WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. xu kefei (kefei xu)
Case No. D2008-0481
1. The Parties
The Complainant is eBay Inc., of San Jose, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is xu kefei (kefei xu), of Guangzhou, Guang Dong, China.
2. The Domain Names and Registrars
The disputed domain names, <watch-ebay.biz>, <watch-ebay.com>,
<watch-ebay.info>, <watch-ebay.net> are registered respectively with GoDaddy.com, Inc; HiChina Web Solutions Limited; HiChina Web Solutions Limited; and Xin Net Technology Corp.
The disputed domain names are referred to in this decision collectively as “the Domain Names”, and individually as “the Domain Name [name of disputed domain name]”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2008. On March 31 and April 3, 2008, the Center transmitted by email to the concerned registrars, requests for registrar verification in connection with the Domain Names. On March 31, 2008 (GoDaddy.com, Inc.), April 1, 2008 (HiChina Web Solutions Limited), and April 7, 2008 (Xin Net Technology Corp.), the concerned Registrars transmitted by email to the Center their respective verification responses, confirming that the Respondent is listed as the registrant of the Domain Names and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 9, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 proceeding commenced on April 10, 2008. The formal “Notification of Complaint and Commencement of Administrative Proceedings” document was sent to the Respondent in both English and Chinese. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2008.
On April 11, 2008, the Center received an email from “sales@watch-ebay.com”, advising (in the Chinese language) as follows:
“Dear […],
We have just received this email concerning domain name dispute. We only know about this case now. We will close this domain name and website within 24 hours. We will give up using the relevant domain names and will not use them in the future including : watch-ebay.com, watch-ebay.net, watch-ebay.biz, watch-ebay.info.
We shall use our best endeavors to [Note: there appear to be some words missing here] this dispute as soon as possible."
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2008. Again, copies of the Notification of Respondent Default document were provided to the parties in both English and Chinese.
The Center appointed Warwick Smith, Torsten Bettinger and C. K. Kwong as panelists in this matter, on June 23, 2008. The Panel finds that it was properly constituted. Each member of 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.
In the absence of any Response, the Panel has checked the record to ensure that the Center has discharged its responsibility under paragraph 2 of the Rules, to employ reasonably available means calculated to achieve actual notice [of the Complaint] to the Respondent. The Panel is satisfied that the Center has done so, and the April 11, 2008 email referred to above appears to confirm that the Respondent did have actual knowledge of the Complaint.
4. Factual Background
The following uncontested facts are taken from the Complaint.
The Complainant
The Complainant is well known around the world as a provider of online marketplace services. Its primary website is at “www.ebay.com”, and its services are available in numerous countries around the world, including China (where the Respondent is domiciled). According to the Complaint, the Complainant’s services are offered in numerous languages, and are accessible on the Internet from virtually any location around the globe.
The Complainant’s EBAY Marks
The Complainant is the registered proprietor of the word mark EBAY in the United States of America and in numerous other countries, including China. “eBay” is a coined expression, and the Complainant has been using the EBAY mark since at least September 1995 in connection with its online person-to-person trading services. The Complainant has devoted substantial resources to advertising and promoting its services and products under its EBAY marks, and in 2007, Interbrand ranked the Complainant’s EBAY brand as the 48th best global brand. United States court or tribunal decisions have found the Complainant’s EBAY mark to be famous.
The Complainant has produced with its Complaint screenshots from its website at “www.ebay.com”, taken on March 7, 2008. These screenshots feature the online auction of an “authentic lady’s Rolex President watch”. The screenshots also show that other watches were listed for sale by auction on the Complainant’s website.
The Respondent and the Domain Names
The Domain Names were registered on the following dates:
<watch-ebay.com> March 19, 2007;
<watch-ebay.net> September 5, 2007;
<watch-ebay.info> November 27, 2007;
<watch-ebay.biz> December 22, 2007.
The Complainant has produced copies of certain pages from the website (“the Respondent’s main website”) to which the Domain Names <watch-ebay.net> and <watch-ebay.com> have resolved. These pages were printed on February 25, 2008.
