eBay Inc. v. Sunil Kumar
Claim Number: FA2001001878095
Complainant is eBay Inc. (“Complainant”), represented by Dardoh Skinner of Holland & Hart LLP, Colorado, United States. Respondent is Sunil Kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ebayindiasale.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2020; the Forum received payment on January 8, 2020.
On January 9, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ebayindiasale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ebayindiasale.com. Also on January 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Consent to Transfer
A. Complainant
Complainant made the following contentions.
Complainant is a global leader in the field of online commerce and shopping. Complainant has rights in the EBAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,218,732, registered Jan. 19, 1999). See Compl. Ex. 3. Respondent’s <ebayindiasale.com> domain name is identical or confusingly similar to Complainant’s EBAY mark. Respondent includes the mark in its entirety and adds the geographic descriptor “INDIA” and generic word “sale” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ebayindiasale.com> domain name as Respondent is not affiliated with Complainant in any way and Complainant has not authorized Respondent to use its EBAY mark in anyway. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates the appearance that it is affiliated with Complainant while promoting its links unrelated to Complainant’s business.
Respondent registered and used the <ebayindiasale.com> domain name in bad faith by creating the appearance that Respondent is somehow affiliated with Complainant and offering services that compete with Complainant. Respondent also had actual knowledge of Complainant’s rights in the EBAY mark prior to registration of the disputed domain name due to the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global leader in the field of online commerce and shopping.
2. Complainant has established its trademark rights in the EBAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,218,732, registered Jan. 19, 1999).
3. Respondent registered the <ebayindiasale.com> domain name on September 24, 2019.
4. Respondent has caused the domain name to be used so that it creates the appearance that it is affiliated with Complainant while promoting its links that are unrelated to Complainant’s business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the EBAY mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the EBAY mark (e.g. Reg. No. 2,218,732, registered Jan. 19, 1999). See Compl. Ex. 3. Therefore, the Panel finds that Complainant has adequately shown rights in the EBAY mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EBAY mark. Complainant argues that Respondent’s <ebayindiasale.com> domain name is identical or confusingly similar to Complainant’s EBAY mark. Registration of a mark that contains a generic geographic descriptor or generic term in addition to a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Here, Complainant argues that Respondent includes the mark in its entirety and adds the geographic descriptor “INDIA” and generic word “sale” along with the suffix “.com.” Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EBAY mark and to use it in its domain name, adding the geographic descriptor “INDIA” and the generic word “sale”;
(b) Respondent registered the <ebayindiasale.com> domain name on September 24, 2019;
(c) Respondent has caused the domain name to be used so that it creates the appearance that it is affiliated with Complainant while promoting its links that are unrelated to Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <ebayindiasale.com> domain name as Respondent is not affiliated with Complainant nor authorized to use any of its EBAY marks. Use of a disputed domain name that includes a complainant’s mark without the complainant’s authorization may show that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, Complainant states in its Complaint that it has not authorized or licensed Respondent in any way to use its EBAY mark. Therefore, the Panel agrees and finds that Respondent lacks rights or legitimate interests in the <ebayindiasale.com> domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent creates the appearance that it is affiliated with Complainant while promoting links related and unrelated to Complainant’s business. Use of a disputed domain name to resolve to a webpage that offers links related and unrelated to complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided the Panel a screenshot of Respondent’s resolving webpage, showing links to competitors. See Compl. p 9. Therefore, the Panel finds Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <ebayindiasale.com> domain name in bad faith by creating the appearance that Respondent is somehow affiliated with Complainant and offers competing services. Use of a disputed domain name to create an appearance that Respondent is affiliated with Complainant and offer competing services may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant has provided the Panel a screenshot of Respondent’s resolving webpage, showing links to competitors. See Compl. P. 9. Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the EBAY mark prior to registration of the <ebayindiasale.com> domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that makes use of a famous and well-known mark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the panel with reports and rankings showing the fame of its EBAY mark. See Compl. Exs. 5 and 7. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the EBAY mark prior to registration of the disputed domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the EBAY mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ebayindiasale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 1, 2020
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