WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. RePoCo
Case No. D2003-0808
1. The Parties
The Complainant is eBay Inc., California, United States of America, represented by its intellectual property counsel Brett Healy at the same address.
The Respondent is RePoCo, Phoenix, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <planetebay.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2003. On October 13, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. In the absence of a response from eNom, the Center consulted the Internic WHOIS database to confirm that Respondent RePoCo is listed as the registrant, with contact information for Renee Powell of Phoenix, Arizona as the registrant contact and also as the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 10, 2003.
The Center appointed W. Scott Blackmer as the Sole Panelist in this matter on November 17, 2003. 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.
4. Factual Background
In the absence of any response from the Registrant, the facts as stated in the Complaint and as supported by the Declaration of Brett Healy in Support of eBayís Complaint and accompanying Exhibits (including evidence of Complainantís trademark and domain name registrations) are assumed to be true.
Complainant eBay operates what is probably the best-known online person-to-person trading facility on the Internet, with its principal address at <ebay.com>. This has been one of the most popular and successful online shopping sites in the world for several years and has been the subject of frequent and extensive publicity not only online but in print and broadcast media, both in the form of advertising and in the form of unsolicited news articles and interviews. eBay counts over seventy million registered users worldwide for its online trading services and related online tools, services, and content.
The EBAY trademark has been associated with the eBay online trading website as a common law mark since at least September 1995. United States trademark registrations for the EBAY mark, in a variety of categories of goods and services, were issued in 1999, 2000, 2001, 2002, and 2003. Trademark registrations for the EBAY mark also have been issued in the European Community, Japan, and over twenty other jurisdictions. Additional applications for trademark registration are pending in the United States, Canada, and several other countries.
Complainant owns at least thirty domain names that consist of the EBAY mark and additional generic or descriptive terms, such as <myebay.com>, <industrialebay.com>, <shopebayorama.com>, <connect2ebay.com>, <planetebay.com>, and <planetebay.org>.
According to the Internic WHOIS database, the Domain Name was registered by Respondent RePoCo in August 2001, and updated in August 2003. However, in the absence of a response in this proceeding from Respondent -- or any currently active website using the Domain Name -- there is no evidence that Respondent has ever operated a website under the Domain Name, has ever traded under the Domain Name, or has ever been commonly known by the Domain Name. Complainant declares without refutation that it is not affiliated with Respondent and has not authorized Respondentís use of the EBAY mark as a portion of the Domain Name.
Renee Powell - the registrant, administrative, billing, and technical contact for RePoCo according to the WHOIS database - appears to have been a registered eBay user at the time the Domain Name was created. The name and billing address in eBayís user database are identical to the contact information associated with the Domain Name in the WHOIS database. According to Complainant, Renee Powell conducted over one hundred transactions via eBay between February 2001, and November 2001, when eBay suspended her for failure to pay eBay listing fees.
Complainant has made repeated attempts since September 2001, to communicate with Respondent concerning its use of the EBAY mark as part of the Domain Name, using the contact information in the WHOIS database and in the eBay user database. There has been no response to Complainantís emails; the facsimile number listed in the WHOIS database does not accept facsimile transmissions; and a postal letter sent by certified mail was returned marked "Return to sender" and "Forwarding order expired."
The Panel notes that the experience of the Center in trying to contact Respondent has been similarly unproductive. There was no response to email and facsimile communications, and a package shipped by courier was returned with the message "Customer not available or Business closed."
5. Partiesí Contentions
Complainant argues that EBAY has been protected as both a common law and registered trademark since the 1990s (before Respondent registered the Domain Name in 2001), that the mark is famous, and that the addition of generic or descriptive terms in the Domain Name does not mitigate its confusing similarity to the EBAY mark, especially given Complainantís own practice of using domain names that add generic or descriptive terms to the mark. Complainant observes that both the United States Patent and Trademark Office and a United States federal district court have concluded that EBAY is a famous mark that can be infringed by adding generic or descriptive terms. See USPTO Office Action in Serial No. 75/825,185 (April 25, 2000) (rejecting an application to register EBAYSECURITIES.COM as a trademark) and eBay, Inc. v. Wederman, et al., Decision and Order, 02-CV-1566 (TJM) (DRH), (USDC NDNY June 26, 2003) (finding trademark infringement in the use of the domain name <ebaytoo.com>).
