WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EBAY, Inc. v. MEOdesigns and Matt Oettinger
Case No. D2000-1368 1
1. The Parties
Complainant is EBAY, Inc., a Delaware corporation with its principal place of business located at 2125 Hamilton Avenue, San Jose, California 95125 United States of America.
Respondent is MEOdesigns, apparently a fictitious business name of Matt Oettinger, located at PO Box 22087, Carmel, CA 93923 United States of America.
2. The Domain Name and Registrar
The domain name at issue is "eebay.com", registered through Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170 United States of America (the "Registrar").
3. Procedural History
A complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") and was received by the Center in electronic form on October 11, 2000, and in hardcopy form on October 12, 2000. Payment of the required single-member panel fee was made by Complainant.
The Center reviewed the complaint for compliance with the requirements of the ICANN Uniform Dispute Resolution Policy. The Center sent an Acknowledgment of Receipt of Complaint to Complainant on October 12, 2000. On October 4, 2000, the Center transmitted to the Registrar a request for verification of the details of the domain name registration. On the same day, the Registrar confirmed the details, including that the domain name "eebay.com" was registered through Network Solutions, Inc., and that MEOdesigns was the current registrant of the domain name. The contents of the WHOIS database relating to the domain name was included in the verification, showing that the domain name remained active.
The Center reviewed the Complaint and determined that it satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On October 17, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This Notification was sent in accordance with the methods required by paragraph 2(a) of the Rules.
In the Notification issued by the Center on October 17, 2000, Respondent was allowed 20 calendar days, or until November 5, 2000, in which to respond to the Complaint. On November 9, 2000, the Center, having received no response from Respondent, issued a Notification of Respondent Default.
On November 21, 2000, having received the Statement of Acceptance and Declaration of Impartiality and Independence of Jeffrey H. Kaufman, the Center formally notified the parties of the Notification of Appointment of Administrative Panel and Projected Decision Date, and Transmission of Case File to Administrative Panel, appointing the undersigned panelist, Jeffrey H. Kaufman, as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
Complainant is the owner of an U.S. federal trademark registration for the mark EBAY (Registration No. 2,218,732), issued January 19, 1999. U.S. Registration No. 2,218,732 covers services in International Class 35, including providing "on-line trading services in which seller posts items to be auctioned and bidding is done electronically". First use of the EBAY mark is September 4, 1995. Complainant is also the applicant for a number of pending U.S. trademark applications that contain the term "EBAY" in various forms, including a pending application for EBAY.COM.
Respondent registered the domain name "eebay.com" on November 8, 1998, prior to the issuance of the U.S. trademark registration for EBAY, but subsequent to Complainant’s first use of the EBAY trademark.
5. Parties’ Contentions
Complainant contends that it is the owner of the trademark EBAY, a trademark that it claims to be famous. Complainant has submitted a Declaration of Jay Monahan, Complainant’s Associate General Counsel, Intellectual Property. In his Declaration, Mr. Monahan states that the EBAY trademark is famous as a result of Complainant’s extensive use and promotion of the trademark. As evidence of the fame of the mark, he asserts that Complainant has been the subject of "thousands of unsolicited articles in the media, including national and international print, radio, and television media highlighting eBay’s pioneering and successful efforts in online personal trading." A sampling of such unsolicited media attention was attached to the Complaint.
Complainant argues that Respondent has chosen a domain name that is confusingly similar to Complainant’s famous EBAY trademark, and that Respondent has no rights in the term "EBAY", as it owns no trademark, copyright or common law interest in the "EBAY" name or trademark.
