WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eBay Inc. v. Vann Heng, iTech

Case No. D2013-2108

1. The Parties

The Complainant is eBay Inc. of San Jose, California, United States of America (the “USA”), represented by Hogan Lovells International LLP, France.

The Respondent is Vann Heng, iTech of Phnom Penh, Cambodia.

2. The Domain Name and Registrar

The disputed domain name <ebaycambodia.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2013. On December 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2013, 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 December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.

The Center appointed David J.A. Cairns as the sole panelist in this matter on January 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

The Complainant is a Californian corporation in the online commerce and shopping sector. Since its creation in 1995, the Complainant has provided its online marketplace via its main official website at “www.ebay.com”. The Complainant has over 124 million active registered users around the world and its website generates 1 billion page views per day.

The Complainant is the owner of the United States registered trademark No. 2218732 for the word mark EBAY, registered on January 19, 1999. The Complainant has registered numerous trademarks consisting of or containing the term “ebay” in many jurisdictions throughout the world, including several markets in Asia Pacific (for example in Malaysia, Indonesia, China or Hong Kong, China). These trademark registrations predate the registration of the disputed domain name.

The trademark EBAY appears on the Complainant’s website at “www.ebay.com” in multi-coloured lower case type on the top left side of the screen with the ‘e’ in red, the ‘b’ in blue, the ‘a’ in yellow, and the ‘y’ in green.

In addition to the domain name <ebay.com> registered in 1995, the Complainant also owns numerous other domain names incorporating the trademark EBAY, including numerous domain names consisting of the EBAY trademark with addition of a country name.

The disputed domain name was registered on June 12, 2012. The disputed domain name points to a website that offers online marketplace services. The Panel viewed the website hosted at the disputed domain name on January 20, 2014. The word “ebay” appeared in multi-coloured lower case type on the top left side of the screen with the “e” in red, the ”b” in blue, the “a” in yellow, and the “y” in green. There were various options on the landing page for selecting categories of goods and services. There are examples of products available on the website, and also advertisements. The website is largely in English, although some of the advertisements use another script. There is information as to how to register for the website or manage advertisements. There was no description as to who operated this website, and no disclaimer or explanation of any relationship with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the EBAY brand has acquired considerable renown and goodwill worldwide to become one of the most celebrated online brands globally. It has a global customer base of 233 million people. In 2013, the EBAY trademark ranked 28th in the Interbrand Best Global Brands.

The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s EBAY trademark. The Complainant states that the disputed domain name incorporates in its entirety the term “ebay”, which prior UDRP panels have considered as sufficient to establish identity or confusing similarity with the registered trademark.

The Complainant further states that the mere addition of a descriptive term, such as a country name, is insufficient to distinguish the disputed domain name from the Complainant’s well-known trademark. The Complainant refers to previous UDRP decisions considering similar cases that have found such domain names to be confusingly similar.

Finally, the Complainant argues that it is generally accepted that the mere addition of a suffix, such as “.com”, is immaterial when determining whether a domain name is identical or confusingly similar to a complainant’s trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. It states 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 trademark. The Complainant further states that the Respondent is not commonly known by the term “ebay” and has not secured or even sought to secure any trademark rights in the term. The Complainant further alleges that the Respondent cannot assert that it is using the disputed domain name in connection with a bona fide offering of goods and services because the website associated with the disputed domain name displays very prominently the Complainant’s highly distinctive and renowned EBAY trademark in relation to identical services, thus in direct competition with the Complainant. Prior 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 simply cannot be a bona fide offering of goods and services. Furthermore, the Complainant states that the website associated with the disputed domain name has the same “look and feel” as the Complainant’s official website at “www.ebay.com”, achieved by the use of similar layout and colour scheme. As held by prior UDRP panels there is clearly not a bona fide offering of goods and services where the Respondent has deliberately designed a website to give Internet users the false impression that they have reached the Complainant’s official website when in fact they have not. Moreover, the Complainant states that neither can Respondent assert that it has made or that it is currently making a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name is being used to point to a commercial website imitating the Complainant’s online marketplace at “www.ebay.com”.

The Complainant further asserts that the disputed domain name was registered and is being used in bad faith. The Complainant states that its EBAY trademark is one of the most renowned brands on the Internet and it is therefore inconceivable that the Respondent could have been unaware of the Complainant’s trademark at the time of registration of the disputed domain name in 2012 given the fact that by this time, the Complainant had long registered and used numerous trademarks EBAY throughout the world and had acquired substantial renown and repute worldwide, including in Cambodia, the country of residence of the Respondent. The disputed domain name could not possibly have been chosen for any reason other than to profit from the considerable goodwill and reputation attached to the Complainant’s trademark. The Complainant further asserts that the Respondent’s subsequent use of the disputed domain name for a website offering identical services to those of the Complainant (an online marketplace), leaves no doubt as to the fact that the Respondent had full knowledge of the Complainant and thus deliberately registered the disputed domain name in bad faith with the intention of taking advantage of the Complainant and its rights.