Complainant asserts that there is no evidence of Respondentís use of "planetebay" in connection with a bona fide offering of goods or services. Complainant also argues that that Respondent had actual notice of eBayís trademark rights (because of Ms. Powellís participation as a registered user in online trading on the eBay website) as well as constructive notice (since the mark was registered in the United States before Respondent obtained the Domain Name). In the absence of any other plausible reason for Respondent to select a Domain Name including Complainantís famous mark, Complainant infers an intention to trade on the goodwill associated with the mark, which WIPO panels have not found to be a legitimate right or interest (citing Madonna v. Parisi, WIPO Case No. D2000-0847 (October 16, 2000)).
Much the same reasoning, in addition to Respondentís failure to respond to communications alleging infringement over the past two years, leads Complainant to infer that the Domain Name was registered and is being used in bad faith. Consequently, Complainant seeks to have the Domain Name transferred to itself.
The Respondent did not reply to the Complainantís contentions. Under Paragraph 14(b) of the Rules, the Panel may draw such inferences as it deems appropriate from Respondentís failure to comply with the Centerís request for a response.
6. Discussion and Findings
In order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:
• The Domain Name is identical or confusingly similar to Complainantís mark; and
• Respondent has no rights or legitimate interests in the Domain Name; and
• The Domain Name has been registered and is being used in bad faith.
(Policy, Paragraph 4(a))
As in other cases where a respondent fails to reply (and, indeed, cannot be reached at the contact addresses provided to the registrar), the Panel must satisfy itself that the uncontested facts provide a sufficient basis not only for finding confusing similarity to a protected mark but also for inferring that, more probably than not, the respondent has no legitimate interest in the domain name at issue and has likely registered and used it in bad faith.
A. Identical or Confusingly Similar
On the basis of the uncontested evidence, the Panel finds that Complainant has rights to the registered and common law EBAY trademark and that the mark is famous and likely to be confused with a name fully incorporating the term EBAY. The Panel finds further support in the fact that both the United States Patent and Trademark Office and a United States federal court have characterized EBAY as a famous mark. The USPTO did so in April 2000, more than a year before Respondent registered the Domain Name. The examining attorney in USPTO Office Action in Serial No. 75/825,185 (April 25, 2000) rejected an application by an apparently unrelated party to register EBAYSECURITIES.COM, finding that the proposed mark, simply adding a descriptive word and a top-level domain name to the term EBAY, was a "close approximation of ĎeBay, Inc.,í" which "is sufficiently famous such that it is presumed that there is a connection with that entity."
More recently, the court in eBay, Inc. v. Wederman, et al., Decision and Order, 02-CV-1566 (TJM) (DRH), (USDC NDNY June 26, 2003) entered a default judgment and issued an injunction against a website operator who used the domain name <ebaytoo.com>, concluding as follows:
"As a result of its own continuous publicity and promotion in addition to the unsolicited media publicity, the EBAY mark is one of the best known marks on the Internet and among the general public and is a famous mark within the meaning of 15 U.S.C. ß1125(c)." (Id., para.3).
Here, as in the EBAYSECURITIES.COM application and the Wederman decision, a generic or descriptive term, "planet," has been added to the EBAY mark. The Domain Name remains visually and phonetically similar to <ebay.com> and to the many additional domain names used by Complainant that add generic or descriptive terms to EBAY, thereby raising a likelihood of confusion. Indeed, on several other occasions WIPO panels have found a likelihood of confusion when unaffiliated parties have registered domain names adding generic or descriptive terms to the term EBAY. See, e.g., eBay, Inc v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (March 16, 2001) (<gayebay.com>); eBay, Inc. v. Pisoft Corp. and Max Malaluan, WIPO Case No. D2002-0849 (November 6, 2002) (<ebaybusiness.com>) ("Pisoft").
As a WIPO Panel observed in General Electric Co. v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001) (<gehoneywell.org>), in trademark law, the user of a mark "may not avoid likely confusion by appropriating anotherís entire mark and adding descriptive or non-distinctive matter to it," quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, ß 23:50 (4th ed. 1998)).
B. Rights or Legitimate Interests
There is no evidence that Respondent uses the Domain Name (or is preparing to use the Domain Name) in connection with a bona fide offering of goods or services, nor that Respondent is commonly known by the Domain Name or is making noncommercial or fair use of the Domain Name. See Policy, Paragraph 4(c). There is no content available from Respondent at any website with that address or linked from that address, and Respondent has made no response in this proceeding to advance any rights or legitimate interests in the Domain Name.
Moreover, it is unlikely that Respondent could make a bona fide offering of goods or services online using the Domain Name, because of the likelihood of confusion with the registered EBAY mark and the uncontested fact that Respondent had both actual and constructive notice of that mark before obtaining the Domain Name. See Pisoft (respondent similarly had constructive notice of the registered EBAY mark and was also a registered eBay user). It would have been helpful in addition if Complainant had established that in August 2001, as is now the case, the <ebay.com> website displayed the ® trademark registration symbol, but the Panel is satisfied of the probability that Respondent was aware of EBAY as a famous mark, and Respondent has not come forward to argue otherwise.
