WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. Renbu Bai
Case No. D2014-1693
1. The Parties
Complainant is eBay Inc. of San Jose, California, United States of America, represented by Hogan Lovells International LLP, France.
Respondent is Renbu Bai of Lin Cang, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ebayjordans.com> ("Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 30, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 proceeding commenced on October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 30, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on November 7, 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.
4. Factual Background
Complainant operates a well-known online marketplace, primarily located at <ebay.com>. Complainant has at least four registered service marks in EBAY. United States Registration Number 2218732, Community Trade Mark Registration Number 825802, and Chinese Registration Number 1607755 are directed to the mark EBAY. United States Registration Number 2420512 is directed to a stylized EBAY logo. The United States marks claim services in class 35, and the Community and Chinese marks claim services in class 42. All of these marks were registered on or before July 21, 2001. In addition to its primary domain name <ebay.com>, Complainant registered its EBAY Mark with a multitude of other top level domains.
Respondent registered the Disputed Domain Name <ebayjordans.com> on November 6, 2013. Respondent markets "Air Jordan" sneakers on the website at that domain name. The website features "ebayjordans" on the header, but does not otherwise use Complainant's logo or registered marks. Respondent does not include any advertisements on the website other than those for the products it markets.
5. Parties' Contentions
Complainant contends that it owns the EBAY Mark, and that the Disputed Domain Name incorporates and is confusingly similar to that Mark. Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered the Disputed Domain Name in bad faith.
First, Complainant observes that the Domain Name incorporates its EBAY Mark, and only differs by adding the term "jordans" after EBAY, and the generic Top-Level Domain (gTLD) ".com" suffix. Complainant contends that "jordans" describes the Air Jordan shoe brand, and the addition of that descriptive term does not distinguish the Disputed Domain Name from its EBAY Mark. Complainant states that this is particularly so in light of the popularity of Air Jordan branded shoes on its website, and the popularity and renown of the EBAY Mark. Complainant further contends that the ".com" suffix is immaterial when determining whether a domain name is confusingly similar to a mark.
Second, Complainant argues that Respondent cannot demonstrate legitimate interests in the Disputed Domain Name. Complainant avers that Respondent does not have Complainant's permission to use the Mark. Further, Complainant contends that Respondent is not making a bona fide offering of goods and services, but rather is operating a website offering similar services to Complainant. Complainant further argues that the goods sold on Respondent's website are counterfeit, and so cannot be a legitimate fair use. Complainant further asserts that Respondent is not commonly known by the Disputed Domain Name, and has no rights in either the term "ebay" or "jordans".
Third, Complainant contends that the Disputed Domain name was registered and used in bad faith. Complainant argues that the EBAY Mark is highly distinctive and well known, and that Respondent must have been aware of the EBAY service and brand when it registered its domain name. Complainant argues that bad faith can be inferred because of the false address provided on his registration. Complainant certifies that there is no city or town named "Lin Cang" in Washington, and that Respondent's telephone number corresponds to a landline in Binghamton, New York. Complainant also argues that Respondent's intended use of the Disputed Domain Name was to trade on the EBAY Mark to offer similar services to that of Complainant.
In addition to registration, Complainant contends that the Disputed Domain Name is used in bad faith for financial gain. Complainant argues that both the Disputed Domain Name and the services offered cause confusion that Respondent is associated with Complainant. Complainant further alleges that even if the confusion were dispelled upon arriving at Respondent's website, that Respondent intends the Disputed Domain Name to cause initial interest confusion. Complainant further alleges that the look and feel of Respondent's website copies Complainant's, evidencing that Respondent intends to confuse the public into thinking that Respondent is affiliated with Complainant. Complainant further contends that Respondent has acted in bad faith in other circumstances, including by registering domain names containing other famous marks.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the 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.
Respondent provided no response, and the deadline for so doing expired on October 28, 2014. Accordingly, Respondent is in default. Given this default, the Panel can infer that Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the EBAY Mark. The Disputed Domain name and Complainant's Mark are not identical, and so the issue is whether the Disputed Domain Name and Complainant's Mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant's EBAY Mark; (2) the term "jordans"; and (3) the suffix ".com". The relevant comparison to be made is with the second-level portion of the domain name only (i.e., "ebayjordans"), as it is well-established that the Top-Level Domain name (i.e., ".com") should be typically disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR). Here, the Disputed Domain Name incorporates the EBAY Mark in its entirety.
Moreover, prior UDRP panels have recognized that the addition of a merely descriptive term to a famous mark in a domain name is insufficient in itself to avoid a finding of confusing similarity because such an addition fails to detract from the overall impression that the domain name is associated with the famous mark. See Sony Kabushuki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. In the case at hand, the dominant part of the Disputed Domain Name is Complainant's famous EBAY Mark followed by the term "jordans." That following term, "jordans," is descriptive of goods—Air Jordan branded shoes—sold on the domain's corresponding website. Especially in light of popularity of Air Jordan branded shoes on Complainant's own site, the Panel finds that the additional "jordans" term is insufficient to avoid a finding of confusing similarity.
For the forgoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant's EBAY Mark. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant asserts that Respondent has no rights or authorization to use its EBAY Mark. Complainant has alleged, and Respondent has not denied, that Respondent has never been authorized by Complainant to use its EBAY Mark, is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, and is seeking to profit from the goodwill and established reputation of Complainant.
For the forgoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when a respondent attempts to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or of a product or service on the respondent's website.
Complainant has asserted that due to the famous nature of Complainant's Mark, Respondent knew or should have known of Complainant's trademark prior to registering the Disputed Domain Name. Prior panels have found that knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 ("[T]he Complainant's worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the Disputed Domain Name."); see also The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 ("[T]he Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements").
Here, Complainant's EBAY Mark is long-established and well-known internationally. The uncontroverted evidence establishes that Respondent knew or should have known of Complainant's mark prior to the 2013 registration of the Disputed Domain Name. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding registration in bad faith where, "in absence of contrary evidence," the respondent knew or should have known of the complainant's trademark at the time of the domain name registration). Accordingly, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
The Panel finds that Respondent uses the Disputed Domain Name for the purpose of benefitting commercially from the goodwill associated with Complainant's mark. The evidence demonstrates that consumers will be misled by Respondent's website in at least two ways. First, the domain name itself in conjunction with the similarity of services offered confusingly suggests affiliation with, or sponsorship by, Complainant. eBay Inc. v. David Sach, WIPO Case No. D2009-1083 ("Internet users encountering the disputed domain name are likely to be misled into believing that they have found a website legitimately connected to Complainant"). Second, as evidenced by the screenshots submitted by Complainant, the look and feel of Respondent's website is similar to that of Complainant. The use of Complainant's Mark coupled with the strength and fame of Complainant's services supports a finding that this similarity is a bad faith attempt to trade on Complainant's good will.
For these forgoing reasons, the Panel finds that Complainant has proven the third and final element 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, <ebayjordans.com>, be transferred to Complainant without prejudice to any third-party's claim of rights in the AIR JORDAN mark.
Michael A. Albert
Date: November 21, 2014