Complainant is eBay Inc. of California, United States of America, represented by Cooley Godward Kronish LLP of United States of America.
Respondent is Artgrafi Multimedya Hizmetleri of Istanbul, Turkey.
The disputed domain name <ebaycatwalk.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2008. On December 18, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2008, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. No formal Response was filed with the Center except for two e-mail communications from Respondent on December 30, 2008. Subsequent e-mail communications from Respondent were received on January 18, 29, and 30, 2009.
The Center appointed Clive L. Elliott, Bruce E. O'Connor and Gökhan Gökçe as panelists in this matter on February 4, 2009. 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.
This dispute concerns the domain name <ebaycatwalk.com> registered on March 8, 2008 (“Domain Name”).
Complainant states that its company name is Ebay Inc. and that it has operated its “www.ebay.com” website under the Ebay name continuously since 1995 in connection with online commerce, trading, and Internet auction services. Complainant also states that it owns a registration for its EBAY Seven Color Logo and has been using it as early as January 1998.
Complainant asserts that it owns foreign trademark registrations for both the EBAY word mark and the EBAY Seven Color Logo (collectively, the “EBAY marks”) in many countries around the world. Complainant says that it operates an online person-to-person trading service and has devoted substantial resources to advertising and promoting these services and products under the EBAY marks. Complainant believes that these marks embody the goodwill that eBay has earned as a result of providing high quality services and products. Complainant states that as well as its own advertising and promotion it has been the subject of numerous media articles, including national and international print, radio and television, highlighting their online person-to-person trading. Complainant asserts that it is one of the most successful shopping sites on the Internet, and stating that it has over 276 million registered users worldwide.
Complainant also asserts that in addition to its online trading services, the eBay website offers a variety of related services, including currency conversion tools, access to escrow services, charity auctions, theme-oriented pages, and many others that Complainant submits combine to make it a unique person-to-person trading community offering value to its users.
Complainant states that it prohibits the sale of counterfeit products and unauthorized replicas, items, and copies on the eBay sites and in order to maintain buyer and seller trust in the eBay marketplaces, it has established and administered a programme known as the Verified Rights Owner Program (“VeRO”) which allows intellectual property owners to report listings that infringe their rights (such as listings for “replica” or fake, products), and request that those listings be removed from the eBay site.
Complainant asserts that its EBAY marks are famous and embody substantial and valuable goodwill.
Complainant submits that as on August 26, 2008, the Domain Name resolved to a web site at “www.ebaycatwalk.com”, which website showed the name of the site EBAY CATWALK in a manner evoking the distinctive color scheme and staggered letter format of Complainant's EBAY Seven Color Logo mark, the website is designated as “Your Online Replica & Wholesale Shopping” site.
Complainant asserts that the Domain Name offered marketplace services which compete with Complainant's services, and that the format and content of the Respondent's site is highly similar to the format and content of Complainant's eBay website.
Complainant contends that products sold on Respondent's website are replicas, imitations or reproductions. It also says that Respondent has combined Complainant's mark EBAY with the term “catwalk” in its Domain Name, and asserts that the term catwalk has been used to describe the platform on which its replica products are displayed.
Complainant advises that on August 21, 2008 its counsel wrote a “cease and desist” e-mail to Respondent stating that Respondent's Domain Name and website infringed its intellectual property rights and requested Respondent to cease using the Domain Name and any trademarks owned by Respondent.
Complainant advises that Mr. Kaya, on Respondent's behalf, telephoned Complainant's counsel on August 21, 2008, stating that he had the right to use the EBAY marks and the Domain Name, and would not comply with the demands outlined in Complainant's cease and desist e-mail, but that he would consider agreeing to Complainant's demands if he was compensated for his “costs”. Later that same day Mr. Kaya sent an e-mail to Complainant's counsel advising that it could purchase the site from Respondent for “$1 Million”.
Respondent asserts that he is not in agreement with the contents and statements in the notification by the Center of the Complaint. Respondent verifies the communications in which Mr. Kaya proposed a buy-out figure to counsel for Complainant. Respondent asserts that he does not agree with the removal of his site and that it should be reinstated immediately. He states his belief that the Complaint is “scare mongering only and [that [the Center] is] running scared from a large corporation”. Respondent asserts that both Respondent and Complainant have their web sites and that it is up to the customers to choose which one they use.
In Respondent's subsequent communications, he declines to comment on a proposed choice of panelists. Using obscene language, he accuses the Center of threatening him and otherwise inappropriately and nevertheless invites the Center to call him to discuss if the Center wished to purchase his domain name.
