ebaaaay.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ebay Inc. v. Wangming

Case No. D2006-1107

1. The Parties

The Complainant is Ebay Inc., California, United States of America, represented by Cooley Godward, LLP, United States of America.

The Respondent is Wangming, Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <ebaaaay.com> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2006. On September 1, 2006, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue. On September 4, 2006, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On September 19, 2006, the Center verified that the 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 proceedings commenced on September 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2006.

The Center appointed Hong Xue, Diane Cabell and Colin Yee Cheng Ong as panelists in this matter on November 15, 2006. On November 20, 2006, the Center notified the Parties that one Panelist appointed in this case, Ms. Diane Cabell, resigned from the Panel due to unforeseeable reasons. On December 14, 2006, the Center sent out the new Notification of Appointment of Administrative Panel and Projected Decision Date, appointing Hong Xue, John R. Keys, Jr. and Colin Yee Cheng Ong as panelists in this case and requiring the Panel to forward its decision to the Center by December 28, 2006.

After receiving the Center’s Notification on December 14, 2006, 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.

The language of the proceeding is English. The language of the Registration Agreement is Chinese. The Complainant requested that the proceeding be conducted in English and presented argument in support of that request, including that the domain name is in English, that it resolves to an English language website, and that the Respondent, on its website, has made changes to the Complainant’s text that are syntactically and grammatically correct in English. The Center decided to: 1) accept the Complaint in English and commence the proceeding, 2) accept a Response in either Chinese or English, 3) appoint a Panel familiar with both languages, if available; and 4) allow the Panel to make the decision as to the correct language of the proceeding, with discretion to write a decision in either language and to request translation of either party’s submissions. The Center communicated this decision to the Respondent at the time it notified the Respondent of the commencement of the proceeding.

The Panel, after taking into account all the relevant elements, concludes that it is appropriate to proceed in the English language. The Panel has discretion to determine the correct language of the proceeding based upon the circumstances of the case. See Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based upon the circumstances here, we find no prejudice or unfairness to the Respondent in proceeding and rendering the Panel’s decision in the English language. While the Registration Agreement is in Chinese, the disputed domain name and the website to which it resolves are in English, and the Respondent otherwise demonstrates proficiency in English. The evidentiary materials presented are all in English. The Center communicated a number of accommodations to the Respondent to allow it to respond in Chinese, and the Center appointed two Chinese speakers to the Panel. Nevertheless, the Respondent did not submit a response to the Complaint.

4. Factual Background

The Complainant is Ebay Inc., which has operated the “www.ebay.com” website under the name “Ebay” continuously since 1995 in connection with an online trading/auction business. Beginning in 1999, the Complainant obtained several US federal registrations for the EBAY word mark and its seven-color logo, as follows:

EBAY, No. 2,218,732, registered Jan. 19, 1999;

EBAY, No. 2,367,932, registered July 18, 2000;

Ebay with red, blue, yellow, green, purple, orange and brown logo, No. 2,410,023, registered Dec. 5, 2000;

EBAY, No. 2,501,043, registered Oct. 23, 2001;

EBAY, No. 2,518,652, registered Dec. 11, 2001;

EBAY, No. 2,578,260, registered June 11, 2002;

EBAY, No. 2,592,515, registered July 9, 2002;

EBAY, No. 2,604,374, registered Aug. 6, 2002;

EBAY, No. 2,662,130, registered Dec. 17, 2002;

EBAY, No. 2,666,767, registered Dec. 24, 2002;

EBAY, No. 2,700,675, registered March 25, 2003;

EBAY, No. 2,700,836, registered Mar. 25, 2003;

EBAY, No. 2,737,342, registered July 15, 2003;

EBAY, No. 2,744,717, registered July 29, 2003;

EBAY, No. 2,759,150, registered Sep. 2, 2003;

The Complainant also owns trademark registrations for the EBAY word mark in many other countries, including China, Japan and the Republic of Korea.

The Respondent registered the domain name <ebaaaay.com> on March 20, 2006. This domain name resolves to a website on which goods are offered for sale in a manner similar to the way in which the Complainant’s website offers goods for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is nearly identical with and confusingly similar to the Complainant’s well-known mark EBAY.

The Complainant’s website under the name EBAY has operated continuously since 1995 in connection with online commerce, trading and the Internet auction services.

The Complainant owns several US federal registrations for the EBAY word mark. The earliest registration was acquired in January 1999.

The Complainant also owns the trademark registration for the EBAY word mark in many other countries, including China, Japan, Vietnam, the Republic of Korea, etc.

The Complainant’s other trademark, the “EBAY Seven Color Logo”, has been registered in the United States of America and many other countries since 2000.

The Complainant’s primary website operating at “www.ebay.com” provides the services in a number of countries, including China, Japan, Singapore, etc. and is advertised in those markets.

The Complainant contends that the EBAY word mark and EBAY Seven Color Logo mark are famous through its advertisement and promotion of the mark and through media reports, and that the reputation of the EBAY mark has been recognized in cases decided by the United States Patent and Trademark Office and the United States District Court for the Northern District of New York.

The disputed domain name is registered in the name of Wangming. The Complainant finds that the Respondent’s website located at “www.ebaaaay.com” shows the name of the site “ebaaaay.com” in the same distinctive font and color scheme as is found in the Complainant’s EBAY Seven Color Logo mark. Apart from the similar logo, the Respondent’s site is highly similar to the format and content of the Complainant’s EBAY website.

The Complainant contends that the disputed domain name that consists of the famous EBAY mark plus an additional triple “a” in the middle of the mark sounds nearly identical with and is confusingly similar to the Complainant’s EBAY mark and the domain name <ebay.com>. In the view of the Complainant, the Respondent is attempting to capitalize on the EBAY name and mark by adopting the disputed domain name which conveys the same overall visual and phonetic impression as the Complainant’s mark. The Complainant contends that the Respondent intends to mislead consumers to believe that the disputed domain name and its operation are affiliated with EBAY.