The February 25, 2008 web pages show that the Respondent was then operating an online shop at the Respondent’s main website, selling fake (“replica”) watches, including famous brands such as Rolex, Cartier, and Bvlgari. The Respondent’s main website was an English language website, with prices quoted in United States dollars.
The nature of the business being operated through the Respondent’s main website, is aptly summarized in the following text taken from the February 25 2008 printout:
“watch-ebay is a replica designer watches company of all types of watches. We continuously produce many style of replica watches to ensure that we get the best copy watches for you. such as fake Rolex watches Our goal is 100% customer satisfaction. Start saving time and money with watch-ebay.net.
Replica watches are inexpensive and sometimes give the impression that you are wearing the Genuine Rolex while you are catering the posh cocktail party. we would like to make sure you are happy with every single item you buy!”
There was an invitation to Internet browsers to contact the operators of the website with any questions, by email addressed to “sales@watch-ebay.com”. The Respondent’s main website also contained a copyright claim, “copyright 2006-2007 www.watch-ebay.net”.
One of the pages on the Respondent’s main website as at February 25, 2008, was headed with the word “Disclaimer”. This page purported to deny access beyond that page, to anyone who was affiliated with or working for Rolex, or for any of the proprietors of the other name-brand-mentioned products. The disclaimer went on to warn that entry into the Respondent’s main website in breach of that prohibition, would constitute a violation of the Internet Privacy Act 1995 (United States of America).
The Respondent’s main website also contained a “Testimonials” section. This section contained messages from happy customers in various countries. All of the messages were in the English language, and many correspondents were from either the United States of America or the United Kingdom of Great Britain and Northern Ireland. In some of these messages, the vendor/replica watch manufacturer, was named as “Tony”. (The Panel notes that the WhoIs particulars for the Domain Name <watch-ebay.info>, show the registrant as “Tony Xu” of the organization Kefei Xu. The administrative and technical contacts for the Domain Name <watch-ebay.biz> are shown in the relevant WhoIs particulars as: “kefei, xu tonyxkf2000@yahoo.com.cn”.)
On February 25 2008, the Domain Name <watch-ebay.info> resolved to a separate English-language website (“the Respondent’s .info website”). The Respondent’s .info website contained information about replica watches, under headings such as “The Masterpiece Rolex Replica”, “The Unique Qualities of Rolex Daytona Replicas”, “The Popularity of Rolex Replicas”, and “Guide for Buying Replica Swiss Watches”. The Respondent’s .info website provided a number of hyperlinks to the Respondent’s main website.
When the Complainant checked on March 27, 2008, the Domain Name <watch-ebay.biz> did not resolve to any active website.
Apart from what appears from the Respondent’s main website, the Respondent’s .info website, and the WhoIs particulars for the Domain Names, no other information about the Respondent or its activities has been provided.
Pre-commencement Correspondence
On February 13, 2008, the Complainant sent an email to the Respondent alleging unauthorized use of the Domain Names. The email alleged breach of the Complainant’s intellectual property rights, and referred to previous court cases or panel decisions in which the Complainant had prevailed. The Complainant sought the immediate cessation of use of the Domain Names, and the disabling of websites at the Domain Names. The Respondent was asked to confirm by February 15, 2008 that it agreed to resolve the matter in accordance with the Complainant’s requests.
The Complainant did not receive any response to its February 13, 2008 email.
The Panel’s Visits to the Respondent’s Main Website and the Respondent’s .info Website
In accordance with normal practice, the Panel has itself typed in the Domain Names, to see how they are being used. The results of the Panel’s attempts to access websites at the Domain Names, were as follows.
The <watch-ebay.biz> Domain Name still did not resolve to any active website. The <watch-ebay.net> and <watch-ebay.com> Domain Names, had been re-directed to a website at “www.idolreplicas.com”, at which fake watches were being marketed in a very similar way to the operation formerly run by the Respondent at the Respondent’s main website. The <watch-ebay.info> Domain Name resolved to a modified website, which contained numerous click-on links to the fake watch marketplace at “www.idolreplicas.com”, some information about replica watches, and some click-on links to another website which offered fake handbags and similar items for sale.
