Complainant is eBay Inc. of California, United States of America, represented by Howrey LLP, United States of America.
Respondent is David Sach of Pisek, Czech Republic.
The disputed domain name <ebay-cz.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2009. On August 13, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. On August 17, 2009, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 8, 2009.
The Center appointed Knud Wallberg, Bruce E. O'Connor and Ladislav Jakl as panelists in this matter on September 25, 2009. 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.
Because Respondent has defaulted the following facts alleged in the Complaint are not disputed.
Complainant has been trading under the name EBAY and operating an on-line trading and auction website at “www.ebay.com” continuously since September 1995. Complainant's services are accessible from countries throughout the world in numerous languages. Complainant uses its EBAY mark in a stylized form comprising lower-case letters apart from a capital “B”.
Complainant owns trademark registrations for EBAY in countries around the world including in the country of residence of Respondent the Czech Republic.
Users of the eBay online marketplace buy and sell goods of almost every conceivable description through the eBay service. The eBay brand is well-known internationally as a result of Complainant's commercial success and extensive promotion. Complainant's service has been the subject of numerous unsolicited articles in the international media. The eBay online marketplace has over 200 million registered users worldwide, and every day over 6 million new items are listed for sale in over 50,000 different categories of goods.
At the time of filing of the Complaint the disputed domain name resolved to a website at “www.ebay-cz.com”. This website shows the name of the site <ebay-cz.com> in a manner evoking the distinctive color scheme and staggered letter format of Complainant's EBAY seven color logo mark. On the top left hand side of the website, where consumers are accustomed to seeing the branding for the website (including where Complainant displays its famous brand on its site), Respondent displays a logo that closely mimics Complainant's logo, followed by “-cz.com” in plain, smaller sized text. That display is followed by a slogan in Czech, which means the “largest eBay worldwide auctions are waiting for you!” Respondent's site offers assistance with buying and selling through Complainant's marketplace services, which mirrors services offered by Complainant, and the format and content of the Respondent's site is highly similar to the format and content of Complainant's eBay website. Respondent provides numerous screen shots from the eBay website. Respondent also offers an “assistant” service for people who are not registered eBay users.
On February 18, 2009, Complainant's Global Domain Name Manager wrote to Respondent in English via email regarding Respondent's unauthorized use of the EBAY Marks and the <ebay-cz.com> domain name. In response to the cease and desist email, Respondent wrote to Complainant, in English, stating that he had found other domain names that, in part, consist of the term “ebay” and, as such, inquired whether Respondent's use was permissible. Later, eBay sent a follow up email, again in English, restating Complainant's position that Respondent's activities were unauthorized and infringed Complainant's rights. The next day, Respondent wrote back to Complainant, in English, alleging that he had invested thousands of dollars to register the domain and have it positioned in “first place” on Google. Respondent suggested that someone would have to pay him back this money. Several subsequent back and forth emails did not resolve the matter.
The Domain Name is confusingly similar and essentially identical to Complainant's EBAY mark because it incorporates the entirety of Complainant's distinctive and famous EBAY mark, and appends to that mark the Czech Republic country code (ccTLD) “cz”. The combined terms suggest the site is associated with Complainant or that it is Complainant's website portal for the Czech Republic.
By adopting a domain name that wholly incorporates Complainant's EBAY mark, and which conveys the same overall visual and phonetic impression as Complainant's mark, Respondent has created a term confusingly similar to Complainant's marks and has attempted to capitalize on the valuable eBay brand.
Respondent registered the disputed domain name on August 23, 2006, long after Complainant registered and established valuable rights and goodwill in its famous EBAY mark and Complainant had established its website “www.ebay.com”.
Respondent is not an authorized dealer, distributor, or licensee of Complainant, and does not have permission or authority from Complainant to use the EBAY marks or Complainant's screen images. Nevertheless, Respondent uses the distinctive and famous EBAY marks in its domain name and on its website at “www.ebay-cz.com.”
Respondent is using the disputed domain name for commercial purposes. Specifically, Respondent's website at “www.ebay-cz.com” is a service for buying and selling goods on eBay and learning how to make the most out of the services offered by Complainant. Respondent also offers an “assistant” service which suggests that Respondent is Complainant's agent in the Czech Republic, authorized to assist Czech consumers with transacting on Complainant. Respondent's use of the disputed domain name for this purpose is not bona fide under WIPO precedent.
As previously held by other WIPO panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant” (Drexel University v. David Brouda, WIPO Case No. D2001-0067).
If Respondent is allowed to keep the disputed domain name or use it for any purpose, it will mislead the public that Respondent has some business connection with Complainant. In addition, the distinctive power of Complainant's well-known EBAY marks will be diluted.
Respondent has no plausible reason to register a domain name confusingly similar to the EBAY marks (one which incorporates the EBAY mark in its entirety) other than to be associated with and capitalize on the goodwill of Complainant. Administrative panels considering cases where no plausible reason existed for selection of a famous mark as part of a domain name, except to trade on the mark's goodwill, have found that the respondent's conduct could not constitute a bona fide offering of goods and services.
