WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ebay Inc. v. Pisoft Corporation and Max Malaluan
Case No: D2002-0849
1. The Parties
1.1 Complainant is eBay, Inc., a Delaware corporation located at San Jose, California, United States of America. Respondents are Pisoft Corporation ("Pisoft") and Max Malaluan ("Malaluan"), of Oakland, California, United States of America.
2. The Domain Name and Registrar
2.1 The domain name which is the subject of this proceeding is <ebaybusiness.com> (the "Domain Name"). The domain name is registered with Abacus America, Inc dba names4Ever ("Names4Ever"), San Diego, California, United States of America.
3. Procedural History
3.1 On September 10 and 12, 2002, a Complaint was received in connection with this matter by e-mail and hand copy respectively by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center").
3.2 On September 12, 2002, an Acknowledgement of Receipt of Complaint was sent.
3.3 On September 12, 2002, a Request for Registrar Verification was sent, and on September 13, 2002, the Registrar Verification Response was received.
3.4 On September 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding was issued by the Center.
3.5 On October 8, 2002, a Notification of Respondent Default was issued.
3.6 On October 23, 2002, a Notification of Administrative Panel and Transmission of Case File was issued.
4. Factual Background
4.1 Complainant owns several federal registrations for the EBAY mark, including U.S. Registration No. 2,218,732, issued January 19, 1999, U.S. Registration No. 2,367,932, issued July 18, 2000, U.S. Registration No. 2,501,043, issued October 23, 2001, U.S. Registration No. 2,518,652, issued December 11, 2001, U.S. Registration No. 2,522,630, issued December 25, 2001, U.S. Registration No. 2,578,260, issued June 11, 2002, and U.S. Registration No. 2,592,515, issued July 9, 2002, as well as numerous pending applications to register this mark in the United States for a wide variety of goods and services.
4.2. Complainant owns numerous other foreign trademark registrations for the EBAY mark, including registrations in the European Community, New Zealand, Australia, Taiwan, Province of China, Benelux, Germany, Iceland, Israel, Japan, China, Mexico, Norway, Peru, South Korea, Chile, Turkey, United Kingdom, Colombia, Czech Republic, Hong Kong, S.A.R. of China, Indonesia, Romania, Hungary, Saudi Arabia, Venezuela, Vietnam, and Switzerland. eBay also owns numerous pending trademark applications for the EBAY mark in Canada, Egypt, India, Malaysia, Philippines, Poland, Brazil, Singapore, and Ukraine. eBay expects that registration certificates for these pending applications will issue in due course.
4.3. Complainant operates its primary Web site at the domain address "www.eBay.com". eBay provides its services in numerous countries around the world, including Canada, France, Australia, Germany, Japan, Italy, the United Kingdom, Austria, Switzerland, New Zealand, the Netherlands, Ireland, Taiwan, Switzerland and Singapore, and its services are advertised in those markets. The eBay service is accessible from any country that has access to the Internet.
4.4. Complainant owns many domain names that consist of the EBAY trademark plus the addition of a generic or descriptive term. These domain names include, but are not limited to, the following: <ebaysports.com>, <ebaymotors.com>, <ebayaddress.com>, <ebayappraisal.com>, <ebayappraisals.com>, <ebaykid.com>, <ebaylands.com>, <ebayauctionnews.com>, <ebayautotrader.com>, <ebay-magazine.com>, <ebayenglish.com>, <ebayhometown.com>, <ebayresidence.com>, <ebaypremium.com>, <ebaywatch.com>, <ebaystore.com>, <ebayclassifieds.com>, and <ebayparts.com>.
4.5 Respondent Pisoft registered its domain name on December 15, 1999.
5. Parties’ Contentions
5.1 The Domain Name is confusingly similar to the EBAY trademark. In particular:
a. The Domain Name consists of the EBAY trademark plus the addition of a generic term "business." As a result, the most prominent part of the Domain Name is the EBAY mark. Because the Domain Name incorporates the identical EBAY trademark, an Internet user or consumer viewing a Web site located at such domain address would be likely to assume that the Web sites and/or operators are somehow sponsored by, or affiliated with eBay, when they are not.
