WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eBay Inc. v. D Pontiac / Whois Privacy Services Pty Ltd

Case No. D2015-0490

1. The Parties

The Complainant is eBay Inc. of San Jose, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondents are D Pontiac of Toronto, Ontario, Canada and Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia (collectively "the Respondent").

2. The Domain Name and Registrar

The disputed domain name <wwwwebay.com> ("the Domain Name") is registered with Fabulous.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 20, 2015. On March 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 27, 2015.

The Center verified that the Complaint together with amended 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, and the proceedings commenced on March 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2015.

The Center appointed Andrea Mondini as the sole panelist in this matter on April 30, 2015. 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

The Complainant eBay operates a leading online marketplace.

The Complainant has registered numerous trademarks consisting of or containing the term EBAY in many jurisdictions throughout the world, including in Canada, where the Respondent is based (the "EBAY
Marks"). Such trademark registrations include but are not limited to the following:

- U.S. Trademark No. 2218732, registered on January 19, 1999;

- U.S. Trademark No. 2420512, registered on January 16, 2001;

- Community Trademark No. 825802, registered on January 4, 2000;

- Canadian Trademark No. TMA645254, registered on August 2, 2005 (filed in 2000);

- Canadian Trademark No. TMA685281, registered on April 2, 2007 (filed in 2001);

- Australian Trademark No. 781906, registered on August 13, 1999; and

- Australian Trademark No. 781907, registered on August 13, 1999.

The Domain Name was registered by the Respondent on April 10, 2006.

5. Parties' Contentions

A. Complainant

The Complainant contends:

- That the Complainant is a global leader in the field of online commerce and shopping. Since its creation in 1995, eBay has become a powerful marketplace for the sale of goods and services and has constantly grown and acquired notoriety;

- That eBay is widely recognised as the "world's largest online marketplace", with a global customer base of 233 million people and a global presence in 39 markets. Since its inception, the Complainant has provided its online marketplace via its main official website at "www.ebay.com". Given the exclusive online nature of the Complainant's online marketplace, the Complainant's domain names consisting of the term EBAY are at the heart of its entire business;

- That the Complainant owns numerous domain names consisting of the term EBAY, including the domain name <ebay.com>;

- That the Respondent registered the Domain Name using a privacy protection service and thus no further details were known about the Respondent at the time of filing of the Complaint;

- That the Domain Name is currently pointing to a parking page displaying commercial links targeting the EBAY trademark, including "eBay Online Shopping", "eBay Online", "EeBay", "eBay Auctions" and referring to general services, such as "online shopping" and "auction", precisely the services offered by the Complainant. Upon clicking on said links, Internet users are redirected to third party websites that are commercial in nature;

- That the Domain Name is offered for sale on the website associated with the Domain Name. The following hyperlinked message is displayed at the top of the website: "BUY THIS DOMAIN The domain wwwwebay.com may be for sale by its owner!. Upon clicking on this link, the Internet user is redirected to a Sedo auction platform where the Internet user is invited to make an offer to acquire the Domain Name.

- That a search carried out by the Complainant has revealed that the Respondent has engaged in a pattern of typosquatting third party brands, for instance, <abercrombbie.com>, <adobeacobat.com>, <americamexpres.com>, <attwirreless.com>, <bethandbodyworks.com>, <canoncamra.com>, <comtinentalairlines.com>, <delataairline.com>, <dishnewtork.com>, <donperignon.com>, <hewelettpackard.com>, <holdayinnexpress.com>, <louisvoiton.com>, <mairott.com>, <merriothotel.com>, <nortonanitivirus.com>, <symatntec.com>, <unitedairrlines.com>, <victoriassercert.com>.

- That the Domain Name is confusingly similar to the EBAY Marks.

- That the Respondent has no rights or legitimate interests in the Domain Name.

- That the Respondent registered and used the Domain Name in bad faith.

- That on May 28, 2014, the Complainant's lawyers sent a cease and desist letter to the Respondent asserting its rights and requesting the transfer of the Domain Name, but the Respondent did not reply to the Complainant's cease and desist letter.

B. Respondent

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 succeed, the complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;

(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

The Complainant has shown that it has rights in the EBAY Marks.

