eBay Inc. v. paul chiang / ebay
Claim Number: FA1711001757179
Complainant is eBay Inc. (“Complainant”), represented by Beth Cooperstein of Holland & Hart LLP, Colorado, USA. Respondent is paul chiang / ebay (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <ebayadult.com>, <ebaymotors.org> and <ebaymature.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 November 3, 2017; the Forum received payment on November 3, 2017.
On November 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2017 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@ebayadult.com, postmaster@ebaymotors.org, postmaster@ebaymature.com. Also on November 9, 2017, 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 December 4, 2017, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant, eBay Inc., is a global leader in the field of online commerce and shopping. Complainant uses its EBAY mark to promote its goods and services, and registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,218,732, registered Jan. 19, 1999). See Compl. Ex. 3. Respondent’s <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names are confusingly similar to Complainant’s EBAY mark because each appends a generic word such as “adult,” motors,” and “mature,” and one of the generic top-level domains (“gTLD”) “.com” or “.org” to the fully incorporated mark.
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its EBAY mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using the <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to redirect to webpages selling goods and services that compete with Complainant’s goods and services. See Compl. Ex. 10 (examples of the links which the domain names redirect users). Further, Respondent offers to sell the domain names on the WHOIS webpage. See Compl. Ex. 11.
Respondent registered and is using the <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names in bad faith. Respondent offers to sell the domain names on the WHOIS webpage. See Compl. Ex. 11. Further, Respondent’s registration of multiple confusingly similar domain names to Complainant’s mark also provides for a finding of bad faith. Additionally, Respondent uses the domain names in attempts to disrupt Complainant’s business by offering competing services. See Compl. Ex. 10. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the EBAY mark when it registered the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and a global leader in the field of online commerce and shopping.
2. Complainant has established its trademark rights to the EBAY mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,218,732, registered Jan. 19, 1999).
3. The <ebayadult.com> domain name was registered February 15, 2004; the <ebaymotors.org> domain name was registered January 2, 2004; and the <ebaymature.com> domain name was registered September 24, 2009.
4. Respondent has caused the disputed domain names to redirect to webpages selling goods and services that compete with Complainant’s goods and services and Respondent has offered to sell the domain names on the WHOIS webpage.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it registered its EBAY mark with the USPTO (Reg. No. 2,218,732, registered Jan. 19, 1999). See Compl. Ex. 3. Registration of a mark with a trademark authority, such as the USPTO, sufficiently confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel holds that Complainant has established rights in the EBAY mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s EBAY mark. Complainant contends that Respondent’s <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names are confusingly similar to Complainant’s mark as each appends a generic word, “adult,” motors,” or “mature,” and either the gTLD “.com” or “.org” to the fully incorporated mark. Similar changes to marks have failed to distinguish domain names sufficiently from registered marks. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Accordingly, the Panel concludes that the disputed domain names are confusingly similar to Complainant’s EBAY mark.
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 names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
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 has used it in its entirety in the domain names, adding only the generic words , “adult,” motors,” or “mature”;
(b) Respondent has caused the disputed domain names to redirect to webpages selling goods and services that compete with Complainant’s goods and services and Respondent has offered to sell the domain names on the WHOIS webpage ;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain names as it has not licensed or otherwise authorized Respondent to use its EBAY mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for disputed domain names list “paul chiang” as the registrant. See Compl. Ex. 1. Therefore, the Panel concludes that Respondent is not commonly known by the <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names;
(e) Complainant submits that Respondent is not using the <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to redirect to webpages selling goods and services that compete with Complainant’s goods and services. Use of a domain name to sell competing products and services that compete with a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant does not provide any screenshots of the disputed domain names’ resolving webpages, but offers copies of links redirecting the disputed domain names to Respondent’s affiliate channels. See Compl. Ex. 10. The Panel concludes this evidence is sufficient for a finding that Respondent used the domain names to sell competing products and the Panel concludes that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use;
(f) Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names due to Respondent’s offers to sell the domain names. Offers to sell a disputed domain name can evidence a lack of rights and legitimate interests in the domain name. See Groupe Auchan v. Slawomir Cynkar, D2009-0314 (WIPO May 11, 2009) (noting that “Respondent’s offer to sell or rent the domain names does not give rise to any right or legitimate interest”). Screenshots of the disputed domain names’ WHOIS records indicate that the <ebayadult.com> domain name was listed for sale at $549; the <ebaymature.com> domain name was listed for sale at $399; and the <ebaymotors.org> domain name was listed for sale at $349. See Compl. Ex. 11. Therefore, the Panel concludes that Respondent’s offers to sell the domain names is indicative of lacking rights and legitimate interests in the disputed domain names.
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 has no rights or legitimate interests in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Respondent registered and is using the disputed domain names in bad faith because Respondent offers to sell the domain names for costs exceeding the out-of-pocket expenses associated with transfer. Offers to sell a disputed domain name for excessive costs can evidence bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted previously, screenshots of the disputed domain names’ WHOIS records indicate that the <ebayadult.com> domain name was listed for sale at $549; the <ebaymature.com> domain name was listed for sale at $399; and the <ebaymotors.org> domain name was listed for sale at $349. See Compl. Ex. 11. Therefore, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(i).
Secondly, Complainant submits that Respondent registered the disputed domain names in bad faith by engaging in cybersquatting. The registration of multiple confusingly similar domain names incorporating a complainant’s mark may demonstrate bad faith registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel agrees and finds that Respondent’s registration of multiple domain names in the present case further evidences bad faith registration under Policy ¶ 4(b)(ii).
Thirdly, Complainant submits that Respondent is attempting to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Use of a domain name to disrupt a Complainant’s business can evince bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant does not provide any screenshots of the disputed domain names’ resolving webpages but offers copies of links redirecting the disputed domain names to Respondent’s affiliate channels. See Compl. Ex. 10. As the Panel concludes this evidence supports a finding that Respondent’s websites offer competing goods and services, the Panel holds that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iii).
Fourthly, Complainant contends that, in light of the fame and notoriety of Complainant’s EBAY mark, it is inconceivable that Respondent could have registered the domain names without actual and constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are usually not successful as UDRP decisions have declined to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name can adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent is deemed to have actual knowledge of a complainant’s rights in a mark when the mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s EBAY mark has created significant good will and consumer recognition around the world and was first used in commerce by Complainant in 1999. See Compl. Ex. 1. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the infringing domain names were registered and subsequently used.
Finally, 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 names using the EBAY mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names 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 <ebayadult.com>, <ebaymotors.org> and <ebaymature.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 5, 2017
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