b. The fact that eBay routinely employs its EBAY mark with other words in domain names increases the likelihood of confusion. For example, eBay has registered the domain name <ebaysports.com> and uses the name EBAY SPORTS to promote its services related to sporting goods and sports memorabilia. In addition, eBay has registered the domain name <ebaymotors.com> and uses the name EBAY MOTORS to promote its online vehicle trading services. eBay also owns a significant number of domain names that consist of the EBAY trademark plus the addition of a generic term. Accordingly, an Internet user familiar with the EBAY mark is likely to be confused when encountering the Domain Name.
c. By adopting a domain name that incorporates the identical EBAY mark and simply adds a generic term, Respondents are attempting to capitalize on the eBay name. Respondents clearly are hoping to mislead consumers to believe that the Domain Name and/or its operators are affiliated with eBay.
d. It is especially likely that consumers will believe that the Domain Name <ebaybusiness.com> is associated with eBay Inc. because there is a wide selection of business products available on eBay. There are over 100,000 business products listed for sale on eBay each week, including capital equipment, office products, computers, networking products, and telecommunication and industrial equipment and supplies. Business listings on eBay are projected to account for over $1 billion in gross merchandise sales in 2002.
e. Administrative panels and arbitrators considering similar cases where registrants simply added numerals or generic terms to a famous trademark have found such domain names to be confusingly similar. See, e.g., Caterpillar Inc. v. Roam the Planet, Ltd. (<catmachines.com>), in WIPO Case No. D2000-0275 (addition of the generic word "machines" to complainant’s trademark did not serve to distinguish domain name from mark CAT) (a copy of this decision is provided herewith, along with all decisions cited herein); Nike Inc. v. Farrukh Zia (<enike.com>), in WIPO Case No. D2000-0167 (domain name constructed by addition of generic "e" to famous mark held to be confusingly similar to mark); NCP Marketing Group, Inc. v. Entredomains <taebotv.com>, in WIPO Case No. D2000-0387 (domain name constructed by adding generic "tv" suffix to complainant’s trademark found to be confusingly similar because "[r]espondent does not, by adding a generic noun or common descriptive term or adjective following a word or letter mark, create a new or different mark.").
f. The Domain Name is also phonetically and visually similar to the EBAY mark as well as many other domain names owned by eBay. Administrative panels have found domain names that are phonetically and visually similar to well-known marks to be confusingly similar. See, e.g., Expedia, Inc. v. European Travel Network (<xpediatravel.com>), in WIPO Case No. D2000-0137. Based on these decisions and the facts of this case, the Administrative Panel should find that the Domain Name is confusingly similar to the EBAY trademark.
5.2 As set forth in the Healy Declaration, the EBAY mark is famous: eBay coined and has been using the EBAY trademark since at least as early as September 1995, (long before Respondents registered the Domain Name), in connection with its online person-to-person trading services. eBay has devoted substantial resources to advertise and promote its services and products under the EBAY mark, and the mark embodies the substantial goodwill that eBay has earned as a result of providing high quality services and products. In addition to its own advertising efforts, eBay has been the subject of thousands of unsolicited articles in the media, including national and international print, radio and television, highlighting eBay’s pioneering and successful efforts in online person-to-person trading. eBay was the first, and is one of the most successful, person-to-person auction-style trading sites on the Internet.
5.3 As of September 2002, there were over ten million items listed for bid on the eBay Web site. Each day, over one million new items are listed for sale, and over two million separate bids are placed on items in over 20,000 different categories of goods. In addition to its online trading services, the eBay Web site offers a variety of related services, including currency conversion tools, escrow services, charity auctions, theme-oriented pages, and many others that combine to make eBay a unique person-to-person trading community offering substantial value to its users.
5.4 Complainant enjoys a widespread reputation in the marketplace as a high-quality trading forum. eBay has advertised and promoted the eBay mark across many sites on the Internet, including AOL, Yahoo! and Lycos, and in print and radio media, as well as via a presence at venues such as trade shows and on college campuses. eBay’s advertising efforts have included a high profile television advertising campaign, with placement during popular prime time programming and major sporting events. eBay’s founder and its CEO are often called upon to speak, and interviews of them have been featured in prominent radio and television programs such as The Today Show, National Public Radio, and the National Press Club. In addition, eBay has entered into numerous agreements that have promoted the EBAY name (including via books). As a result, the EBAY name mark is famous and embodies substantial and valuable goodwill. Indeed, the United States Patent and Trademark Office has found the EBAY trademark to be famous.
