WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. ebayMoving / Izik Apo
Case No. D2006-1307
1. The Parties
The Complainant is eBay Inc., San Jose, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is ebayMoving / Izik Apo, Woodland Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ebaymoving.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 10, 2006. On October 10, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 13, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for 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 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2006.
The Center appointed Angela Fox, Roderick Thompson and Kevin C. Trock as panelists in this matter on January 16, 2007. The Panel finds that it was properly constituted. Each member of 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
Because Respondent has defaulted the following facts alleged in the Complaint are not disputed.
Complainant has been trading under the name EBAY and operating an on-line trading and auction website at “www.ebay.com” continuously since September 1995. Complainant’s EBAY services are accessible from countries throughout the world in numerous languages. Complainant uses its EBAY mark in a stylized form comprising lower-case letters apart from a capital “B”.
Complainant owns trademark registrations for EBAY in countries around the world. Attached to the complaint were copies of U.S. federal trademark registrations 2759150, 2700675, 2501043, 2700836, 2578260, 2522630, 2604374, 2518652, 2666767, 2367932, 2737342, 2662130, 2218732, 2592515, 2744717, 2913401 and 2926481 for the EBAY word mark dating from the period 1999 – 2005.
Users of the EBAY online marketplace buy and sell goods of almost every conceivable description through the EBAY service, including moving-related materials such as dollies, packing tape, packing paper, boxes and bubble wrap. Sometimes sellers showcase items of particular types together in central locations called “eBay Stores”. When visitors search Complainant’s website for “movers”, banner advertisements for “eBay Stores” that stock moving-related goods appear.
Complainant also uses EBAY in connection with “www.rent.com”, an apartment-finding listing site in the United States. That website includes a “Moving Center”, which offers moving and relocation services, as well as information on truck rental, storage and short-term housing.
The EBAY brand is well-known internationally as a result of Complainant’s commercial success and extensive promotion. Complainant’s service has been the subject of thousands of unsolicited articles in the international media. The EBAY online marketplace has over 200 million registered users worldwide, and every day over 6 million new items are listed for sale in over 50,000 different categories of goods. The fame of the EBAY mark has been confirmed in proceedings before the United States Patent and Trademark Office and the U.S. District Court for the Northern District of New York.
Respondent registered the disputed domain name <ebaymoving.com> on September 29, 2003. Following the issue of demand letters by Complainant, Respondent took down all content from the site, but prior to that Respondent used the site to advertise “ebay Moving Services”, with click-through advertisements for third-party moving companies. The site included links to resources on “Moving Companies”, “Moving Estimate”, “Self Storage”, “Moving Service”, “Moving Guide” and “Roommate Service”. The site included the tagline, “online moving source for all your need”.
Complainant wrote to Respondent in May 2005 and February and March 2006 stating that Respondent’s use of the disputed domain name was likely to mislead Internet users into believing that Respondent was somehow sponsored by or affiliated with Complainant, and required Respondent to cease use of the domain name and to transfer it to Complainant. Respondent did not reply to any of Complainant’s communications.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to its registered EBAY trademark. The domain name incorporates Complainant’s trademark in its entirety and adds only the descriptive term “moving”. According to Complainant, the disputed domain name misleadingly suggests that the linked site is associated with Complainant.
Complainant further contends that Respondent has no legitimate rights or interests in the disputed domain name. At the time the disputed domain name was registered in 2003, Complainant’s use of and rights in EBAY were well-established. Respondent had both constructive and actual notice of Complainant’s rights by virtue of Complainant’s U.S. federal trademark registrations and its considerable use, promotion and reputation. Respondent’s offer of services related to goods bought and sold through the eBay service, and its posting of click-through advertisements for which it presumably earned referral fees, did not generate a legitimate right or interest in the domain name. Respondent was not normally known as ebaymoving.com or eBayMoving prior to its registration of the disputed domain name and is not an authorized dealer, distributor or licensee of Complainant. The mere addition of a descriptive or generic word to a trademark does not create a new or different mark in which Respondent has legitimate rights.
Finally, Complainant argues that the disputed name was registered and is being used in bad faith. The only plausible explanation for Respondent’s adoption of Complainant’s entire mark is that Respondent is attempting to create a likelihood of confusion with Complainant’s EBAY mark. Respondent registered the disputed domain name well after Complainant had established rights in EBAY and had actual and constructive notice of those rights. Respondent’s website provided services related to goods bought and sold through the eBay service. Moreover, its current passive holding amounts to bad faith, taking into account the fame of Complainant’s mark, Respondent’s failure to reply to Complainant’s communications, and Respondent’s apparent provision of false and/or inaccurate contact information.
