WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. Jimmy Kao
Case No. D2015-0570
1. The Parties
The Complainant is eBay Inc. of San Jose, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jimmy Kao of Garden Grove, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ebayd.com> is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 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 the same day 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 April 3, 2015.
The Center verified that the Complaint together with the 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 April 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 29, 2015.
The Center appointed Dennis A. Foster as the sole panelist in this matter on May 5, 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
Founded in 1995, the Complainant is based in the United States but operates online throughout the world. It owns registrations for its EBAY service mark with many authorities including the United States Patent and Trademark Office ("USPTO") (e.g., Registration No. 2218732, registered on January 19, 1999; and Registration No. 2420512, registered on January 16, 2001).
The Respondent is the registrant of the disputed domain name, <ebayd.com>, which was registered on January 2, 2004. The disputed domain name is linked to a static webpage that contains a logo similar to logos used by the Complainant for its EBAY mark and that offers the disputed domain name for sale.
5. Parties' Contentions
The Complainant, eBay Inc., was created in the United States in 1995 and is a global leader in online commerce and shopping. Its main website, located at "www.ebay.com", is the 20th most visited website in the world and second in the world in the shopping category. In 2014 the value of goods purchased on the site totaled USD 72 billion.
The Complainant has many registrations for the EBAY mark (including with the USPTO), and it ranked 28th in the 2014 Interbrand's Best Global Brands Report. Moreover, the Complainant owns dozens of other domain names that incorporate the mark, e.g., <ebay.net>, <ebay.org>, <ebay.biz>, <ebay.asia>, etc. The fame of the Complainant's mark has been enhanced greatly by the amount of online investment committed to it by the Complainant, and is attested to by the many prior cybersquatters that have attempted to infringe upon it through the registration of confusingly similar domain names.
The disputed domain name, <ebayd.com>, is confusingly similar to the EBAY mark. The disputed domain name incorporates the mark fully, and the additional "d" is a simple misspelling that does nothing to avoid the confusing similarity.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has neither licensed nor authorized the Respondent to use the EBAY mark in a domain name or otherwise. The Respondent cannot conceivably assert that he is commonly known by the disputed domain name.
The disputed domain name leads to a website that prominently displays a logo that is remarkably similar to the Complainant's own logo in color and design, and that website is apparently not used for any purpose other than to state that the disputed domain name is for sale. As a result, the Respondent cannot claim that the disputed domain name is used for a bona fide offering of goods or services or in a legitimate noncommercial or fair use manner.
The disputed domain name was registered and is being used in bad faith. The Complainant's EBAY mark is highly distinctive and world famous, and thus the Respondent, based in the United States, must have been aware that the disputed domain name infringed upon the Complainant's rights. This is most clearly evidenced by the similarity of logos displayed in connection with the disputed domain name and utilized by the Complainant. Moreover, the Respondent's offer to sell the disputed domain name is indicative of bad faith registration and use. This case represents a common form of typo-squatting, which has been found in many prior UDRP cases to constitute bad faith. Finally, the Respondent's deceptive use of a phoney identity in registering the disputed domain name is still more evidence of bad faith registration.
The fact that the Complainant has failed to file a claim regarding the disputed domain name in the approximately ten years since its registration is irrelevant, as the doctrine of laches has not been recognized generally under the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to Policy, paragraphs 4(a)(i) – (iii), the Complainant may prevail in this proceeding and the Panel may order a transfer of the disputed domain name, <ebayd.com>, provided that the Complainant can demonstrate that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Through its independent knowledge, the Panel is aware that the Complainant is well-known globally and has an equally well-known service mark, EBAY. Moreover, the Complainant has provided in its filing indisputable evidence (Annex 13 of the Complaint) of its registration of that mark with appropriate authorities, including the USPTO. Consequently, the Panel has no trouble in determining that the Complainant has the requisite rights in the EBAY mark for the purposes of Policy, paragraph 4(a)(i). See, eBay Inc. v. rle enterprises, WIPO Case No. D2008-1068 ("The Panel finds that Complainant eBay Inc., through its use of and registrations covering the EBAY mark, has rights in such mark."); and eBay Inc. v. xu kefei (kefei xu), WIPO Case No. D2008-0481 ("The Complainant has proved that it is the registered proprietor of the mark EBAY, in numerous jurisdictions.").
In the Panel's view, the disputed domain name, <ebayd.com>, is nearly identical to the Complainant's EBAY mark. The minor difference is the addition of the letter "d", and the suffix ".com" after the full mark. A consensus of prior UDRP decisions has found that such minor distinctions do not prevent a disputed domain name from being, if not identical, at least confusingly similar to an established mark. Therefore, the Panel determines that the disputed domain name, <ebayd.com>, is confusingly similar to the Complainant's EBAY service mark. See, eBay Inc. v. Shangli Liang, WIPO Case No. D2014-0037, (finding <ebaynow.com> to be confusingly similar to the EBAY mark).