5.5 Respondents do not use, nor is there evidence of demonstrable preparation to use, a name or trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services;
5.6 Respondents do not use the Domain Name to offer goods or services at a Web site located at that domain address; when "www.eBayBusiness.com" is entered into the address window of an Internet browser, an error message is displayed, indicating that no Web site is available at that address. Moreover, Respondents have not made any demonstrable preparation to use the Domain Name in that manner, as Respondents have not placed any content at those sites since registering the Domain Name in December 1999.
5.7 Because Respondents had notice of eBay’s trademark rights prior to registering the Domain Name, Respondents cannot be viewed as having used a name or trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. Respondents registered the Domain Name in December 1999, long after eBay adopted the EBAY trademark. Respondents had substantial constructive notice of the EBAY mark, as a trademark search on the date of the registration of the Domain Name would have revealed eBay’s registration of the EBAY mark in the United States. eBay’s first trademark registration for the EBAY mark in the United States issued in January 1999, before Respondents registered the Domain Name.
5.8 Additionally, Respondents had actual knowledge of eBay’s trademark rights prior to registering the Domain Name. Respondent Max Malaluan, the Administrative Contact for the Domain Name, is a registered eBay user and has conducted many transactions via eBay. As shown in eBay’s user database, Max Malaluan has been a registered eBay user (User ID maxlm) since October 14, 1998, well before he registered the Domain Name in December 1999. Since registering with eBay, Max Malaluan has completed over 40 transactions on eBay.
5.9 Panels and administrative tribunals considering similar cases where a respondent had constructive notice of a trademark registration when a confusingly similar domain name was registered have found that the respondent had no legitimate interest in the domain name. See, e.g., CCA Industries v. Dailey (<bikinizone.com>), in WIPO Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainant’s mark and mark registered prior to respondent’s domain name); Young Genius Software AB v. MWD (<younggenius.com>), in WIPO Case No. D2000-0591 (constructive notice found where complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondent’s domain name registration).
5.10 Given eBay’s prominence on the Internet and Respondents’ prior registration as an eBay user, it is clear that Respondents registered the Domain Name with full knowledge that including EBAY in their domain name would allow them to divert visitors to any website located at the Domain Name.
5.11 Respondents had no plausible reason to include "eBay" in the Domain Name other than to be associated with and capitalize on the good will of eBay. Administrative panels considering cases where no plausible reason existed for selection of a famous mark as part of a domain name, except to trade on the mark’s good will, have found that the respondent’s conduct could not constitute a bona fide offering of goods and services. See, e.g., Madonna v. Parisi (<madonna.com>), in WIPO Case No. D2000-0847 (finding that intentionally trading on the fame of a mark cannot constitute bona fide use).
5.12 Because Respondents did not reply to eBay’s many attempts to contact them and Respondents do not provide any content at the Domain Name, eBay has no way of knowing if Respondents will assert some purported legitimate interest in the Domain Name. If Respondents do assert such an interest, eBay requests the opportunity to respond to Respondents’ claim.
5.13 There is no evidence that Respondents have been commonly known by the Domain Name.
5.14 Respondents are not affiliated with eBay and have not received any permission or consent to use the EBAY trademark.
5.15 The Domain Name was registered and is being used in bad faith.
a. Respondents registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring registration of the Domain Name to eBay or a competitor of eBay, for valuable consideration in excess of Respondents’ out-of-pocket costs directly related to the Domain Name:
b. Respondents registered the Domain Name in December 1999, long after eBay adopted the EBAY trademark. Respondent Max Malaluan registered for eBay’s services in October 1998, before he registered the Domain Name in December 1999. Thus, Respondents had actual and constructive notice of eBay’s trademark at the time they registered the Domain Name. Actual or constructive knowledge of the Complainant’s rights in the trademark is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, in WIPO Case No. D2000-0137; Pfizer Inc. v. wwwviagra.com, in WIPO Case No. D2001-1455 (respondent’s knowledge of complainant’s VIAGRA mark at the time of registration of the domain name suggests bad faith).
c. Since the Domain Name and the EBAY mark are confusingly similar, an Internet user viewing a Web site located at such domain address would be likely to assume that the Domain Name is somehow sponsored by or affiliated with eBay.
d. No plausible explanation exists as to why Respondents selected the name EBAY as part of the Domain Name other than to trade on the good will of eBay. Despite many attempts by eBay to contact the Respondents, Respondents have never provided any information to contradict the conclusion that Respondents registered the Domain Name in order to benefit from the well-known EBAY mark.
