WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ebay Inc. v. Ebay4sex.com and Tony Caranci

Case No. D2000-1632

 

1. The Parties

The Complainant is Ebay Inc, a Delaware corporation with its principal place of business in San Jose, California, USA. The Complainant is represented by Ms. Debbi R. Stern, Cooley Godward, Attorneys, Palo Alto, California, USA.

The Respondent is Tony Caranci of 901 Yonge Street, Toronto, Ontario, Canada. The Respondent has not filed a Response and is not represented. The Complaint referred also to a Respondent "ebay4sex.com". Mr. Caranci is shown as the sole registrant, so the Panel considers him the true Respondent.

 

2. The Domain Names and Registrar

The domain names at issue are "ebay4sex.com" and "ebaysexauction.com". The domain names are registered with Network Solutions Inc of Herndon, Virginia, USA (NSI). The domain names were registered on April 17, 2000.

 

3. Procedural History

The Complaint was received on November 23, 2000, (electronic version) and November 27, 2000, (hard copy) by WIPO Arbitration and Mediation Center ("WIPO Center").

On November 29, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI Registrar, requesting it to:

Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain names at issue are registered with NSI.

Confirm that the company identified as the Respondent is the current registrant of the domain names.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant eBay of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.

Indicate the current status of the domain names.

On December 5, 2000, NSI advised the Center:

NSI had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the disputed domain names.

Tony Caranci at the address above is shown as the "current registrant" of the disputed domain names.

Tony Caranci is also the administrative and billing contact.

NSIís 5.0 Service Agreement applies to the domain names.

The domain names registrations are in active status.

NSI has currently incorporated in its agreements, the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the Respondent is the "current registrant" of the domain names in question and that the domain names are in active status indicates the Respondent has not requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrarís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on December 7, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: It has duly paid the amount required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by December 22, 2000). The Respondent was advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. No Response was filed by the Respondent to which a Notification of Default was sent by WIPO Center on December 26, 2000.

On January 5, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 5, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 10, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. He received these on January 15, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by January 24, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainantís allegations were supported by statutory declarations, and numerous exhibits.

The Complainant owns a federal registration for the eBay mark, US Registration No. 2,218,732 issued on January 19, 1999, as well as numerous pending applications to register this mark in the United States for a wide variety of goods and services. The Complainant claims extensive communications right to the mark.

The Complainant owns numerous other US and foreign trademark registrations for the eBay mark, including registrations in the European community, New Zealand, Australia, Taiwan, Benelux, Germany, Iceland, Israel, Japan, China, Mexico, Norway, Peru, South Korea, Chile and Switzerland. It has also filed pending trademark applications for the eBay mark in various countries.

The Complainant provides its services in numerous countries around the world, including Canada, France, Australia, Germany, Japan and the United Kingdom, and its services are advertised in those markets. The eBay service is accessible from every country that has access to the Internet. eBay uses the mark EBAY CANADA to promote its services in Canada and operates those services at the domain name "ebaycanada.com". It also owns other domain names that consist of the eBay mark plus the name of a country.

The Complainant owns many domain names that consist of the eBay trademark plus the addition of a generic term. These domain names include, but are not limited to, the following:

"ebayaddress.com", "ebayautotrader.com", "ebay-magazine.com", "ebayenglish.com", "ebayautionnews.com", "bayresidence.com", "ebaypremium.com", "ebaywatch.com", "ebaystore.com", "ebayclassifieds.com", "ebayparts.com"

The Complainant coined and has been using the eBay trademark since at least as early as September 1995 (long before Respondents registered the domain names), in connection with its online person-to-person trading services. It has devoted substantial resources to advertise and promote its services and products under the eBay mark. In addition to its own advertising efforts, the Complainant has been the subject of unsolicited articles in the media, including national and international print, radio and television. These have highlighted the Complainantís successful efforts in online person-to-person trading. The Complainant operates the first, and is one of the most successful, person-to-person auction sites on the Internet.

As of November 16, 2000, there were over five million auction listings posted on the eBay website. Each day, over 450,000 new items are listed for sale, and over one million separate bids are placed on items in over 4,370 different categories of goods. In addition to its online trading services, the eBay website offers a variety of related services, including currency conversion tools, escrow services, charity auctions, theme-oriented pages and many others.

The Complainant has advertised and promoted the eBay mark across many sites on the Internet including AOL, Yahoo! and Lycos, and in print and in radio media, as well as via a presence at venues such as collector trade shows and on College campuses.