The modified website to which the <watch-ebay.info> Domain Name resolved, contained the following prominent statement:
“We have updated our system and programme, exchanged old website www.watch-ebay.net to www.idolreplicas.com”.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant’s EBAY mark. Each of them incorporates the EBAY mark in its entirety, adding only the descriptive term “watch”. The use of a complainant’s entire trade mark with non-distinctive and descriptive matter creates confusion (citing Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037, and Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
2. The following matters demonstrate that the Respondent has no rights or legitimate interests in respect of the Domain Names:
2.1 The Domain Names were all registered after the Complainant had well-established rights in its EBAY mark, in the domain name <ebay.com>, and in the Complainant’s website at that domain name.
2.2 The Respondent uses the Complainant’s distinctive and famous EBAY mark in the Domain Names and on the Respondent’s website. Given the Complainant’s prominence on the Internet, the Respondent could have no plausible reason to include “ebay” in the Domain Names, other than to capitalize on the goodwill of the Complainant (citing eBay Inc. v SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259).
2.3 The Respondent is not an authorized dealer, distributor, or licensee of the Complainant.
2.4 The Respondent is using the Domain Names for commercial purposes, which have not been bona fide.
2.5 The Respondent’s use of the Domain Names has been neither fair nor legitimate.
2.6 Neither the Respondent’s main website, nor the Respondent’s .info website, reference the Complainant in any way. There does not appear to be any logical reason for the Respondent’s use of the Complainant’s mark. (Citing Budget Rent A Car Corporation v. Budget-Rent-A-Phone and Robert Farkas, WIPO Case No. D2001-0772, “It is implausible that it [the Respondent] independently determined to register and use the disputed domain name without knowledge of Respondent’s well-known and registered mark. Because Respondent must have been aware of Complainant’s mark when it registered the disputed domain name, it cannot be said to have made a bona fide offering of services prior to notice of a dispute”).
2.7 Even if the Respondent was not selling fake watches directly from the Respondent’s .info website, the Respondent’s .info website contained myriad hyperlinks to the fake watch online marketplace at the Respondent’s website.
2.8 The Respondent had made no demonstrable preparations to use the <watch-ebay.biz> Domain Name prior to notification of this dispute by the Complainant. Passively holding a Domain Name, without pointing it to any active website, has been held not to create rights or legitimate interests in disputed domain names (Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003).
2.9 The addition of the word “watch” to the Complainant’s distinctive EBAY mark, does not create a new or different mark in which the Respondent could claim legitimate rights.
3. The following matters are sufficient to demonstrate that the Domain Names were registered and are being used in bad faith:
3.1 The Respondent, being aware of the Complainant’s prominence on the Internet, registered the Domain Names with full knowledge that its use of the Complainant’s EBAY mark therein would likely cause Internet users visiting the Respondent’s website or the Respondent’s .info website, to assume that the Domain Names which resolved to those websites were somehow sponsored by or affiliated with the Complainant.
3.2 The fact that the Respondent registered and has been using domain names that incorporate the Complainant’s entire EBAY mark, supports a finding of bad faith.
3.3 Actual or constructive knowledge of the Complainant’s rights in the EBAY mark is also a factor supporting a finding of bad faith.
3.4 The Respondent’s use of the <watch-ebay.net>, <watch-ebay.com>, and <watch ebay.info> Domain Names has been in bad faith, because the Respondent’s main website and the Respondent’s .info website both provide services that directly compete with the services the Complainant offers on its website at “www.ebay.com” (and which are listed in the Complainant’s trade mark registrations).
