WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. Diego Mondelo
Case No. DCO2011-0050
1. The Parties
The Complainant is eBay Inc. of San Jose, California, United States of America, represented by Hogan Lovells LLP (Paris), France.
The Respondent is Diego Mondelo of Vigo, Pontevedra, Spain.
2. The Domain Name and Registrar
The disputed domain name <ebayanuncios.co> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2011. On August 12, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On August 16, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 22, 2011, the Center informed the Complainant that the Registrar of the disputed domain name had confirmed that the disputed domain name has been locked and that the Complaint had not been sent to the Respondent, according to paragraph 3(b)(xii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). On August 23, 2011, the Complainant confirmed that a copy of the Complaint together with the Annexes had been duly sent to the Respondent and the Registrar in accordance with the Rules.
On August 22, 2011, the Center notified the parties that the language of the registration agreement for the disputed domain name is Spanish whereas the Complaint had been filed in English. On August 29, 2011, the Complainant requested English to be the language of the proceedings. The Respondent did not reply. On September 2, 2011, the Center requested the Complainant to file a translation of the Complaint. However, it came to the Center’s attention that a material piece of evidence was inadvertently not taken into account when giving consideration of the Complainant’s request of August 29, 2011 that English were the language of the proceedings. Given that since August 30, 2011, the Complainant provided the Center with an English email communication from Diego Luis Huerta de Uña on behalf of the Respondent, and noting that the Respondent had not formally objected to the Complainant’s request that English were the language of the proceedings, the Center decided to accept the Complaint as filed in English, to accept a Response in either Spanish or English and to appoint a Panel conversant with the two languages in question, if available.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2011.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 3, 2011. 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 Panel finds that it was properly constituted.
On this instance, the Panel has been called upon to exercise its discretion under paragraph 11(a) of the Rules to determine a language of the proceedings other than that of the registration agreement. In doing so, the Panel has deemed proper to grant the Complainant’s request for English to be controlling in view of the totality of the following circumstances: i) the Registrar’s seat is in Germany as opposed to Spain or Colombia where Spanish is spoken; ii) the Registrar markets the .co ccTLD internationally; iii) the registration agreement is available in English as well as in Spanish on websites either operated or linked by the Registrar itself; iv) the Respondent’s counsel corresponded with the Complainant’s in English; and v) the Respondent’s failure to object to the Complainant’s request.
4. Factual Background
Since its incorporation in the United States in 1995, the Complainant has been operating one of the world’s largest online marketplaces where 94 million users from countries like Spain, the United States of America, Canada, France, Australia, Germany, Japan, Italy or the United Kingdom of Great Britain and Northern Ireland, among many others, can buy and sell all sorts of goods. In 2010, the Complainant’s sales totaled USD 62 billion.
The Complainant has registered and used internationally since 1998 the mark EBAY in connection with its e-trading business. The complainant owns and operates hundreds of EBAY-related gTLDs and ccTLDs and the websites to which they resolve.
The disputed domain name, which was registered on August 16, 2010, resolved as of March 23, 2011, to a third party’s website at “www.hortasol.com”, and has remained inactive since.
On May 3 2011, counsel for the Complainant sent a Cease and Desist Letter to the Respondent requesting the voluntary and gratuitous transfer of the disputed domain name to the Complainant.
On August 30, 2011, counsel for the Respondent advised by email to the Complainant’s counsel that the Respondent was willing to surrender the disputed domain name, as requested.
Citing excessive delay in responding and unnecessary burden on the part of the Respondent by causing the Complainant to prepare a Complaint that had already been filed, the Complainant decided to pursue the instant proceedings.
5. Parties’ Contentions
The Complainant’s factual and legal submissions can be summarized as follows:
i. The disputed domain name is confusingly similar to the Complainant’s EBAY trademarks and reflects the EBAY name in its entirety;
ii. When confronted with a combination of the distinguishing prefix “ebay” followed by the generic word “anuncios”, meaning “advertisement” in English, many Internet users would be confused and assume that the disputed domain name is in some way connected with the Complainant;
iii. The fact that eBay routinely employs its EBAY mark with other words in domain names, in particularly with the term “anuncios”, increases the likelihood of confusion;
iv. The mere addition to the disputed domain name of the “.co” suffix does not constitute, as such, a sufficient element of distinctiveness;
v. A preliminary search by the Complainant has revealed that the Respondent has no Community Trademarks including EBAY, which is indicative of Respondent’s lack of rights or legitimate interests in respect of the disputed domain name;
vi. The Respondent has never been authorized or otherwise licensed or permitted by the Complainant to use any of its trade marks;
vii. The Respondent cannot assert that, before it had notice of the dispute, its use of the disputed domain name was in connection with a bona fide offering goods and services, nor there is any evidence that the Respondent has plans to use the website for a legitimate purpose;
viii. As of March 23, 2011, the disputed domain name redirected to the website “www.hortasol.com”, which would appear to be the website that the registrant has designed for one of his clients; however the disputed domain name is no longer resolving towards an active website;
ix. The Respondent cannot assert that it is commonly known by the disputed domain name because to the best of Complainant’s knowledge, the Respondent has no competing name or mark rights in the disputed domain name;
x. The Respondent is currently unable to assert that it is making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade marks;
xi. The mark EBAY is highly distinctive and well known all around the world, including Spain, where the Respondent resides, and it is inconceivable that the Respondent did not have the Complainant’s mark in mind when registering the disputed domain name;
xii. The Respondent registered the disputed domain name less than a month later than . CO domain names became generally available for registration in an attempt to prevent Complainant from doing so;
xiii. Being aware of the Complainant’s activities worldwide, the Respondent anticipated that the Complainant would be interested in registering the mark EBAY in connection with the generic term “anuncios” (“advertisement” in English);
xiv. Internet users seeking the Complainant by typing “www.ebayanuncios.com” will be redirected to the Respondent’s website causing profit to it from the corresponding misdirected traffic.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
i. The disputed domain name is identical or confusingly similar to a mark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not relieve the Complainant of the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by countless UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (a complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between “ebayanuncios” -being the relevant portion of the disputed domain name-, and the EBAY mark, it becomes noticeable that the former reproduces Complainant’s well-known and highly distinctive mark in its entirety.