Prior UDRP panels have recognized the strength and renown of the EBAYMarks, and have ordered infringing respondents to transfer infringing domain names to the Complainant (see e.g., eBay Inc., PayPal, Inc. v. Rene Rene/Wuxi Yilian LLC, WIPO Case No. D2015-0010; eBay Inc. v. Du Hongxia/Liu Yujiao/WHOIS AGENT, DOMAIN WHOIS PROTECTION SERVICE, WIPO Case No. D2014-2015 ; eBay Inc. and Facebook Inc. v. Santosh Ghimire, Do Surf In P. Ltd. and Babin Manandhar, WIPO Case No. D2014-1629 .

The Domain Name incorporates the term EBAY in its entirety. Prior UDRP panels have held that "when a domain name wholly incorporates a complainant's registered mark that is sufficient to establish identity or confusing similarity for purposes of the Policy." See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Furthermore, the addition of the letters "www" w[4x], obviously a typo of which stands for "world wide web" but without the usual period, is insufficient to distinguish the Domain Name from the Complainant's trademark as the distinctive element is the term EBAY. Prior UDRP panels have held that the letters "www" do not have distinguishing capacity and are insufficient to avoid confusion with a complainant's trademark (See e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

It is generally accepted that the suffix, such as ".com", is immaterial when assessing whether a domain name is identical or confusingly similar to a complainant's trademark.

Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's EBAY Marks in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Although the complainant bears the ultimate burden of establishing this element of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has established a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserted 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 Marks. The Respondent has not denied these allegations.

The Complainant alleges that the Respondent cannot assert that it is using the Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, as the Domain Name is pointing to a parking page containing sponsored links targeting the Complainant's EBAY brand and offering the Domain Name for sale. The Panel finds that such use of the Domain Name cannot be considered a bona fide offering of goods or services as the Respondent is clearly seeking to unduly profit from the Complainant's goodwill for its own financial gain. Prior UDRP panels have held that parking pages built around a trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii)". See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).

Nothing suggests that the Respondent is commonly known by the term "ebay", in accordance with paragraph 4(c)(ii) of the Policy. Nor can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Domain Name, pursuant to paragraph 4(c)(iii) of the Policy, for the same reasons as described above. Indeed, the Domain Name is pointing to a parking page that is clearly commercial in nature, as evidenced by the presence of numerous commercial links from which the Respondent (or a third party) is undoubtedly obtaining financial gain.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant's EBAY Marks are highly distinctive and well known internationally and the Complainant has continuously provided its online marketplace services since 1995. Thus, by the time the Respondent registered the Domain Name in 2006, the Complainant had already registered and extensively used its EBAY Marks throughout the world and acquired substantial renown and repute worldwide, (including in Canada, where the Respondent is based). Thus the Respondent could not have been unaware of the Complainant's rights at the time of registration of the Domain Name. See eBay Inc. v. Shangli Liang, WIPO Case No. D2014-0037.

The fact that the Domain Name consists of a common mistake made by Internet users when seeking the Complainant's official website at "www.ebay.com" (by typing an additional "w" instead of the "dot"), is a strong indication that the Respondent registered the Domain Name in bad faith. Prior UDRP panels have held that "the act of 'typosquatting' or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se." See Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 ; and ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 .

The fact that the website associated with the Domain Name prominently displays the message "BUY THIS DOMAIN The domain "wwwwebay.com" may be for sale by its owner!" clearly demonstrates that that the Respondent registered and is using the Domain Name "primarily for the purpose of selling it, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name", in accordance with paragraph 4(b)(i) of the Policy.

Finally, the fact that the Respondent has engaged in a pattern of typosquatting well-known trademarks, as described above, is further strong evidence of bad faith registration. See MouseSavers, Inc. v. Tsung, d/b/a www.wwwmousesavers.com, WIPO Case No. D2004-1034.

The Panel finds that the Respondent is intentionally using the Domain Name, which identically reproduces the EBAY Marks with the addition of the typo prefix "wwww", to capture Internet users who mistakenly or inadvertently add an extra "w" and omit the "dot" when searching for the Complainant's website, and divert them to the Respondent's parking website. Prior UDRP panels have held that such use of a domain name is strong evidence of bad faith, in accordance with paragraph 4(b)(iv) of the Policy. See InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-00069.

Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <wwwwebay.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: May 18, 2015