3.5 The Respondent’s passive holding of the <watch-ebay.biz> Domain Name also constitutes bad faith. In this case, the Complainant’s EBAY mark is both arbitrary and famous. The Complainant registered and has been continuously using the <ebay.com> domain name since 1995, and there is no evidence of any actual or contemplated good faith use by the Respondent of the <watch-ebay.biz> domain name. Nor did the Respondent reply to the Complainant’s communications prior to the institution of this proceeding. Those factors are sufficient to constitute (bad faith) passive holding of the <watch-ebay.biz> Domain Name (see Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown doing business as BigDaddy’s Antiques., WIPO Case No. D2000-0004, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
3.6 The Respondent has engaged in a pattern of registering and using domain names incorporating the Complainant’s trade marks, with intent to attract for commercial gain Internet users to the Respondent’s main website (and/or to the Respondent’s .info website), by creating a likelihood of confusion with the Complainant’s EBAY mark.
3.7 The Respondent has not taken down the Respondent’s main website or the Respondent’s .info website. The Respondent’s failure to positively respond to the Complainant’s efforts to make contact, provides strong support for a determination of bad faith registration and use (citing eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, and Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Procedural Point – The Language of the Proceeding
In its amended Complaint, the Complainant requested that the Panel determine that the Complaint be managed and determined in English.
Under paragraph 11 of the Rules, the language of the administration agreement is to be the language of the registration agreement, unless:
(i) The parties have agreed otherwise; or
(ii) The registration agreement provides otherwise; or
(iii) The Panel determines otherwise having regard to the circumstances of the proceeding.
In this case, the language of the registration agreement for the Domain Name <watch-ebay.biz>, is English. There has been no agreement by the parties that the dispute in respect of that Domain Name should be determined in any other language, and in the absence of evidence of prejudice or unfairness to the Respondent, the Complainant is entitled to have the dispute in respect of <watch-ebay.biz> dealt with in English.
The registration agreements for the other three Domain Names are all in Chinese. Again, there has been no agreement between the parties that the proceeding should be managed or determined in any other language. However, the Complainant asks the Panel to exercise its discretion under paragraph 11 of the Rules, and determine that the proceeding as it relates to those three Domain Names, should be conducted in English.
The Panel must act in a spirit of fairness and justice to both parties in deciding whether to exercise its discretion to determine that the language of the proceeding shall be a language other than that of the registration agreement. The Panel must have regard to such factors as the parties’ respective abilities to understand and use the proposed language, time, and costs (see in that regard Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. In the Groupe Auchan case, the panel noted that the material facts of the proceeding had been generated in the English language. Although the respondent was Chinese and thus not a native English speaker, the panel found persuasive evidence to suggest that the respondent was probably proficient in the English language. The respondent had been duly notified of the complaint and its contents, but had failed to respond to the complainant’s contentions. On those facts, the panel in Groupe Auchan v xmxzl determined that the proceeding should be conducted in English).
In this case, the Center provided the Respondent with copies of the Notification of Complaint and Commencement of Administrative Proceeding, in both Chinese and English. A copy of the Complaint and the amended Complaint was provided in English only. The covering email from the Center to the Respondent advised the Respondent that if it intended to participate and file a Response in the proceeding, but was experiencing language difficulties with the Complaint, the Respondent should indicate the difficulty to the Center by email, by no later than April 17, 2008. The Center’s covering email went on to advise that if the Center did not hear from the Respondent by that date, it would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceeding.
The Respondent did not raise any objection to the proceeding being conducted in English. It merely replied by email, acknowledging receipt of the Center’s email and advising that it would give up using the Domain Names.
In the circumstances described above, the Panel is satisfied that there will be no prejudice or unfairness to the Respondent if it proceeds to give its decision in English. The Respondent’s main website and the Respondent’s .info website are English language websites, and the Domain Names use English language letters and incorporate the English word “watch”. The “Testimonials” section of the Respondent’s main website shows that it has received and understood English language communications. The WhoIs particulars appear to show that the registrant of the <watch-ebay.info> Domain Name has adopted the English name “Tony”, and there was no suggestion in the email dated April 11, 2008 that the Respondent was experiencing difficulty understanding the amended Complaint. The Respondent appears to have elected not to participate in the proceeding, and substantial delay would be occasioned by requiring the translation of the amended Complaint into Chinese.
