WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eBay Inc. v. Shangli Liang

Case No. D2014-0037

1. The Parties

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

The Respondent is Shangli Liang of Guimiaoxincun, Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <ebaynow.com> 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 January 10, 2014. On January 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2014, 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.

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 Respondent of the Complaint, and the proceedings commenced on January 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2014.

The Center appointed Luca Barbero as the sole panelist in this matter on February 25, 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

The Complainant has been operating an on-line trading and auction website at “www.ebay.com” since September 1995.

The Complainant is the owner of several trademark registrations consisting of or including EBAY, such as the Community trademark No. 825802 for EBAY (word mark), registered on May 15, 1998, in class 42, and the Chinese trademark Nos. 1418902 for EBAY (word mark), registered on July 7, 2000, in International class 35; 1607755 for EBAY (word mark), registered on July 21, 2001, in International class 42; 1607756 for EBAY (design mark), registered on July 21, 2001, in International class 42; 1615633 (word mark), registered on August 7, 2001, in International class 41; and 1636736 for EBAY (word mark), registered on August 21, 2001, in International class 16.

The EBAY trademark ranked 28th in the 2013 Interbrand Best Global Brands.

The renown of the Complainant’s trademark EBAY has been recognized in prior UDRP decisions, including the following: eBay Inc. v. Maria Cecilia Vieites, WIPO Case No. D2011-1212, eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259, eBay Inc. v. David Sach, WIPO Case No. D2009-1083, eBay Inc. v. rle enterprises, WIPO Case No. D2008-1068, eBay Inc. v. Fu ZhiYong, WIPO Case No. D2007‑0865, eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, eBay Inc., v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a G L Liadis and Computing Ltd. WIPO Case No. D2000-1463.

The Complainant is the owner of numerous domain names consisting of the trademark EBAY, such as <ebay.com>, registered in 1995, and, amongst others, the following domain names: <ebay.net>, <ebay.biz>, <ebay.org>, <ebay.asia>, <ebay.travel>, <ebay.at>, <ebay.be>, <ebay.cn>, <ebay.net.cn> and <ebay.org.cn>.

The disputed domain name <ebaynow.com> was registered by the Respondent on September 23, 2004 and is currently pointing to a blank page. According to the screenshots submitted by the Complainant and not contested by the Respondent showing the use of the disputed domain name in the past years, the disputed domain name was originally redirected to a web site offering domain names for sale or lease, including the disputed domain name, and was subsequently pointed to a parking page containing sponsored links to different goods and services, including a link to the Complainant’s official website at “www.ebay.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that the trademark EBAY is used extensively throughout the world, including in China, in connection with an online marketplace for the sale of a variety of goods and services.

The Complainant points out that its services are strongly associated with the term “now” since it allows its customers to purchase an item by placing a bid in the eBay auction or by using the “Buy it Now” option and also offers a local shopping service in the United States called “eBay Now”, available at “www.ebay.com/now”, allowing customers to purchase products from local retailers and have them hand-delivered by eBay in about an hour the very same day.

The Complainant highlights that the term “ebay” is exclusively associated with the Complainant and that all search results obtained by typing the term “ebay’ in the Google search engine available at “www.google.com” refer to the Complainant.

The Complainant further states that it has made substantial investments to develop a strong presence online by being active on different social media web sites, including Facebook, Twitter, YouTube and LinkedIn, through dedicated EBAY pages.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark EBAY since it only differs from the Complainant’s trademark by the addition of the adverb “now”, which is insufficient to distinguish the disputed domain name from the trademark EBAY, and the “.com” generic Top-Level Domain (“gTLD”) suffix, which is immaterial when determining whether a domain name is identical or confusingly similar to a complainant’s trade mark.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Complainant states that:

- 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 trademark EBAY;

- The Respondent cannot conceivably assert that it is commonly known by EBAY, in accordance with Paragraph 4(c)(ii) of the Policy, and has not secured or even sought to secure any trademark rights in the term, as revealed by a search carried out by the Complainant;

- The Respondent appears to have used the disputed domain name to point to a parking web site containing various sponsored links for a variety of goods and services, including a link making direct reference to the Complainant’s official web site at “www.ebay.com”, and such use for a parking web site cannot of itself be interpreted as conferring rights or legitimate interests arising from a “bona fide offering of goods or services”;