e. Respondents have not made any preparations to offer goods and/or services using the Domain Name. Administrative panels and arbitrators considering cases such as these have noted that the failure to make use of a domain name may indicate that a respondent’s primary intent is to sell the domain name or that the domain name was registered without a bona fide intent to make good faith use. See, e.g., Mondich v. Brown (<americanvintage.com>), in WIPO Case No. D2000-0004; SAir Group v. Reinhart (<qualiflyer.com>), in WIPO Case No. D2000-0482. As the Panel in Educational Testing Service v. TOEFL, in WIPO Case No. D2000-0044) stated, "because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." In this case, since registering the Domain Name over a two and half years ago, Respondents have not placed any content on the site.
f. Respondents have not answered eBay’s repeated communications to inform them of eBay’s trademark rights and to request that they transfer the Domain Name to eBay. See Healy Declaration.
g. Complainant has attempted to contact Respondents by telephone but the number that is listed for Respondents in the WHOIS database is out of service.
h. On August 24, 2000, eBay sent an email to Respondents, informing them of eBay’s rights. Respondents never responded.
i. On August 9, 2002, eBay sent an email to Respondents, informing them of eBay’s rights and asking Respondents to transfer the Domain Name to eBay. Again, Respondents did not respond. On August 14, 2002, eBay then faxed a letter to Respondents at the fax number listed on the WHOIS database asking them to transfer the Domain Name to eBay. The fax was completed and confirmed but Respondents never responded.
j. On August 26, 2002, eBay sent an email to Max Malaluan at the email address that he provided when he registered for eBay’s services. eBay informed Mr. Malaluan of eBay’s rights and asked him to transfer the Domain Name to eBay. Mr. Malaluan never responded.
k. To date, Respondents have not replied to eBay’s many attempts to contact them.
l. Other panels considering similar circumstances have held that failure to respond positively to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zuccarini, in WIPO Case No. D2000-0330.
m. The facts of this case demonstrate that the Domain Name is being used in bad faith. In Telstra Corp., Ltd. v. Nuclear Marshmallows, in WIPO Case No. D2000-0003, the Panelist noted that "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" and concluded that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
n. The factors supporting bad faith use of the Domain Name include, without limitation:
- As recognized by the United States Patent and Trademark Office, "eBay" is a famous trademark and thus entitled to broad protection.
- Respondent Max Malaluan was an eBay user prior to registering the Domain Name and thus had actual knowledge of eBay’s trademark rights prior to his registration and use of the Domain Name.
- Respondents have not responded to numerous emails requesting that they transfer the Domain Name and the telephone number for Respondents is out of service.
- Since registering the Domain Name over two and a half years ago, Respondents have made no positive use of the Domain Name.
- It would be extremely unlikely that Respondents could use the Domain Name without violating eBay’s rights. See Cellular One Group v. Paul Brien (cellularonechina.com), in WIPO Case No. D2000-0028 (finding that it would be "difficult, perhaps impossible" for respondent to use the cellularonechina.com domain name without violating Complainant’s rights); See also, Telstra Corp., Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5.16 The Respondents are in default.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark EBAY and is satisfied that the Complainant has proven ownership of rights in such mark. Furthermore, the Panel finds that the domain name <ebaybusiness.com> is identical or confusingly similar to the service mark in which the Complainant has rights.
6.3 The Panel does not find any evidence in the record of legitimate rights favoring Respondents.
6.4 Finally, the Panel needs to examine the issue of bad faith. Since the U.S. Patent and Trademark Office has stated that EBAY is a famous mark, the record shows that Respondents had actual knowledge of Complainant’s mark and the Domain Name is unused, the Panel finds that there are sufficient "circumstances" under the Policy, Rule 4(b)(i) to evidence bad faith.
Accordingly, the Panel finds that Complainant has met its burden of proof as to the Rules 4(a)(iii) in that the domain name was registered and is being used in bad faith.
7.1 The Panel decides that the Domain Name <ebaybusiness.com> is identical or confusingly similar to the service mark of Complainant, that Respondent has no rights or legitimate interests in such Domain Name, and that the Domain Name in issue has been registered and is being used in bad faith.
7.2 The Panel hereby orders that the registration of the Domain Name <ebaybusiness.com> be transferred to Complainant.
Clark W. Lackert
Date: November 6, 2002