Accordingly, the Panel determines that the language of this administrative proceeding should be English.
B. General – What the Complainant must Prove
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
C. Identical or Confusingly Similar
The Complainant has proved that it is the registered proprietor of the mark EBAY, in numerous jurisdictions. The only question in this part of the Complaint, is whether the Domain Names are confusingly similar to that mark.
The Panel is satisfied that all of the Domain Names are confusingly similar to the Complainant’s EBAY mark. Numerous panels deciding cases under the Policy have noted that the fact that a disputed domain name wholly incorporates a complainant’s registered mark, may be sufficient to establish confusing similarity for the purposes of paragraph 4(a)(i) of the Policy – see, for example, Nokia Group. v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782 and the decisions referred to at pages 4-5 of that case.
There may be some cases where a disputed domain name which incorporates in full a complainant’s trade mark will not be confusingly similar to that mark, because sufficient additional letters or numbers have been added to the mark to remove any confusion. That is not the position in this case. The dominant part of each of the Domain Names is the coined, or invented word “ebay”. The word “watch”, and the hyphen, are either descriptive or generic, and those additions are insufficient to remove the confusing similarity which arises from the Respondent’s use of the Complainant’s mark in the Domain Names.
The Panel therefore finds that the Domain Names are all confusingly similar to the EBAY mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent 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 trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests in the disputed domain name, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that the respondent does have a right or a legitimate interest in the disputed domain name.
That approach is summarized at paragraph 2.1 of the Center’s online “Overview” document, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Domain Names are confusingly similar to the EBAY mark in which the Complainant has rights, and the Complainant has not authorized or licensed the Respondent to use its mark (or any expression confusingly similar thereto), whether in the Domain Names or otherwise. There is no question of the Respondent being commonly known by any of the Domain Names (a possible basis, in an appropriate case, for a claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy). Nor has the Respondent been making a legitimate non-commercial, or fair, use of any of the Domain Names, without intent for commercial gain. The Respondent’s main website was clearly commercial in nature, and in the absence of any response the Panel infers that the Respondent’s .info website was primarily designed to support the Respondent’s business conducted at the Respondent’s main website. The operation of both websites for commercial gain, effectively rules out the possibility that the Respondent might have rights or legitimate interests under paragraph 4(c)(iii) of the Policy, in the <watch-ebay.net>, <watch-ebay.com>, <watch-ebay.info> Domain Names.
There is nothing in the record to suggest that the Domain Name <watch-ebay.biz> has been used (or that the Respondent has made any demonstrable preparations to use it), for any purpose, whether commercial or non-commercial. There is therefore nothing to suggest that the Respondent could have claimed a right or legitimate interest in respect of that particular Domain Name, under either paragraph 4(c)(i) or paragraph 4(c)(iii) of the Policy.
The foregoing matters are more than sufficient to establish a prima facie case of “no rights or legitimate interests”, and the evidentiary burden therefore shifts to the Respondent. The Respondent has failed to submit any Response, and the Complainant must therefore succeed on this part of the Complaint.
For completeness, the Panel notes that its findings of bad faith registration and use in section 6E of this decision, effectively preclude the possibility of any finding of “right or legitimate interest” in the Domain Names <watch-ebay.net>, <watch-ebay.com>, and <watch-ebay.info>, under paragraph 4(c)(i) of the Policy. Bad faith registration and use of a disputed domain name necessarily implies that the use has not been in connection with a bona fide offering of goods or services, and such use could never provide a basis for a “right or legitimate interest” defense under paragraph 4(c)(i) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a disputed domain name in bad faith. Those circumstances include situations where:
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(i) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Respondent registered, and has used, all four Domain Names, in bad faith. The Panel has come to that view for the following reasons:
1. The Domain Names are all confusingly similar to the Complainant’s EBAY mark, and the Complainant has not authorized the Respondent to use that mark, whether in the Domain Names or otherwise.
