WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc., PayPal Inc. v. Bao Zheng, Two Stooges LLC / Ni Hao, Two Stooges LLC
Case No. D2014-1478
1. The Parties
The Complainants are eBay Inc. (“First Complainant”) and PayPal Inc. (“Second Complainant”) of San Jose, California, United States of America (the “USA”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Bao Zheng, Two Stooges LLC (“First Respondent”) / Ni Hao, Two Stooges LLC (“Second Respondent”) of Nanjing, Jiangsu, China.
2. The Domain Names and Registrars
The disputed domain names <ebay.com.co>, <paypal.com.co> and <plebay.com> are registered with INTERNETX GMBH (the “First Registrar”) and Moniker Online Services, LLC, respectively (the “Second Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2014. On August 28, 2014, the Center transmitted by email to both Registrars a request for registrar verification in connection with the disputed domain names. On August 29, 2014, the First 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 September 3 and 12, 2014, the Second Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to an email communication by the Center, the Complainants sent on September 19, 2014 a confirmation to amend the Complaint.
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 Respondents of the Complaint, and the proceedings commenced on September 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on October 16, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on October 22, 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.
For reasons that are explained in more detail below, the Panel conducted its own check on the historical use that had been made of the disputed domain name <plebay.com> using the Internet Archive at “www.archive.org”. The Panel found a page that the Panel considered pertinent to the case. On November 7, 2014, the Panel issued Administrative Panel Procedural Order No. 1 requesting the Respondents and the Complainants to provide any comments they may have in relation to this page by November 12, 2014. The Complainants responded on November 12, 2014. No response was received from the Respondents.
4. Factual Background
The Complainants are eBay Inc. (“eBay”) and its wholly owned subsidiary, PayPal Inc. (“PayPal”). The first Complainant, eBay, is a large company in the field of online commerce and shopping. It has a global customer base of 233 million people and a global presence in 39 markets. eBay’s main website “www.ebay.com”) is the 28th most visited website in the world and the second most visited website in the world in the shopping category. eBay owns numerous domain names consisting of the term EBAY, including the domain name <ebay.com> which it registered in 1995, as well as, <ebay.net> and <ebay.org> and numerous country extensions such as, for instance, <ebay.cn> (China), <ebay.co> (Colombia), <ebay.fr> (France), <ebay.de> (Germany), <ebay.in> (India), <ebay.it> (Italy), <ebay.es> (Spain), <ebay.sg> (Singapore) and <ebay.co.uk> (United Kingdom).
The first Complainant is the registered proprietor of the trademark EBAY in many countries around the world including, the USA, Colombia and China.
The second Complainant, PayPal Inc., is a company in the field of online payment and money transfers. PayPal has 152 million active accounts worldwide and is available in 203 markets. It was acquired by eBay in 2002. The website “www.paypal.com” is ranked 34th most visited website in the world.
The second Complainant is the registered proprietor of the trademark PAYPAL in many countries around the world including, the USA, Colombia and China.
<ebay.com.co> was registered on February 7, 2010 by the first Respondent. <paypal.com.co> was registered on February 7, 2010 by the first Respondent. <plebay.com> was registered on November 24, 2006 by the second Respondent.
The disputed domain names <ebay.com.co> and <paypal.com.co> are currently not resolving to any website, although they are set to redirect to “http://aizosearch.com/?keywords=mercadolibre” and “http://aizosearch.com/?keywords=paypal”, which contain keywords that make reference to the Complainants, namely “Mercado Libre” – eBay’s marketplace in Latin America - and “PayPal”. Screen captures from the Internet Archive show that <ebay.com.co> and <paypal.com.co> until very recently were pointing to very similar pages displaying commercial links for a variety of goods and services (at “http://aizosearch.com/?keywords=mercadolibre” and “http://aizosearch.com/?keywords=paypal”).
The disputed domain name <plebay.com> currently points to a website also displaying commercial links (for a variety of services, including online dating services). None of the links related to online auctions services or appear to be related to the Complainants. A screen capture from the Internet Archive from February 2007 (which as explained below, the Panel identified itself) showed various links to sites including links such as: “Become an Ebay Success”, “Auction Store Franchise”, “Ebay dropshippers”, “Learn how to use ebay” and “Ebay Business”.
The Respondents have registered domain names incorporating well-known brands, as demonstrated by the following:
The first Respondent is the registrant of many domain names infringing well-known third party trademarks such as <badoo.com.co>, <compusa.com.co>, <converse.com.co> <goggle.com.co>, <googe.com.co>, <goole.com.co>, <goolge.com.co>, <oogle.com.co>, and <myspace.com.co>;
The second Respondent is the registrant of domain names also infringing well-known third party trademarks such as <adıdas.com>, <faceboàok.com>,<gogglegame.com>, <goglegames.com>, <myspaceblocked.com>, <myspaceprofiletracker.com>, and <you20tube.com>.
