WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. NicSoft, Antonio Francesco Tedesco
Case No. D2014-0812
1. The Parties
The Complainant is eBay Inc. of San Jose, California, United States of America, represented by Hogan Lovells International LLP, France.
The Respondent is NicSoft, Antonio Francesco Tedesco of Ardea, Italy, represented by Avv. M. Croce, Italy.
2. The Domain Name and Registrar
The disputed domain name <ebaybiologic.com> is registered with OVH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2014. On May 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 22, 2014 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is Italian. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on May 23, 2014. The Respondent replied on May 25, 2014 requesting that Italian be the language of the proceedings. The Center thus informed the Parties that it would send all case-related communications in both English and Italian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 the Respondent of the Complaint in both English and Italian, and the proceedings commenced on May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Response was filed in Italian with the Center on May 29, 2014.
On June 17, 2014, the Complainant transmitted to the Center two English email communications sent by the Respondent to the Complainant on June 2, 2014, bearing the words “private / confidential, not usable in the proceeding”. The Respondent replied in Italian on the same day stating that the Panel should not consider said email exchange produced by the Complainant because late and confidential.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 30, 2014. 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.
The Language of the Proceedings
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In this case the registration agreement is in Italian, and the Respondent is Italian.
The Complainant has requested that the language of the proceedings in this case should be English, arguing, inter alia, that English was the language of communication between the Complainant (or its lawyers) and the Respondent (or its lawyer) prior to the present Complaint under the UDRP, proving that the Respondent has or has access to a sufficient understanding of the English language, and being an entity based in the United States, the Complainant is not in a position to conduct these proceedings in Italian without significant additional expense and delay. The Respondent has requested that the language of the proceedings be Italian, under the general provisions of paragraph 11(a) above.
In the circumstances of the present case, the Panel notes that, by the Respondent’s own admission, the text of the disputed domain name “ebaybiologic” is in English, emanating apparently from the Italian phrase “baia elettronica del biologico”. An analysis of the disputed domain name discloses, in the Panel’s opinion, a degree of sophistication in the English construction, particularly the choice of the element “biologic” rather than the more natural “biological” as a translation of the Italian word “biologico”, and the choice of “ebay” to render the concept “baia elettronica” from Italian to English. As the Respondent has crossed the language frontier from Italian into English in the construction of the disputed domain name (with, in the Panel’s opinion, a degree of sophistication in the construction of the disputed domain name in English), the Panel is of the view that the Respondent has somewhat sacrificed his right to rely on the general provisions of paragraph 11(a) above and have Italian as the language of the proceedings. The Panel, accordingly, accepts the Complainant’s arguments as summarized above as sufficient to justify a finding that the language of the proceedings should be English, and so finds.
Paragraph 10(b) of the Rules provides that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” The Panel, who is familiar with both the English and Italian languages, feels it equitable not to exercise the Panel’s authority under paragraph 11(b) of the Rules to order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding, and accepts the Respondent’s pleadings and accompanying evidence presented in Italian.
4. Factual Background
The Complainant is a well-known Internet marketplace for a wide variety of goods, including the sale of goods which could be characterized as “biologic”. It has over 124 million active registered users around the world and its website generates 1 billion page views per day. In 2011, the total value of goods sold via the Complainant’s eBay websites internationally was USD 68.6 billion. The trademark EBAY is well known in Italy, the Complainant’s website at “www.ebay.it” being the 9th most frequently accessed in Italy.
Details of widespread trademark registration of the Complainant’s EBAY trademark, including a number of European Community trademark registrations, have been supplied to the Panel.
The disputed domain name was registered on October 5, 2013.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to its EBAY trademark, incorporating the EBAY trademark in its entirety and merely adding the descriptive or non-distinctive element “biologic”.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, in particular that the Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its EBAY trademark, and that the Respondent is not commonly known by the term “Ebay” and has not secured or even sought to secure any trademark rights in the term, as confirmed by a search carried out by the Complainant.
The Complainant alleges that the disputed domain name was registered in bad faith, it being inconceivable that the Respondent could have been unaware of the Complainant’s trademark at the time of registration of the disputed domain name in 2013, particularly in view of the fact that the Complainant, having verified its database, has located three accounts (one opened in 2011 and two in 2012) in the name of the Respondent. The Complainant argues that the existence of these three accounts prior to the date of registration of the disputed domain name deprives the Respondent of any argument that it was unaware of the Complainant’s EBAY trademark at the time of registration of the disputed domain name.
Although the disputed domain name is currently passively held, the Complainant alleges that it poses a legitimate threat to its interests, and argues that the reasoning of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found that passive holding of a domain name could be evidence of use of the domain name in bad faith in appropriate circumstances, should be applied to this case.
The Respondent replied to the Complaint, detailing the provenance of the disputed domain name, stating that the Respondent was not planning to compete with the Complainant, but, instead, to promote social ends, creating a point of contact on the Internet for persons intending to support the philosophy of life based on the use of biological products.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the gTLD “.com” indicator to be irrelevant in the present case.
The Panel recognizes EBAY as a well-known mark. It is well-established in prior decisions under the UDRP that the mere addition to a well-known trademark of a descriptive or non-distinctive element is insufficient to avoid a finding of confusing similarity. The Panel finds that, in the context of the present case, the word “biologic” is such a descriptive or non-distinctive element, and, accordingly finds that the Complainant has satisfied the provision of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent’s Response did not, in the Panel’s view, provide a justification of rights or legitimate interests in the disputed domain name, in view of the well-known nature of the Complainant’s EBAY trademark, of which the Respondent could not reasonably be said to be unaware. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing an un-rebutted prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the disputed domain name contains the Complainant’s well-known EBAY trademark in its entirety, with the mere addition of the word “biologic”, which is appropriate to a range of products in which the Complainant deals in its business, as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith and the Panel so finds.
Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, in which the Panel is unconvinced that the disputed domain name was not designed with the Complainant’s EBAY trademark in mind, the possibility that the Respondent might change his mind as to the intended use of the disputed domain name as set out in the Respondent’s response, for example in the event of the Complainant failing in these proceedings, to the detriment of the Complainant, cannot, in the Panel’s view, be excluded. Accordingly, the Panel finds it appropriate to consider the current passive use of the disputed domain name as use of the disputed domain name in bad faith, and finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ebaybiologic.com> be transferred to the Complainant.
George R. F. Souter
Date: July 17, 2014