C. Registered and Used in Bad Faith
In order to transfer the Domain Name as requested by Complainant, the Policy (Paragraph 4(a)) requires a finding that the Domain Name has been registered and is being used in bad faith. This finding is to be based on the "circumstances" of the case, and the Policy gives several instances of circumstances from which bad faith can be inferred (Paragraph 4(b)). These listed instances are, however, "without limitation."
Establishing "bad faith" has been problematic in cases where there was no evidence of a respondentís intentions or use of a Domain Name and the respondent had not demonstrably engaged in any of the activities mentioned as examples of bad faith in the Policy. See, e.g., Easyjet Airline Company Limited v. Stephen B. Harding, WIPO Case No. D2000-0398 (June 22, 2000) (dismissing complaint for lack of evidence of bad faith in these or other respects). Here, as in Easyjet, there is no affirmative evidence that Respondent intended or attempted to sell the Domain Name to Complainant, or to block Complainantís use of the name or disrupt its business, nor is there evidence indicating that Respondent used the Domain Name to attract Internet users familiar with the famous mark. There is no record, in fact, that Respondent ever created online content for the Domain Name or otherwise used the Domain Name online.
Nevertheless, several circumstances support a conclusion of bad faith. The EBAY mark is famous and was known to Respondent at the time the Domain Name was obtained, given Ms. Powellís participation in trading online via eBay. It is difficult to imagine a plausible use of the Domain Name that would not create a likelihood of confusion with eBay and serve to attract Internet users seeking eBay websites. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), the panel inferred a bad-faith intent on the part of the respondent to register and then sell the <cellularonechina.com> domain name to the holder of the CELLULAR ONE trademark, because it would be "difficult, perhaps impossible" for respondent or any third party to use the domain name without infringing that mark.
Under Paragraph 4(a) of the Policy, there must be bad faith not only at the time of registration but subsequently in Respondentís "use" of the Domain Name. There are instances where this ongoing bad faith can be inferred from the Respondentís conduct even without the Respondent demanding payment or publishing a competing website. As the WIPO panel concluded in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (<telstra.org>),
"the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name Ďbeing used in bad faithí is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
In Telstra, the panel found such circumstances indicating bad-faith use of a domain name in the facts that the complainantís trademark was well known, the respondent had provided no evidence of any actual or contemplated good-faith use of the mark, and the respondent appeared to have concealed its identity and had provided, or failed to correct, false contact details.
In this case, the inference of bad faith is supported by similar facts and by the Respondentís failure to respond to Complainantís repeated efforts since September 2001, to contact Respondent concerning Complainantís trademark rights. See Encyclopedia Britannica v. Zucarini, WIPO Case No. D2000-0330 (June 8, 2000) (inferring bad faith from a failure to respond in any way to allegations of trademark infringement).
Bad faith can also be inferred from Respondentís ongoing failure to provide its registrar (and consequently the WHOIS database) with correct, updated contact information, as required by its Registration Agreement with eNom:
"As further consideration for the eNom service(s), you agree to:
i. provide certain current, complete and accurate information about you as required by the process and
ii. maintain and update this information as needed to keep it current, complete and accurate."
(Registration Agreement, sec. 3)
"Information You Are Required to Submit. As part of the registration process, you are required to provide certain information and to update this information promptly as needed to keep it complete and accurate. The information you are obligated to provide in connection with the name you are registering is the following:
A. The domain name being registered;
B. Your (or the domain name holderís) name, postal address, e-mail address, voice telephone number, and where available, fax number; and
C. The name, postal address, e-mail address, voice telephone number, and where available, fax number of all contacts for the domain name; and
D. Valid payment information."
(Registration Agreement, sec. 7)
Respondent renewed its registration as recently as August 2003, using ostensibly "updated" contact information that was apparently invalid both before and after that date. Respondentís failure to maintain correct contact information or to respond in any way to the Centerís communications regarding this proceeding further support the inference that Respondent is not holding the Domain Name for any good-faith use.
There is nothing in the Policy that suggests a registrant may be divested of a domain name simply for failing to use it actively online. However, when a registrant, such as Respondent, obtains and renews a Domain Name that is confusingly similar to a famous mark and then provides false contact information and fails to respond to any infringement claim or administrative panel proceeding, an inference of bad faith is warranted.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <planetebay.net> be transferred to Complainant eBay Inc.
W. Scott Blackmer
Dated: December 3, 2003