2. By the time the Respondent registered the Domain Names in 2007, the Panel has no doubt that the Respondent was well aware of the Complainant and its EBAY mark. First, the expression “eBay” is an invented word, and as such, it is not the kind of expression the Respondent might have thought of if it did not already know of the Complainant. Secondly, the Respondent’s main website and the Respondent’s .info website are both English language websites, and it is apparent that a significant part of the Respondent’s market for its replica watches is in the United States of America. That is clear from the Respondent’s reference to a 1995 American Federal statute (in the “Disclaimer” page on the Respondent’s main website), from the pricing in United States dollars on the Respondent’s main website, and from many of the testimonials posted on the Respondent’s main website. Thirdly, the Panel accepts the evidence that the Complainant’s online auction site at “www.ebay.com” is famous around the world. The Respondent is itself in the business of marketing products online in competition with at least some vendors selling through the Complainant’s online auction site. In that combination of circumstances, it is inconceivable that the Respondent could have registered the Domain Names without being aware of the Complainant and its EBAY mark.
3. The Respondent has not filed any Response, and so has not provided any explanation for its choice of the expression “ebay” as the distinctive part of the Domain Names. As the Complainant points out, nothing on the Respondent’s main website or on the Respondent’s .info website appears to reference the Complainant in any way, and the Panel cannot think of any legitimate reason why the Respondent would have elected to include “ebay” in the Domain Names. In the absence of any Response, the only sensible inference the Panel can draw is that the Respondent wanted to trade on the fame of the Complainant’s mark, and attract to the Respondent’s main website (and/or to the Respondent’s .info website), Internet users who would assume that those websites were operated by the Complainant, or were somehow associated or affiliated with the Respondent. That is precisely the kind of bad faith registration and use which is described at paragraph 4(b)(iv) of the Policy.
4. The email dated April 11, 2008 is entirely consistent with the Panel’s view that the Respondent registered and has used the Domain Names in bad faith. Far from protesting its innocence, the Respondent simply indicated that it would give up using the Domain Names, and would not use them in future.
5. Contrary to the assurance given in its April 11, 2008 email, the Respondent did not give up using the <watch-ebay.net> and <watch-ebay.com> Domain Names. They were still pointing to a website selling fake watches (the website at “www.idolreplicas.com”) as recently as July 2, 2008. Nor did the Respondent give up using the <watch-ebay.info> Domain Name. On July 2, 2008, it was still pointing to a website which appears to have been little more than a “platform”, or portal site, with click-on links taking the browser to the website at “www.idolreplicas.com” (or to another website marketing fake handbags).
6. The Domain Name <watch-ebay.biz> does not appear to have been used by the Respondent. However, passive holding of a disputed domain name can in appropriate circumstances constitute bad faith registration and use, and the Panel is of the view that such circumstances exist in this case. The leading decision on bad faith registration and use by passive holding, remains the early decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. That case makes it clear that, while all of the circumstances have to be taken into account, an important consideration in “passive holding” cases will always be whether the panel can conceive of any possible legitimate use the respondent might make of the disputed domain name. If the panel cannot conceive of any such legitimate use, a finding of bad faith registration and use by passive holding, will often follow.
7. In this case, the Complainant’s EBAY mark consists of a made-up word, and it is sufficiently famous worldwide that the Panel cannot conceive of any use the Respondent might make of the <watch-ebay.biz> Domain Name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use the Respondent might make of this Domain Name. Putting that circumstance together with the Respondent’s promise to stop using the Domain Names (made in the April 11, 2008 email to the Center), and the Respondent’s failure to file any Response, the Panel is satisfied that the overall circumstances are sufficient to constitute passive bad faith registration and use, of the kind found by the Panel in Telstra Corporation Limited v. Nuclear Marshmallows.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <watch-ebay.com>, <watch-ebay.net>, <watch-ebay.info>, and <watch-ebay.biz> be transferred to the Complainant.
Warwick Smith
Presiding Panelist
Torsten Bettinger
Panelist
C. K. Kwong
Panelist
Dated: July 7, 2008