- The Respondent cannot assert that it has made or that it is currently making a legitimate noncommercial or fair use of the disputed domain name, pursuant to paragraph 4(c)(iii) of the Policy, as the disputed domain name has been used to point to a parking web site that is - by means of pay-per-click advertising or some other type of revenue generating scheme - clearly commercial in nature;

The Complainant also asserts that the disputed domain name was registered and used in bad faith, based on the following circumstances:

- The Complainant’s trademark EBAY is 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 disputed domain name nine years later in 2004, the Complainant had already registered and extensively used its EBAY trade mark throughout the world and acquired substantial renown and repute worldwide, including in China, the country of residence of the Respondent, so that the Respondent must have known of the Complainant’s EBAY service and brand at the time of registration of the disputed domain name;

- The fact that the Respondent deliberately chose to register the term EBAY, one of the most renowned and distinctive online brands in the world, as part of its domain name is clear evidence of bad faith registration, as the disputed domain name could simply not have been chosen for any reason other than to profit from the considerable goodwill and reputation attached to the Complainant's trademark;

- The addition of the term ”now” in the disputed domain name reinforces the likelihood of confusion with the Complainant, given that the Complainant provides several services that use the term “now”, including “eBay Now"” and “Buy It Now”. Thus, the Complainant submits that the Respondent is using the disputed domain name to cause “initial interest confusion”. The fact that the confusion is dispelled upon arriving on the website does not cure the Respondent’s bad faith given that the Respondent is still misappropriating the goodwill attached to the Complainant’s trademark;

- The fact that the Respondent is currently using the disputed domain name to point to a blank page does not cure the Respondent's bad faith given the overall circumstances of the present case, in particular the past use of the disputed domain name and the worldwide renown of the Complainant’s trademark. Indeed, given the fame of the trademark EBAY, there simply cannot be any actual or contemplated good faith use of the disputed domain name;

- The fact that the Respondent did not respond to the cease and desist letter sent by the Complainant’s lawyers on August 26, 2013 by registered post and email constitutes a further suggestion of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name <ebaynow.com> entirely reproduces the Complainant’s registered trademark EBAY with the addition of generic word “now” and the generic Top-Level Domain (gTLD “.com”. For the purposes of determining identity or confusing similarity in UDRP proceedings, the gTLD does not need to be considered.

According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademark EBAY according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii)of the Policy requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name.

With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name WIPO Overview 2.0, paragraph 2.1).

In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent, which has not responded to the Complaint, has failed to demonstrate any rights and/or legitimate interests in the disputed domain name.

The Complainant has not authorized the Respondent’s use of the trademark EBAY and there is no evidence showing that the Respondent might be commonly known by the disputed domain name. In addition, from the screenshots submitted by the Complainant and not contested by the Respondent, showing that the disputed domain name was redirected in the past to a web site where the disputed domain name was offered for sale and, subsequently, to a parking page with commercial links, the Panel infers that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or service and has not made a legitimate noncommercial or fair use of the disputed domain name.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interest in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrates that the disputed domain name has been registered and is being used in bad faith.

The Panel finds that, in view of the Complainant’s prominence on the Internet and of the well-known character of the trademark EBAY, recognized also in several prior UDRP decisions, the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration of the disputed domain name.

In this Panel’s view, the Respondent registered and used the disputed domain name to intentionally attract, for its own commercial gain, Internet users to its web site, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web site by the Complainant according to paragraph 4(b)(iv) of the Policy.

This conclusion is supported by the fact that, based on the evidence submitted by the Complainant and not challenged by the Respondent, the disputed domain name was pointed in the past to a web site where the disputed domain name was offered for sale and, subsequently, to a parking page with sponsored links referring also to the Complainant’s web site.

With reference to the current redirection of the disputed domain name to a blank non-operative page, the Panel finds that, in light of the well-known character of the Complainant’s trademark and of the prior use of the disputed domain name highlighted in the screenshots on records, the Respondent’s current lack of active use of the disputed domain name does not prevent the finding of bad faith. The Panel also notes that the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the Complaint is a further circumstance evidencing the Respondent’s bad faith.

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.

In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

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 disputed domain name <ebaynow.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: March 11, 2014