The certification required by paragraph 3(b)(xiv) of the Rules bears on the admissibility of the factual contentions made by a complainant, and the certification required by paragraph 5(b)(viii) of the Rules bears on the admissibility of the factual contentions made by a respondent. .Complainant has provided the required paragraph 3(b)(xiv) certification, and supporting documents. The Panel finds that the factual contentions made by Complainant in the Complaint are admissible.
Respondent has provided neither the required paragraph 5(b)(viii) certification nor any supporting documents or declarations. No factual contentions are present in the Response, which contains only opinions, insults, and an obscenity. Because Respondent has provided the Panel with no admissible evidence, the Panel under paragraph 10(d) of the Rules accepts the factual contentions of Complainant as its findings of fact.
The Panel considers that the Domain Name is confusingly similar to Complainant's EBAY mark because it incorporates Complainant's distinctive and famous EBAY mark in its entirety, adding only the merely descriptive term “catwalk”. The combined terms suggest the site is associated with Complainant. See, e.g., Microsoft Corporation. v. J. Holiday Co., WIPO Case No. D2000-1493 (February 20, 2000) (domain name <4microsoft200.com> confusingly similar to mark MICROSOFT because the “use of a company's entire trademark with non-distinctive and descriptive matter creates confusion”).
By adopting a Domain Name that wholly incorporates Complainant's EBAY mark, and which conveys the same overall visual and phonetic impression as Complainant's mark, Respondent has created a term confusingly similar to eBay's marks and has attempted to capitalize on the valuable eBay brand. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004) (“In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.”)
Respondent registered the Domain Name on March 8, 2008, by which time Complainant had well-established rights in its EBAY mark, Domain Name, and web site at “www.ebay.com”.
Respondent is using the Domain Name for commercial purposes. Specifically, Respondent's web site at “www.ebaycatwalk.com” is an English-language online marketplace that offers a variety of fake products for sale. It is found that Respondent's use of the Domain Name for this purpose is not bona fide. See, e.g., Carfax, Inc. D/B/A Carfax V. Setyo Djoenaedi & Associates, WIPO Case No. D2001-0986 (September 24, 2001) (finding no “bona fide offering of services” where “Respondent is offering services similar to the Complainant's services . . . [and] registered the contested domain name in order to divert consumers to the Respondent's web site in a way that was misleading and illegitimate”).
It is well established that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. Drexel University v. David Brouda, WIPO Case No. D2001-0067 (March 20, 2001).
The Panel is of the view that the mere addition of the descriptive term “catwalk” to Complainant's distinctive EBAY marks does not create a new or different mark in which Respondent has rights or legitimate interests. See: eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“[G]iven eBay's prominence on the Internet. [Respondents] have no plausible reason to include ‘ebay' in their domain names other than to capitalize on the goodwill of eBay.”).
Given eBay's prominence on the Internet, the Panel finds that Respondent registered the Domain Name in bad faith, with knowledge that including the EBAY mark as part of its Domain Name would likely cause an Internet user visiting the web site at “www.ebaycatwalk.com” to assume that the Domain Name is somehow sponsored by or affiliated with eBay. See, e.g., eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (January 31, 2007); Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055 (December 12, 2001) (“Registration of a domain name containing a famous mark is strong evidence of bad faith.”).
Furthermore, Respondent's registration and use of a Domain Name that incorporates Complainant's entire EBAY trademark supports a finding of bad faith. “[T]he use of Complainant's entire mark creat[es] an absence of any plausible use of the Domain Name that would constitute good faith”. BellSouth Intellectual Property Corp. v. Melos aka Thomas Stergios, WIPO Case No. DTV2001-0013 (September 16, 2001). See also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, supra.
Respondent's use of the Domain Name is in bad faith, because the associated “www.ebaycatwalk.com” web site provides services that are closely related with the services Complainant offers on its website (and which are listed in Complainant's trademark registrations). Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (October 16, 2003) (“…the diversion of the [holidayinnmichigan.com] domain name to his hotel franchise, a competitor of the Complainant, is consistent with the finding that the Domain Name was registered and is being used in bad faith…. The Respondent's website is clearly intended to attract members of the public who may be wishing to reserve HOLIDAY INN hotel rooms, and then to offer them other hotel rooms and services. This conduct falls squarely within paragraph 4(b)(vi) of the Policy”).
After receipt of Complainant's cease and desist letter, Respondent offered to sell the Domain Name to Complainant for USD 1,000,000, an amount clearly in excess of “out of-pocket costs directly related to the domain name” as contemplated by paragraph 4(b)(i) of the Policy. Such an offer demonstrates that Respondent registered and is using the Domain Name in bad faith. See CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (June 2, 2000) (“Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been registered and is being used in bad faith.”).
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 <ebaycatwalk.com> be transferred to the Complainant.
Bruce E. O'Connor
Dated: February 24, 2009