The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights in or legitimate interests to the domain name;
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
Respondent’s domain name consists of EBAY and a descriptive word, “moving”. The element EBAY is identical to Complainant’s mark. In the Panel’s view, the additional descriptive matter is not enough to avoid the likelihood of confusion arising from the use of EBAY.
It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks (as held in, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, concerning over 100 domain names including <harrypotterfilms.net>). In the present case, the Complainant has established that its EBAY trademark is used in respect of the online sale of goods related to moving, as well as a website relating to moving services. The eBay brand is, moreover, internationally famous for online buying and selling. Respondent’s use of a domain name consisting of a descriptive element added to EBAY is likely to give rise to confusion because it points to a field of goods and services in which Complainant’s mark is actually used.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
Given the fame of Complainant’s EBAY mark, its invented nature and its inherent distinctiveness, the Panel considers it extremely unlikely that Respondent can have adopted it independently in 2003, without knowledge of Complainant’s highly successful business under the EBAY brand. The fact that Respondent used EBAY on its site in lower case letters with a slightly separate stylized “e”, similar to Complainant’s manner of use, supports the view that Respondent was well aware of Complainant’s rights.
In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel observed that, “use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”. In Advance Magazine Publishers, Inc. v. Lisa Whaley, WIPO Case No. D2001-0248, the panel construed this to mean that “intentionally infringing use should not be viewed as bona fide use”.
The Panel agrees with the reasoning in these cases. In the Panel’s view, use that is not bona fide cannot give rise to a legitimate interest in a domain name under the Policy. The Respondent’s conduct in knowingly adopting a domain name confusingly similar to the widely known EBAY trademark was calculated to trade on and benefit from the fame of Complainant’s mark and could not, in the Panel’s view, give rise to bona fide use capable of conferring a right or legitimate interest in the domain name.
The Panel agrees, moreover, with Complainant’s assertion that Respondent’s use of the disputed domain name in connection with click-through advertisements pointing to other websites, including sites that compete with Complainant in offering moving-related goods, advice and services, is not a bona fide offering of goods or services or a noncommercial or fair use (PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).
Respondent’s use of the disputed domain name to advertise its own and third-party moving-related services was intended to divert customers from Complainant’s websites, which offered similar goods and, in the case of Complainant’s EBAY branded “www.rent.com” website, identical services. Such activity is misleading to consumers and amounts to a form of “bait and switch” selling. It does not constitute a bona fide offering of goods or services that gives rise to a legitimate right or interest in the disputed domain name (Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946).
In view of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia Paragraphs 4(b)(ii), (iii) and (iv):
(i) the Respondent 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 it has engaged in a pattern of such conduct; or
(ii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that site.
Complainant has submitted evidence, unchallenged by Respondent, that its EBAY trademark is internationally famous. Respondent has not denied actual knowledge of Complainant’s EBAY brand. In addition, Complainant has shown in evidence that Respondent used the domain name to offer and advertise services identical to those offered under Complainant’s EBAY-branded “www.rent.com” website and similar to the moving-related goods bought and sold through Complainant’s online marketplace. Respondent was therefore active in the same field of endeavor as Complainant and was a competitor in that field. In using Complainant’s trademark to draw Internet users to a site offering competing or related goods and services, Respondent was attempting to divert customers from Complainant and thus to disrupt Complainant’s business. Such conduct has been found to signal bad faith in other cases (Six Continents Hotels Inc. v. Ramada Inn, WIPO Case No. D2003-0658). Respondent has offered no satisfactory alternative explanation for its conduct. The Panel finds that such disruption was a primary purpose behind Respondent’s registration of the disputed domain name.
Respondent’s use of the domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant’s EBAY mark as to source, sponsorship, affiliation, or endorsement. Taking into account the fame of Complainant’s mark and its use in relation to the online provision of moving-related services and goods, Internet users encountering the disputed domain name are likely to be misled into believing that they have found a link to a website legitimately connected to Complainant. Respondent’s use of EBAY as a separate word in a style similar to that of Complainant, and its description of itself as combining “online expertise and relocation industry experience”, serve only to confirm that misperception on the part of visitors to the site, who are already familiar with Complainant’s famous EBAY brand for online goods and services, including those related to moving.
In the Panel’s view, the evidence is sufficient to support the claim that the disputed domain name was registered and used in bad faith. The Panel so finds.
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 <ebaymoving.com> be transferred to Complainant.
Kevin C. Trock
Dated: January 31, 2007