Finally, the Complainant states that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark to the source, sponsorship, affiliation or endorsement of its website. The Respondent is deliberately using the disputed domain name in order to maliciously mislead Internet users searching for the Complainant to the Respondent’s website which imitates the Complainant’s online marketplace at “www.ebay.com”. In addition, the Complainant alleges that the addition of the country name “Cambodia” in the disputed domain name reinforces the confusion in the mind of Internet users, as it is very likely that they will be misled into believing that the website associated with the disputed domain name is the Cambodian version of the Complainant’s official website. The Complainant also states that the confusion by the disputed domain name is further reinforced because the website has been designed to have the same “look and feel” as the Complainant’s official website so as to deceive Internet users as to the source of the website. Prior panels have held that replicating the “look and feel” of a complainant’s website strongly suggests that the registrant is using the disputed domain name in bad faith. The Complainant further asserts that the Respondent is clearly using the disputed domain name for commercial gain, derived from the significant global goodwill attached to the Complainant’s trademark.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the EBAY registered trademark in the United States referred to above, as well as EBAY trademarks in many other jurisdictions including several in the Asia Pacific region. The Panel also accepts that the trademark EBAY has acquired considerable renown and goodwill worldwide.

The disputed domain name is not identical with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark entirely adding the geographical suffix “Cambodia”.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”

In the present case, the Panel considers that on a straightforward visual comparison the disputed domain name is confusingly similar to the EBAY trademark for the following reasons: (i) the disputed domain name incorporates in its entirety the term “ebay”; (ii) EBAY is an invented word as well as a globally well-known trademark and therefore is distinctive; (iii) “Cambodia” is a geographical name which is insufficient to distinguish the disputed domain name from the Complainant’s well-known trademark; (iv) the addition of “Cambodia” emphasizes rather than neutralizes the trademark function of “ebay”, suggesting that the disputed domain name is the Cambodian version of the Complainant’s official website.

Therefore the addition of the suffix “Cambodia” does not avoid a confusing similarity between the EBAY trademark and the disputed domain name, and so the first element required by the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the EBAY trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. With regard to paragraph 4(c)(i) the website associated with the disputed domain name displays the Complainant’s distinctive EBAY trademark in relation to the same services, therefore in direct competition with the Complainant. Moreover, the website associated with the disputed domain name imitates the Complainant’s official website, by using a similar layout and colour scheme. The Panel finds that under these circumstances the Respondent cannot be considered to be using the disputed domain name in connection with a bona fide offering of goods and services (see America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; see Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548).

Paragraph 4(c)(ii) does not apply as there is no evidence that the Respondent is known by the disputed domain name.

With regard to paragraph 4(c)(iii) the Respondent clearly has an intent of commercial gain and to mislead Internet users, as the disputed domain name uses the Complainant’s well-known trademark, deliberately replicates aspects of the “look and feel” of the Complainant’s website in its use of colour and positioning of the trademark EBAY, and is being used for a commercial website of a similar nature as the Complainant’s online marketplace at “www.ebay.com”.

In these circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was registered in bad faith and also is being used in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be “in particular but without limitation”.

The Panel finds that the circumstances of paragraph 4(b)(iv) are present in this case for the following reasons: (i) EBAY is a well-known international trademark; (ii) the Panel finds from the evidence that the Respondent’s linkage of the words “ebay” and “Cambodia” in a domain name was not coincidental but deliberate and in full knowledge of the Complainant’s EBAY trademark; (iii) the Panel finds that the Respondent intended to deceive and take advantage of Internet users who would expect to find a website that is affiliated to or sponsored by the Complainant at a domain name incorporating the EBAY trademark; (iv) the bad faith and intention to deceive of the Respondent is further demonstrated by the deliberate use of the Complainant’s colours for the trademark EBAY that would serve to further confirm the impression of Internet users of association with or endorsement by the Complainant; and (v) the overall impression of the website is of a local Cambodian website of the Complainant itself or authorized or endorsed by the Complainant.

For these reasons the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of its website. The Respondent’s bad faith and intention to deceive is blatant in its adoption of not only the Complainant’s famous EBAY trademark but also of the Complainant’s colour scheme for the use of the trademark.

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name 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 disputed domain name <ebaycambodia.com> be transferred to the Complainant.

David J.A. Cairns
Sole Panelist
Date: January 20, 2014