The Respondents, either by themselves or jointly with their Registrant Organization, Two Stooges LLC, have also been the subject of various proceedings under the Policy, all of which have resulted in a decision to transfer the disputed domain name(s) to the trade mark holder, including the following:
1) General Motors LLC v. Ni Hao, Two Stooges LLC, WIPO Case No. D2012-1205 (<gmcprotectionplan.com>);
2) Research In Motion Limited v. Bao Zheng, WIPO Case No. DCO2011-0024 (<blackberry.com.co>);
3) AB Electrolux v. Registrant : Ni Hao, Two Stooges LLC. / Moniker Privacy Services, WIPO Case No. D2011-1671 (<electroluxinsentives.com>);
4) Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541 (<balenciagaboutique.com>, <balenciagabutikk.com>, <balenciagaloja.com>, <balenciaganegozio.com>, <balenciagaoutlet.com>, <balenciagasklep.com>, <balenciagaspeichern.com>, <balenciagatienda.com>, <balenciagauk.com>, <balenciagawinkel.com>, <billigabalenciaga.com>, <billigebalenciaga.com>, and <halpabalenciaga.com>);
5) Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC, WIPO Case No. D2011-1640 (<intesasanaplo.com>);
6) U.S. Smokeless Tobacco Manufacturing Company LLC v. Ni Hao / Two Stooges LLC, NAF Claim No. 1210001467723 (<skoalbros.com>);
7) Google Inc. v. Ni Hao / Two Stooges LLC, NAF Claim No. 1206001449765 (<googlscholar.com>, <gooleimage.com>, <gooleimages.com>, <goolescholar.com>, <goooglr.com>, and <deletedyoutube.com>); and
8) Redcats USA, L.P. v. Stefan Hansmann / Two Stooges LLC, NAF Claim No. 1106001396286 (<womanwithin.co>).
5. Parties’ Contentions
A.1 Identical or confusingly Similar
With regard to the disputed domain names <ebay.com.co> and <paypal.com.co>, the Complainants submit that the disputed domain names are identical to the registered trademarks EBAY and PAYPAL.
With regard to the disputed domain name <plebay.com> the Complainants submit that the disputed domain name is made entirely up of the registered trademark EBAY and the letters p” and “l” to which the generic Top-Level Domain (“gTLD”) “.com” has been added. The Complainants contend that the addition of these two letters does not diminish the confusing similarity as the dominant component in the disputed domain name is clearly the Complainant’s EBAY trade mark.
A.2 No rights or legitimate interests
The Complainant submits that the Respondents have no rights or legitimate interest in the disputed domain names. The Complainants are not in anyway related to the Respondents.
In addition, with regard to the disputed domain name <plebay.com> the commercial links to site specifically targeting the EBAY trademark shows that there has been no bona fide offering of goods or services.
A.3 Registered and used in bad faith
The Complainants submit that the disputed domain names were registered and are being used in bad faith with the intention of attracting Internet users to the websites under the disputed domain names.
With regard to the disputed domain name <plebay.com> the fact that soon after its registration the fact it resolved to a parking page with commercial links to the EBAY trademark is strong evidence the disputed domain name was registered to take unfair advantage of the EBAY trademark and to direct traffic to the website under the disputed domain name.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
Consolidation of Proceedings
The Complainants have requested “double consolidation” of these proceedings. That is, they have requested consolidation of complaints on the basis that the second Complainant is a wholly owned subsidiary of the first Complainant. The Complainants have also requested consolidation of proceedings against both respondents on the basis that the registrant organization is the same and many of the same factual issues need to be considered in all cases.
The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. The second Complainant is a subsidiary of the first Complainant and they have common interests. The first and second Respondents both state that the registrant organization is “Two Stooges LLC” indicating a common ownership. (See WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.16)
Discussion and Findings in relation to <ebay.com.co> and <paypal.com.co>
The panel will first consider the case in relation to the disputed domain names <ebay.com.co> and <paypal.com.co> before dealing with the disputed domain name <plebay.com>.
A. Identical or Confusingly Similar
The disputed domain names <ebay.com.co> are <paypal.com.co> are made up of the registered trademarks EBAY and PAYPAL with the suffix gTLD “.com.co”. The disputed domain names are identical to the registered trademarks. The first element of the paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondents have not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainants have made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names <ebay.com.co> and <paypal.com.co> were registered in bad faith and are being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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 use of domain names that are identical to well-known trademarks is clearly designed to attract custom to the respondent’s websites.
Discussion and Findings in relation to <plebay.com>
The disputed domain name <plebay.com> raises more difficult issues than the disputed domain names <ebay.com.co> and <paypal.com.co>. Two factors made this case, initially, difficult for the Panel to determine. These were, first, that the disputed domain name <plebay.com> is not identical to the trademark EBAY and could conceivably be used in way that is not confusingly similar to the first Complainant’s trademark EBAY (discussed in more detail below).