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has declined to file a Response in this proceeding, and thus the Panel will regard all of the reasonable contentions put forth by the Complainant as true, unless otherwise contradicted in the record or by the independent knowledge of the Panel. See RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540 ("A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true [...]").
The Panel accepts the Complainant's reasonable contention that it never licensed nor gave permission to the Respondent to use the EBAY mark in any manner whatsoever. As such, and in light of the Panel's conclusion that the disputed domain name is confusingly similar to that mark, the Panel believes that the Complainant has sustained a prima facie case that the Respondent has no rights or legitimate interests in that name. It thus becomes incumbent upon the Respondent to rebut that case by providing clear evidence that it does possess such rights or interests. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 ("[...] panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.")
As noted above, the Respondent has provided no evidence. Nonetheless, before making its ruling, the Panel will examine the record to determine whether any case can be made on behalf of the Respondent pursuant to paragraph 4(c) of the Policy, which provides criteria to support a claim to rights or legitimate interests in a disputed domain name as follows:
(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] 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.
First, the Panel discerns no reason to believe that the Respondent, Jimmy Kao, has been commonly known as <ebayd.com>, and there is no evidence in the record that the Respondent even owns a company of any kind. Therefore, paragraph 4(c)(ii) of the Policy does not apply in this case. Second, the Panel is compelled to accept the Complainant's reasonable and uncontested contention that the disputed domain name resolves to a webpage that merely mimics the Complainant's own logo and suggests that the disputed domain name is for sale, but fails to make any offering - bona fide or not - of goods or services. Therefore, paragraph 4(c)(i) of the Policy does not apply to this case. Third, that use – linkage to a static page containing a logo and an offer to sell the disputed domain name – also fails to constitute legitimate noncommercial or fair use of the disputed domain name in the opinion of the Panel. Therefore, subparagraph 4(c)(iii) of the Policy does not apply in this case. See, Banco Bradesco S.A., Alvorada Cartões, Crédito Financiamento e Investimento v. Comar Ltd., Domain Administrator / Whois Privacy Protection Service, WIPO Case No. D2009-1784 and Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 ("[..] the Panel finds that the mere offering of the [disputed] domain name for sale to any party does not constitute a right or legitimate interest in that name."). In summation, the Panel concludes that Policy, paragraph 4(c) is inapplicable to this case and thus that the Respondent has failed to rebut the Complainant's prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
As noted above, the Panel considers the EBAY service mark to possess an exceedingly high degree of global recognition in connection with a well-known provider of online commercial services. Prior UDRP panels have reached the same conclusion, and several among them have determined that that circumstance in and of itself is a sufficient reason to find that a disputed domain name that is confusingly similar to that mark was registered and is being used in bad faith. See, for example, eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693 ("Prior panels have found that knowledge, actual or inferred, of a strong mark is evidence of registration in bad faith [...]. Here, Complainant's EBAY Mark is long-established and well-known internationally."); eBay Inc. v. Artgrafi Multimedya Hizmetleri, WIPO Case No. D2008-1935 ("Given eBay's prominence on the Internet, the Panel finds that Respondent registered the Domain Name in bad faith, […]. Furthermore, Respondent's registration and use of a Domain Name that incorporates Complainant's entire EBAY trademark supports a finding of bad faith."); and eBay Inc. v. rle enterprises, supra ("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. Registration of a domain name containing a famous mark is strong evidence of bad faith.").
Moreover, the Panel accepts the Complainant's supported contention (Annex 11 of the Complaint) that the Respondent's webpage attached to the disputed domain name offers it for sale, presumably for a price far in excess of the Respondent's out-of-pocket registration costs. The Panel views this as a violation of paragraph 4(b)(i) of the Policy. See Educational Testing Service v. TOEFL, supra, (" [...] the Panel concludes that the Respondent did in fact register and use the [disputed] domain name in bad faith. It has made no use of the [disputed] domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the [disputed] domain name commands would largely be based on the trademark of the Complainant.")
The Complainant raised the issue that the doctrine of laches might be used as a defense by the Respondent, as the disputed domain name was registered more than ten years before filing of the Complaint. However, the Panel is disinclined to apply that doctrine, as the Respondent, who did not respond in this case, did not raise that defense and previous UDRP panels have been reluctant to consider the applicability of laches to Policy cases. The Panel believes that to hold trademark and service mark holders to strict time limits in bringing cases would tax them with the considerable burden and expense of constantly patrolling the Internet for every conceivable permutation of their marks that unscrupulous cybersquatters might possibly concoct. See, eBay Inc. v. Shangli Liang, supra ("As to the doctrine of laches, the Panel finds that, in line with the majority of the WIPO panels, the delay in bringing a complaint does not of itself prevent a complainant from being able to succeed under the UDRP where a complainant, like in the present case, can establish a case on the merits under the requisite three elements.").
Taking into account these circumstances, the Panel is easily persuaded that the disputed domain name was registered and is being used in bad faith.
As a result, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(iii).
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, <ebayd.com>, be transferred to the Complainant.
Dennis A. Foster
Date: May 19, 2015