The Complainant operates an "adult" content section on its website and exercises control to limited inappropriate access. eBay requires each user of its adult section to agree to abide by the Terms of Use created for the "Mature Audiences" category of auctions. Among other things, the Terms of Use require each user to verify that he/she is at least 18 years of age.

The Respondent operates a website at the domain address "ebay4sex.com" which offers online auction services for sexually oriented goods. While the home page of the site states that the "site [is] designed and intended SOLELY for ADULTS," the site does not require each user to abide by specialized terms and conditions or to verify that he or she is of a suitable age.

On October 18, 2000, eBayís in-house legal department sent email correspondence to the Respondent informing him of eBayís rights and asking that he stop using the domain names. On October 31, 2000, eBay sent another email asking the Respondent to confirm in writing that he will stop using the "ebay4sex.com" domain name and agree that he could not sell the domain name or renew its registration. The Respondent failed to respond to any of eBayís communications. On October 30, 2000, the Respondent sent an unsolicited email message (a spam) to eBay users, announcing the "SPE Group" was introducing an online adult entertainment auction at the domain address "ebay4sex.com".

On November 6, 2000, eBay sent (by both Federal Express and fax) a copy of its second email correspondence to the Respondent. The Respondent failed to respond to eBayís correspondence. eBay sent all correspondence to the Registrantsí contact information listed on the NSI WHOIS database search pages. eBay received confirmation from Federal Express that its letter was delivered to the Respondent on November 9, 2000.

After the Respondent failed to respond to eBayís attempted communications, eBayís counsel sent a letter to the Respondent on November 14, 2000. This letter requested that the Respondent agree in writing by November 20, 2000 that he will:-

(a) Stop using the eBay mark in its domain name and website;

(b) Agree to transfer registration of the "ebay4sex.com" domain name to the Complainant; and

(c) Agree to not send spam messages to eBay users in the future.

Neither eBay nor eBayís counsel has received any response from the Respondent.

The Respondent has made no submissions.

 

5. Partiesí Contentions

The Complainant alleges in summary:

(a) The disputed domain names are confusingly similar to the Complainantís mark in that there is added to the mark generic terms, i.e., sex, auction and the number 4.

(b) The likelihood of confusion is increased because the Complainant uses its mark in combination with other generic words in some of its domain names.

(c) Other WIPO decisions have upheld complaints where registrants have similarly added generic terms to famous marks (e.g. D2000-0275 Caterpillar Inc. v Roam the Planet Ltd).

(d) The Respondent is competing with the Complainant in the online sale of "adult" items.

(e) The Respondent has no legitimate rights or interests in the domain names and is capitalizing on the Complainantís goodwill and reputation.

(f) The Complainantís extensive presence on the Internet before the date of registration indicates that registration of the names must have occurred in bad faith.

(g) The Respondentsí unsolicited message by email to eBay users (i.e. spamming) announcing the launch of the "ebay4sex.com" auction site demonstrates bad faith use. By compiling a list of the Complainantís users and then communicating with them, the Respondent is deliberately attracting users to its website away from the Complainantís.

(h) Bad faith use is further shown by the Respondentís failure to reply to cease and desist communications.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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."

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(a) That the domain names registered by the Respondent is identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain names;

(c) That the domain names have been registered and are being used by the

Respondent in bad faith.

The domain names "ebay4sex.com" and "ebaysexauction.com" in the judgment of the Panel, are confusingly similar to the mark. The addition of the generic words does not detract from the potential to confuse Internet users.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue. The Respondent has never suggested to the contrary. The Panel so decides. The Respondent has offered no evidence that he is known by the disputed domain names.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs related to the domain name;

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain names in "bad faith" for the reasons set out in the summary of the Complainantís submissions. There has clearly been a cynical attempt by the Respondent to lure users away from the Complainantís websites on to the Respondentís. Bad faith registration and use are clearly shown. The Respondent has ignored the "cease and desist" letters sent by the Complainant. He must have known of the fame of the Complainantís mark at the time of registration. This continued use is in bad faith.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain names have been registered and are being used by the Respondent in bad faith.

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Attempts to hi-jack names where a trademark has been registered and where the Respondent knew or must have known about the mark have met with little success.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names registered by the Respondent are confusingly similar to the trademarks to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) That the Respondentís domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "ebay4sex.com" and "ebaysexauction.com" be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: January 18, 2001