Second, and more importantly, the disputed domain name <plebay.com> had been registered for close to eight years. From the documents filed by the Complainants there was no evidence the disputed domain name <plebay.com> had been used in a way that directly referenced the Complainants or their trademarks. This made it difficult for the Panel to determine that the disputed domain name had been registered more than 8 years ago in bad faith.
Nevertheless this Panel’s findings in relation to the disputed domain name <ebay.com.co> and <paypal.com.co> show there is ample evidence the Respondents (and its common organization “Two Stooges LLC”) are currently, and have for some time been, engaged in domain name squatting.
This Panel agrees with the general consensus expressed in paragraph 4.10 of the WIPO Overview 2.0 that there should be no laches or estoppel in domain name proceedings. The Panel also understands that right holders may also be constrained by a range of issues including budgetary from bringing timely complaints against registrants of domain names.
However, Article 4(a) of the UDRP provides:
“In the administrative proceeding, the complainant must prove that each of these three elements are present.”
Where there has been a long delay in bringing proceedings, this burden can be harder to discharge. Complainants must be conscious of presenting all available evidence that will assist the Panel in determining a case.
In this case, in order to assist it to reach a finding, the Panel conducted its own research on the Internet Archive. Complainants should not, however, have an expectation that panels will do so. The UDRP process is designed to provide relatively quick and cost-efficient resolution to domain name disputes. Panelists are given a relatively short time to render a decision and have no obligation to do their own research. (See WIPO Overview 2.0, paragraph 4.5). Indeed, any research they undertake should be limited. Complainants do have a duty to under Article 4(a) of the UDRP to prove their case and should put forward all the available evidence they can locate.
As has been set out above, the search conducted by the Panel revealed a page from February 2007, a few months after the disputed domain name <plebay.com> was registered, which contained numerous links to pages that provided auction services or advertised themselves by the use of the EBAY trademark. This evidence appeared to be highly relevant to the case.
The Panel considered that procedural fairness required the Panel to give both the Complainants and the Respondents to comment on the evidence via Administrative Panel Procedural Order No. 1. This was so, even though the Respondents had defaulted and not filed a Response. Natural justice requires that a party to proceedings be given an opportunity to make observations in relation to new evidence that the panel considered relevant to its decision.
The Panel now turns to the decision in this case.
A. Identical or Confusingly Similar
The Complainants’ trademark EBAY and <plebay.com> are not identical. The question is: are the disputed domain name <plebay.com> and the trademark EBAY confusingly similar? The letters “p” and “l” are the first two letters of the disputed domain name. The Complainant has not suggested they have any particular meaning. Contrary to the Complainants’ submission, the use of the letters “pl” at the beginning of the disputed domain name means that the trademark EBAY does not, in this Panel’s view, necessarily form the dominant part of the disputed domain name. “plebay” can be read as “pleb-ay”, “pl-ebay”, “ple-bay” or, even, “p-lebay”. This means the disputed domain name could be used in a way that is not confusingly similar to the Complainants’ registered trademarks. On the other hand, it could be used in a way that is confusingly similar to the Complainants’ registered trademarks. For example, “pl” is an abbreviation used for Poland and if used in a context related to Poland could be found to be confusingly similar to the Complainants’ registered trademarks.
The Panel notes that normally a panel should only compare a domain name with the complainant’s rights in determining confusing similarity. However, this is not a hard and fast rule and there are cases where the actual use made of the disputed domain name is relevant (see WIPO Overview 2.0 para 1.2 and Biotherm v. Shenzen Seoheqn Cosmetics Co. Ltd, WIPO Case No. D2011-2066).
The evidence before the Panel of the way in which disputed domain name <plebay.com> is currently used does not suggest any direct link to the first Complainant. There are sponsored links on the site the disputed domain name resoles to, but none appear to relate to the first Complainant (or the second Complainant).
However, the use that was made of the disputed domain name <plebay.com> in 2007, soon after it was registered, with numerous links headed eBay appearing on the site, clearly shows that the disputed domain name was intended to be used to suggest a link to the first Complainant. On this basis, the Panel determines that the disputed domain name <plebay.com> and the first Complainant’s registered trade mark EBAY are confusingly similar.
B. No rights or legitimate interests
For the same reasons as given in relation to the disputed domain names <ebay.com.co> and <paypal.com.co>, the Panel finds the Respondents do not have rights or legitimate interests in the disputed domain name <plebay.com>.
C. Registered and used in bad faith
Similarly, it is clear from the page under the disputed domain name <plebay.com> from the Internet Archive from February 2007, that the disputed domain name was registered with the intent to confuse Internet users as to some link with the first Complainant and to direct traffic to the site under the disputed domain name.
The Panel, therefore, finds the disputed domain name <plebay.com> was registered and used in bad faith.
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 names <ebay.com.co> and <plebay.com> be transferred to the first Complainant, and that the disputed domain name <paypal.com.co> be transferred to the second Complainant.
Date: November 19, 2014