By using “www.ebay-cz.com”, Respondent is trying to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Given Complainant's prominence on the Internet, it is clear that Respondent registered the domain name in bad faith, with full knowledge of Complainant's rights. Respondent must have known that including the famous EBAY mark in its URL would likely cause an Internet user visiting the website at “www.ebay-cz.com” to believe that it is sponsored by or affiliated with eBay.
Under well-settled precedent, Respondent's registration and use of a domain name that incorporates Complainant's entire EBAY trademark supports a finding of bad faith.
Respondent's bad faith is further corroborated by the fact that he has adopted a logo which is graphically nearly identical in color and design to Complainant's EBAY color logo. Exacerbating the likelihood of confusion, Respondent promotes Complainant's registered color logo, as well as screenshots of Complainant's website on Respondent's site.
Respondent's bad faith is additionally supported by the fact that it registered the disputed domain name well after Complainant federally registered its EBAY trademark in the United States, as well as in the Czech Republic and the European Community, and established rights in its <ebay.com> domain name.
Respondent's use of the disputed domain name contravenes Complainant's rights because the “www.ebay-cz.com” website provides services that closely relate to and overlap with the services Complainant offers on its website (and which are listed in Complainant's trademark registrations). In fact, Respondent's own statements make clear that he invested in search result optimization, in order to have his website appear first on a list of results from a search on Google, which would naturally divert the attention of Internet users away from Complainant's own legitimate website, thus acting in a manner competitive with Complainant.
After receipt of Complainant's cease and desist email, Respondent suggested that someone is going to have to pay him thousands of dollars in compensation. This amount is in excess of “out-of-pocket costs directly related to the domain name” as contemplated by paragraph 4(b)(i) of the Policy. Such an offer demonstrates that Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the case against it and is in default and no exceptional circumstances explaining the default have been put forward.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
Respondent's domain name consists of “ebay” with the addition of a hyphen and the ISO country code for the country of residence of Respondent the Czech Republic, namely “cz”. The element “ebay” is identical to Complainant's mark. In the Panel's view, the addition of a hyphen and a country code is not enough to avoid the likelihood of confusion arising from the use of EBAY. It is a well-established principle that non-distinctive additions to a trademark as well as the inclusion of the gTLD denomination “.com” do not avoid confusing similarity of domain names and trademarks.
The Panel finds that the disputed domain name is confusingly similar to Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
The Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
Given the fame of Complainant's EBAY mark, its invented nature and inherent distinctiveness, the Panel considers it extremely unlikely that Respondent has registered the disputed domain name without knowledge of Complainant's business under the eBay brand. The fact that Respondent uses an imitation of the EBAY logo on its site supports the view that Respondent was well aware of Complainant's rights.
In the Panel's view, use that is not bona fide cannot give rise to a legitimate interest in a domain name under the Policy. The Respondent's conduct in knowingly adopting a domain name confusingly similar to the EBAY trademark was calculated to trade on and benefit from the fame of Complainant's mark and could not, in the Panel's view, give rise to bona fide use capable of conferring a right or legitimate interest in the domain name. Reference is inter alia made to Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, and Advance Magazine Publishers Inc. v. Lisa Whaley, WIPO Case No. D2001-0248.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraphs 4(b)(ii), (iii) and (iv):
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 source, sponsorship, affiliation, or endorsement of its website or of a product on that website.
Complainant has submitted evidence, unchallenged by Respondent, that its EBAY trademark is internationally famous. At least one other panel has found that the EBAY mark is internationally famous. See eBay Inc. v. Artgrafi Multimedya Hizmetleri, WIPO Case No. D2008-1935.
Given the coined nature of the term “ebay” the fact that the trademark is registered and used in the country of residence of Respondent, the Czech Republic, and the extensive promotion of the trademark, it is inconceivable to the Panel that Respondent registered the disputed domain name without prior knowledge of Complainant and Complainant's mark.
This is underlined by the way Respondent actually uses the disputed domain name. Complainant has thus shown in evidence that Respondent uses the disputed domain name to inter alia offer and advertise services identical to those offered under Complainant's EBAY-branded websites, in particular the “www.ebay.com” site.
The Panel further finds that by using Complainant's trademark to draw Internet users to a site offering what appears to competing or at least related goods and services, Respondent is attempting to divert customers from Complainant and thus to disrupt Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658. Respondent has offered no satisfactory alternative explanation for its conduct and the Panel finds that such disruption was and still is the primary purpose behind Respondent's registration of the disputed domain name.
Respondent's use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant's EBAY mark as to source, sponsorship, affiliation, or endorsement. Taking into account the fame of Complainant's mark and its widespread use, Internet users encountering the disputed domain name are likely to be misled into believing that they have found a website legitimately connected to Complainant. Respondent's use of the EBAY logo on the website serves only to confirm that misperception on the part of visitors to the site, who are already familiar with Complainant's famous EBAY logo for online goods and services.
Due to the above findings the Panel need not further consider whether failure to respond to a cease and desist letter and the information given that “someone” had to compensate thousands of dollars for the contested domain name might potentially provide indications of bad faith registration and use.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
Complainant has requested that the disputed domain name be transferred to it.
For all 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 <ebay-cz.com> be transferred to the Complainant.
Knud Wallberg | |
Bruce E. O'Connor | Ladislav Jakl |
Dated: October 14, 2009