WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. Chris Jenkins
Case No. D2016-1116
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 Chris Jenkins, Warrington Cheshire, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <ebayuae.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2016. On June 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2016, the 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 accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2016. After the notification of Respondent default, the Respondent sent an email to the Center offering to transfer the disputed domain name to the Complainant.
The Center appointed Peter Wild as the sole panelist in this matter on July 25, 2016. 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 is a leader in the field of online commerce and shopping with a global customer base and presence in 39 markets. Since its inception, the Complainant has provided its online marketplace via its main official website at “www.ebay.com”. According to the Complainant, its main website attracts one billion page views per day. The Complainant owns numerous domain names consisting of the term “ebay”, including the domain name <ebay.com> which it registered in 1995 and in addition, it owns numerous domain names consisting of the EBAY trademark with the addition of a country name. EBAY is protected as a trademark in many territories, including:
- United Arab Emirates Trademark No. 38899, EBAY, registered on April 30, 2003;
- United Arab Emirates Trademark No. 152143, EBAY & Design, registered on September 22, 2011;
- United Arab Emirates Trademark No. 182272, EBAY logo, registered on September 30, 2012;
- U.S. Trademark No. 2218732, EBAY, registered on January 19, 1998;
- U.S. Trademark No. 2420512, EBAY, registered on January 16, 2001;
- European Union trademark No. 1499599, EBAY, registered on June 6, 2001; and
- European Union Trademark No. 825802, EBAY, registered on January 4, 2000.
The disputed domain name was registered on December 25, 2014. Prior to the filing of the Complaint, the disputed domain name resolved to a website offering clothes for sale. The header of the website included the Complainant’s EBAY trademark together with the letters “UAE”. At the time of this decision, the disputed domain name no longer resolves to an active website.
5. Parties’ Contentions
The Complainant asserts that it is a global leader in the field of online commerce and shopping and was created in 1995, when the domain name <ebay.com> was registered. According to the Complainant, it 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”. The Complainant’s main website is the seventh most visited website in the United States, the 26 most visited website in the world, and the second most visited website in the world in the shopping category, according to web information company Alexa and its website generates one billion page views per day. The Complainant therefore contends that the EBAY brand has acquired considerable renown and goodwill worldwide and claims that in 2015, the EBAY trademark ranked 32nd in the Interbrand Best Global Brands.
The Complainant claims that the Respondent has registered and used a confusingly similar domain name <ebayuae.net> in bad faith without having a right or a legitimate interest in the disputed domain name.
The Respondent did not file a substantive response to the Complainant contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of a number of trademarks for EBAY. The disputed domain name only differs from the Complainant’s EBAY trademark by the addition of the geographical term “UAE”. The mere addition of a descriptive term, such as a country name or abbreviation, is insufficient to distinguish the disputed domain name from the Complainant’s trademark. UDRP panels considering similar cases where registrants simply added a country name to a registered trademark have found such domain names to be confusingly similar. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 <ebaykorea>; America Online, Inc. v. Dolphin@Heart (<aolfrance.com>, <aolgermany.com>, <aolireland.com>, <aolspain.com>); WIPO Case No. D2000-0713 and Cellular One Group v. Paul Brien (<cellularonechina.com>), WIPO Case No. D2000-0028.
Therefore, the Panel comes to the conclusion that the Complainant has rights in the trademark EBAY that the disputed domain name is confusingly similar to the Complainant’s EBAY trademarks and consequently, the Panel is satisfied that the first element of the policy met.
B. Rights or Legitimate Interests
According to the Complainant, the Respondent is not an authorized dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its EBAY trademark.
The Respondent cannot assert that it is using the disputed domain name in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy, as the website associated with the disputed domain name displayed very prominently the Complainant’s distinctive and renowned EBAY trademark in relation to similar or identical services. UDRP panels have held that where a respondent operates a website using a domain name that is confusingly similar to the complainant’s trademark and for the same business, there cannot be a bona fide offering of goods or services. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ”Madonna.com”, WIPO Case No. D2000-0847. The Respondent did not and cannot conceivably assert that he is commonly known by the term “ebay”, in accordance with paragraph 4(c)(ii) of the Policy. Neither is the Respondent able to assert that he is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks, in accordance with paragraph 4(c)(iii) of the Policy, as the disputed domain name redirected to an e-commerce website.
In light of the presented evidence and the absence of any substantive response or explanation from the Respondent, the Panel comes to the conclusion that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel accepts that Complainant’s EBAY trademark is distinctive and widely known internationally. When the Respondent registered the disputed domain name in December 2014, the Complainant had already registered and extensively used its EBAY trademark and had acquired substantial renown and repute worldwide. The Respondent must have or should have known the Complainant’s rights at the time of registration of the disputed domain name which is an indication of registration in bad faith, see eBay Inc. v. Shangli Liang, WIPO Case No. D2014-0037 and eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259. Moreover, the presence of a small disclaimer at the foot of the page does not cure the Respondent’s bad faith, in fact, it seems to confirm the Respondent’s awareness of the Complainant at the time it registered the disputed domain name.
There seems also to be a pattern of similar conduct by the respondent, who is also the registrant of a domain name incorporating other well know trademarks, such as <instagrampromoters.com>. The Respondent appears to have previously held the domain names <facebookpromoters.com>, <instagram-shoutout.com>, <realinstagramfollowers.net> and <realinstagramlikes.net>.
For these reasons the Panel concludes that the disputed domain name was registered in bad faith by the Respondent.
The Respondent was using the disputed domain name to attract Internet users originally searching for the Complainant to its website, which in addition clearly displayed Complainant’s widely known trademark, thereby causing a danger of confusion and creating financial gains for the Respondent. The Panel finds that the Respondent was using the disputed domain name for commercial gain, derived from the significant goodwill attached to the Complainant’s trademark. The Respondent’s now passive holding of the disputed domain name does not alter the Panel’s finding in this regard.
In light of this, the Panel decides that the disputed domain name was registered and used in bad faith and the third element of the Policy is met.
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, <ebayuae.net> be transferred to the Complainant.
Date: July 28, 2016