Complainant further alleges that Respondent has acted in bad faith by registering and using the domain name "eebay.com", with Respondent seeking to capitalize on the typing errors of consumers who intended to visit the ebay.com website, but inadvertently type "eebay.com". Complainant attaches to its complaint printouts from the "eebay.com" website that contain banner advertisements inviting users to click through to other websites, including hyperlinks to other competitive auction web sites. Complainant claims that Respondent likely received financial benefit from including these hyperlinks on its website, and created a likelihood of confusion with the famous EBAY trademark over the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
As further evidence of Respondent’s bad faith, Complainant attaches a Declaration of an attorney that represents Complainant. Counsel states that prior to the filing of the Complaint, counsel contacted Respondent Oettinger by telephone, requesting transfer of the "eebay.com" domain name in exchange for payment of the registration fee for the domain name. Complainant’s counsel alleges that Mr. Oettinger instead offered to sell the domain name to Complainant upon payment of $5,000 2.
Finally, Complainant attaches to the Complaint evidence that at times, Respondent has included on the "eebay.com" website links to allegedly pornographic websites, along with banner advertisements. At other times, Respondent has included on the "eebay.com" website material disparaging of Complainant’s auction business. In one such printout, the page contains the title "Warning: Before surfing away… you WILL WANT TO READ THIS SITE. Have you been ripped off on eBay? We’d like to hear about it. E-mail Us!"
Respondent failed to file a formal response to the Complaint and is in default. Thus, the Panel accepts as true the allegations of the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements:
1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
2) the respondent has no rights or legitimate interest in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has satisfied the first test, as the Respondent’s domain name "eebay.com" is confusingly similar to the Complainant’s registered trademark. The mere addition of the "e" preceding Complainant’s registered trademark, has no trademark significance. Complainant’s claim that it was Respondent’s intention to take advantage of misspelling or typing errors by users intending to reach Complainant’s "ebay.com" website is well founded. See L.L. Bean, Inc. v. Cupcake Patrol, National Arbitration Forum No. FA0007000095105, wherein it was found that respondent’s registration of "lllbean.com" was in bad faith and confusingly similar to the complainant’s L.L. BEAN trademark.
In International Data Group, Inc. v. Maruyama & Co., Ltd., WIPO Case No. D2000-0420, decided June 26, 2000, the panelist held that respondent’s domain name, "e-computerworld.com", differed from the complainant’s COMPUTERWORLD trademark "only by the addition of the now common ‘E’", and as a result, "there is considerable likelihood of confusion of the Domain Name with the Complainant’s business".
In Nintendo of America, Inc. v. Daniel Lopez dba Creative Strategies, WIPO Case No. D2000-1166, decided December 8, 2000, it was held that the domain name "i-nintendo.com" was confusingly similar to the well-known NINTENDO trademark, and the addition of the "non-distinctive ‘i’ to its domain name does nothing to reduce its confusing similarity with Complainant’s NINTENDO mark", citing Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167 ("enike.com" and "e-nike.com" confusingly similar to NIKE trademark).
The Panel further finds that Respondent has no rights or legitimate interest in respect of the domain name "eebay.com". Respondent is in default and provided no indication of how it has rights or legitimate interest in the domain name.
The final element of the Policy that Complainant must prove is that Respondent both registered and is using the domain name in bad faith. The Panel finds that Respondent did register and use the domain name in bad faith. Complainant has submitted evidence that Respondent has used the domain name to promote competing auction sites, satisfying the third element of Section 4(a) of the Policy.
The Panel concludes that (i) the domain name "eebay.com" is confusingly similar to the trademark EBAY; (ii) that Respondent has no rights or legitimate interest in the domain name; and (iii) Respondent registered and used the domain name in bad faith.
Therefore, pursuant to Paragraph 4(i) of the Policy and the Rules, the Panel orders that the domain name "eebay.com" be transferred to the Complainant.
Jeffrey H. Kaufman
Dated: December 15, 2000
2. In an e-mail sent by Respondent directly to the Panelist on November 21, 2000 (after Respondent was in default), Respondent claimed that he "simply requested the refund of all server, hosting and domain name registration cost." No explanation of such costs was provided by Respondent, and Respondent did not refute that he asked for $5,000 from Complainant in
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