A finding of confusing similarity is warranted where the disputed domain name wholly incorporates the Complainant’s well-known mark despite the addition of a generic and descriptive term. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (a registrant that simply adds generic terms to the Complainant’s trademark does not avoid a finding of confusing similarity as per the UDRP); also BHP Billiton Innovation Pty Ltd and BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338 (the addition of the generic term “diamonds” is not sufficient to avoid confusion between the mark AURIAS and the domain name <auriasdiamonds.info> particularly as the word diamonds is descriptive of the goods provided by the Complainants under the AURIAS mark).
The fact that “anuncios” (classified advertisement in English) are actually posted on the Complainant’s websites by its own subscribers only reinforces the above conclusion, all the more so since the mark EBAY is immediately recognizable as a mark by Internet users at large. See eBay Inc. v. María Cecilia Vieites, WIPO Case No. D2011-1212 (given that the generic terms “anuncios”, “coches”, “empleos”, “motos” and “pisos” correspond to categories of advertisement found on the Complainant’s online marketplace, it is likely that the risk of confusion amid consumers might be higher); and Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400 (The Panel finds the disputed domain name <casioshop.net> to be confusingly similar to the Complainant’s strong and immediately recognizable trademark CASIO, particularly for a website that functions as an online store or shop).
As a result, this Panel finds that the Complainant has met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel takes note of the Complainant’s unrebutted representation never to have licensed or authorized the Respondent to use any of its EBAY marks as a domain name or otherwise.
The Complainant also furnishes mark search reports showing the absence of a Community Trade Mark nor any national trademark registration on the term EBAY owned by the Respondent in Spain, the United States, Canada, the United Kingdom, among several other countries.
The Complainant further submits that in view of the use to which the disputed domain name has been put, the Respondent cannot avail itself of any of the following defenses set forth in paragraph 4(c) of the Policy:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the Panel’s opinion, given the notoriety of Complainant’s mark, it does not seem plausible that the Respondent has become to be commonly known by or has been trading under the name “ebayanuncios”. In fact, the name once associated with the website at the disputed domain name was “hortasol”.
Similarly, the evidence on record shows that the Respondent:
a. has not used the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name has been inactive for some time now, having previously resolved to the website of a fresh vegetables supplier (located in the Respondent’s same province) by the name “Hortasol”, which bears no relation to <ebayanuncios.co>;
b. is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain because Internet users are misleadingly diverted to the Respondent’s inactive website;
Based on the foregoing considerations and in view of Respondent’s default, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has thus demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
To begin with, the Panel notes that EBAY is a coined term with a high degree of individuality and distinctiveness, and consequently, its sole misappropriation by others presupposes bad faith registration and use within the meaning of the Policy. See eBAy Inc. v. xu kefei (kefei xu), WIPO Case No. D2008-0481 (“eBay” is an invented word, and as such, it is not the kind of expression the Respondent might have thought of had it not already known the Complainant).
In the same vein, because of the prominence of the EBAY mark on the Internet, it is inconceivable that the Respondent had registered the disputed domain name if it were not for the purpose of diverting traffic and creating confusion with the Respondent and its website at the following domain names <ebayanuncios.com>, <ebayanuncios.net>, <ebayanuncios.es> and ebayanuncios.comes> which are targeted to Complainant’s users in Spain, the country of Respondent’s residence. See eBay Inc. v. RLE enterprises, WIPO Case No. D2008-1068 (given the fame of the EBAY mark, it is clear that Respondent registered the domain names in an effort to take advantage of the goodwill Complainant has built up in the mark); also Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055 (registration of a domain name containing a famous mark is strong evidence of bad faith).
Furthermore, the evidence tendered by the Complainant shows that prior to receiving a Cease and Desist Letter from the Complainant’s counsel, the Respondent kept the disputed domain name deflected to a third party’s portal at “www.hortasol.com”, thus triggering the ground of bad faith use laid down by paragraph 4.b.iv of the Policy, which states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel accepts the Complainant’s submission that the disputed domain name’s subsequent inactivity did not cure Respondent’s active use of the disputed domain name in bad faith.
Consequently, the Complainant has discharged its burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel hereby directs that the disputed domain name, <ebayanuncios.co>, be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: November 17, 2011