TRIAL

Plaintiff hereby requests a trial by jury in accordance with Federal Rule of Civil
Procedure 38(b).

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 29

Dated: December 23, 2013

Respectfully submitted,

/s/ Michael Simons
Michael Simons
[e-mail]
Texas Bar No. 24008042
Marwan Elrakabawy
[e-mail]
Texas Bar No. 24055447
AKIN GUMP STRAUSS HAUER & FELD LLP
300 West 6th Street, Suite 2100
Austin, Texas 78701
Telephone: [phone]
Facsimile: 512.499.6290
Karol A. Kepchar (pro hac vice pending)
[e-mail]
D.C. Bar No. 491701
AKIN GUMP STRAUSS HAUER & FELD LLP
1333 New Hampshire Avenue, N.W.
Washington, D.C. 20036-1564
Telephone: [phone]
Facsimile: 202.887.4288

ATTORNEYS FOR PLAINTIFFS

PLAINTIFF’S VERIFIED COMPLAINT AND REQUEST FOR PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF PAGE 30