WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay, Inc vs. Progressive Life Awareness Network
Case No. D2001-0068
1. The Parties
The Complainant in this administrative proceeding is eBay, Inc. whose principal place of business is 2145 Hamilton Avenue, San Jose, California, USA. The Respondent in this case is Progressive Life Awareness Network whose contact information is P.O. Box 56057, Hayward, CA 94545, USA.
2. The Domain Name and Registrar
The domain name at issue is "gayebay.com" which is registered with Internet Domain Registrars in San Francisco, California, USA.
3. Procedural History
A Complaint was received by e-mail by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on January 13, 2001.
On January 22, 2001, a Verification Response was received from Internet Domain Registrars which served to: (1) confirm that Internet Domain Registrars was in receipt of the notification of the domain name dispute; (2) confirm that Internet Domain Registrars is the registrar of the domain name; (3) confirm that Progressive Life Awareness Network is the current Registrant of the domain name; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrarís WHOIS database for the Registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact.
On January 23, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The WIPO Center determined that the Complaint is in formal compliance with the requirements of the Uniform Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single member Panel were paid by the Complainant on time and in the required amount.
A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (FedEx, fax email), dated January 23, 2001. The documents sent by FedEx were returned to the WIPO Center on February 8, 2001. The fax transmission was attempted three times, but resulted in an error report each time. There was no response to the email Notification.
The Notification set a deadline of February 11, 2001, by which the Respondent could make a Response to the Complaint. Respondent did not submit a Response. A Notification of Respondent Default was sent by the WIPO Center to the Respondent and Complainant by email on February 19, 2001. An email was received from the Respondentís email address on February 19, 2001, indicating that the recipient could not open the attached document. No further information was requested and there was no additional text in the email. No further communication has been received by the WIPO Center or the Administrative Panel from the Respondent since the Notification of Default. This Panel, therefore, finds that Respondent received notice of the complaint and failed to submit a Response as required by Rule 5. As a result, Respondent is in default and, under Rule 14(a), this Panel shall "proceed to a decision on the complaint." Accordingly, this Panel shall proceed to a decision based on the allegations in the complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.
On March 2, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel naming Roderick Thompson as Panelist. Mr. Thompson submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on March 2, 2001, was March 16, 2001.
4. Factual Background
Complainant, eBay, Inc. ("eBay"), provided evidence that it has a USA. Trademark registration for the mark EBAY. Complainant additionally provided evidence that it owns numerous other USA and foreign trademark registrations for EBAY.
Complainant hosts a person-to-person trading site at the domain name "ebay.com". As of January 11, 2001, there were over five million auction listings posted on the eBay website, with approximately 450,000 new items listed for sale each day. EBay users can bid on goods 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, and theme-oriented pages.
Respondent is the current Registrant of the domain name "gayebay.com" which was registered on January 19, 2000.
5. Partiesí Contentions
Complainant contends that Respondent has registered a domain name that is confusingly similar to a trademark in which Complainant has rights. Complainant asserts that the domain name is confusingly similar to Complainantís mark because it incorporates the trademark in its entirety and merely adds the generic term "gay". Complainant claims that it owns a significant number of domain names that consist of the EBAY trademark plus the addition of a generic term. Specifically, eBay has registered the domain name "ebaymotors.comí and uses the name EBAY MOTORS to promote its online automobile trading services. Complainant adds that the likelihood of confusion is significant because Respondent offers competitive online trading services at its website.
Complainant contends that Respondent has no rights or legitimate interest in the domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of goods and services because Respondent was on notice as to Complainantís mark before registering the domain name and launching its service. Additionally, Complainant asserts that there is no logical relationship between the use of "ebay" and the nature of Respondentís business. Complainant claims that Respondent is not commonly known by a name or nickname related to "gayebay.com". Complainant has not licensed or otherwise permitted Respondent to use the trademark or register any domain name incorporating the mark.
Complainant contends that Respondent has registered and is using the domain name in bad faith. Again, Complainant asserts that the mark was famous before the disputed domain name was registered and thus Respondent had knowledge or should have had knowledge of the mark. Additionally, Complainant claims that Respondent has intentionally attempted to attract users to its competing site and thereby profits from the EBAY mark.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
A. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision: "A Panel shall 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." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a) to the Facts
Identical or Confusingly Similar to Trademark
Complainant is required under Paragraph 4(a)(i) of the Policy to prove that the domain name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has U.S. trademark rights to the name EBAY for multiple classes of goods, including online trading services. The domain name "gayebay.com" incorporates Complainantís mark in its entirety, but does add a generic term "gay" to the mark.
While in some circumstances the addition of generic terms may help to diminish the similarity between the domain name and the mark, in this case the addition of "gay" does not help to distinguish the domain name from Complainantís trademark. EBAY has registered and hosts sites using domain names that include the EBAY mark and a generic term that is descriptive of a specific category of goods. For example, eBay has registered the domain name "ebaymotors.com" and uses the name EBAY MOTORS to promote its online automobile trading services. Thus it is entirely possible that users may think that the domain name "gayebay.com" is simply a site established by eBay that provides offerings of interest to the gay community. The fact that Respondent offers a competing online trading service at its site increases the likelihood of confusion.
Because the disputed domain name incorporates the EBAY mark in its entirety, the Respondent offers directly competing services, and the addition of the generic term does not help differentiate or diminish any confusion, this Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights.
Respondentís rights and legitimate interests in the domain name
Complainant has alleged that Respondent does not have any rights or legitimate interest in the domain name. The term EBAY as used to describe online trading services is a fanciful term. Although it is famous, it has not become generic. Thus there seems to be little legitimate rationale for the inclusion of the mark in the domain name "gayebay.com" for reference to an online trading website.
Respondent is not commonly known by the name "gayebay.com". In fact, Respondent does not use the name "gayebay.com" as the name of its service, nor does the name appear on Respondentís home page. Respondent uses the name "Bidgay.com" instead.
Respondent is in default and has failed to provide any evidence of a legitimate interest or right to this domain name. Complainant has provided sufficient evidence of a lack of such legitimate interest. Thus the Panel finds that Respondent does not have any right or legitimate interest in the domain name.
Registration and use in bad faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant show that the domain name has been registered and used in bad faith. According to Complainant, Respondent had notice of the mark because it is a famous trademark. Thus Complainant asserts that Respondent must have registered the domain name with Complainantís trademark in mind in an effort to benefit from the goodwill of the mark and attract and divert customers interested in Complainantís competing online trading services.
Respondent offers a competing commercial service, collects a fee for this service, and sells goods itself. Moreover, Respondent operates his service on another site, "Bidgay.com", and customers who go enter the disputed domain name "gayebay.com" are diverted to "Bidgay.com". Under these circumstances it seems that Respondent has registered and used the domain name "gayebay.com" to take advantage of the recognition that eBay has created for its mark and therefore profit by diverting users to its site. In the absence of any explanation from Respondent, this Panel is directed by Rule 14(a) to "proceed to a decision on the complaint." Thus this Panel accepts Complainantís allegation of bad faith.
This Panel decides that Complainant has shown that the Respondent has no legitimate interest in the domain name, that the domain name was registered and used in bad faith, and that the domain name is confusingly similar to a trademark in which Complainant has rights. Accordingly, pursuant to Paragraph 4(i) of the Policy, this Panel requires that the registration of the domain name "gayebay.com" be transferred to Complainant.
Roderick M. Thompson
Dated: March 16, 2001