The Complainant contends that the Respondent has no legitimate right or interests in the disputed domain name. The Respondent registered the disputed domain name on March 20, 2006, when the Complainant had well-established rights in its EBAY marks not only in the United States but also throughout the several Far East markets, including China where the Respondent purportedly resides. Moreover, the Complainant contends that the Respondent’s site offers services which are directly competitive with the Complainant’s services. The Complainant draws the Panel’s attention to the facts that the Respondent is deemed to have constructive knowledge of the Complainant’s marks by virtue of the Complainant’s trademark registrations and actual knowledge given its registration of a nearly identical domain name used in connection with the services identical to those the Complainant provides.

The Complainant contends that the Respondent is not known as “ebaaaay” or “ebaaaay.com” and is not an authorized dealer, distributor or licensee of the Complainant. The Complainant cites previous cases holding that the right or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless it was seeking to create an impression of association with the Complainant. The Complainant insists that the Respondent’s conduct could not constitute a bona fide offering of goods or services given the fact that the Respondent trades on the reputation of the Complainant’s mark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. Respondent registered the disputed domain name with full knowledge that including the EBAY marks as part of its domain name would likely cause an Internet user visiting that domain name address to assume that the disputed domain name is somehow sponsored by or affiliated with the Complainant.

The Complainant contends that the Respondent’s registration and use of a confusingly similar domain name, as well as its imitation of the content and format of the Complainant’s “www.ebay.com” website, in connection with services identical to those offered by the Complainant, is clear evidence of its bad faith attempt to intentionally attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s well-known EBAY marks.

The Complainant contends that the Respondent registered the disputed domain name using incomplete and/or inaccurate contact information, which also demonstrates the bad faith of the Respondent.

The Complainant requests the Panel to order that the domain name <ebaaaay.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel finds that the proceedings have been conducted in accordance with the Policy and the Rules. Having reviewed the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.

According to Paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel shall make a decision on the administrative proceedings on the basis of the complaint and, in accordance with Paragraph 14 (b) of the Rules, shall “draw such inferences there from as it considers appropriate” (See also, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808). On the other hand, the Panel should not decide in the complainant’s favor solely because of the Respondent’s default (See Oxygen Media Corporation v. Spiral Matrix,WIPO Case No. D2006-0521 and Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140), but shall, under paragraph 15(a) of the Rules, “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”.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:

(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark.

The Panel finds that the Complainant successfully proves these two aspects of its case. Firstly, the Complainant enjoys the trademark right over the mark EBAY through both the trademark registrations and extensive and continuing use. Secondly, the disputed domain name, which consists of “ebaaaay”, is confusingly similar to the Complainant’s trademark EBAY.

It has been well established by numerous UDRP cases that the disputed domain name is confusingly similar to the complainant’s trademark if it contains the complainant’s trademark with the addition of letters but sounds the same as the complainant’s trademark and looks similar to the complainant’s trademark. (See Telstra Corporation Limited v. Kandasamy Mahalingam, WIPO Case No. D2000-0999; Advanced Comfort Inc. v. Frank Grillo, WIPO Case No. D2002-0762). In this case, except for the generic top-level domain designation “.com”, the Respondent’s domain name that consists of “ebay” with three additional letters “a” in the middle both looks and sounds confusingly similar to the Complainant’s trademark EBAY. The deliberate misspelling of the disputed domain name is not sufficient to distinguish the disputed domain name from the complainant’s marks. See, AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440.

Under the consensus view of WIPO decisions under the Policy, the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant to the finding of confusing similarity (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). For this reason, it is not necessary to compare the contents of the Complainant’s and the Respondent’s websites for the purpose of paragraph 4(a)(i) of the Policy.

The Panel therefore finds that the Complainant fulfills the condition provided in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted the Complainant’s contention.

A number of panels have held that the burden on a complainant regarding the element provided by paragraph 4(a)(ii) of the Policy is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s own knowledge (see Packaging World Inc. v. Zynpak Packaging Products Inc., eResolution Case No. AF-0233; Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703). There is also a consensus view among panels that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name (See e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).

Where, as here, the Complainant has made a prima facie showing of the Respondent’s lack of such right or interest and Respondent has failed to come forward to rebut that showing, the Panel is entitled to accept that the Complainant has established the second element in paragraph 4(a)(ii) of the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from the Respondent’s default as it considers appropriate.

The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name and that the Complainant fulfills the condition provided in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the Respondent both registered and is using the domain name in bad faith. Paragraph 4(a)(iii) of the Policy.

A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. See PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700.

Based on the Complainant’s submissions, which are not rebutted by the Respondent, the Respondent’s website at the disputed domain name is not only copying or imitating the trademarks, logos, format and contents of the Complainant’s website at “www.ebay.com”, but also provides services that are directly competitive with those offered by the Complainant. Given that the disputed domain name is confusingly similar to the Complainant’s trademark and that other similarities exist between the two parties’ websites, Internet users are highly likely to be confused as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent in all likelihood registered and is using the disputed domain name to profit from the users’ confusion with Complainant’s mark.

The Panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a very strong inference that the Respondent’s purpose of registering the domain name was for commercial gain in bad faith within the meaning of the Policy.

There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). The Respondent here probably knew of the Complainant’s famous EBAY trademark when it used the mark in registering a domain name it would then use in a way that would compete with the Complainant’s business. The Respondent clearly registered the domain name, appropriating the Complainant’s famous trademark, in order to suggest to the Internet user a connection between the Complainant’s product and the Respondent’s product line which simply did not exist. This is misleading and supports a finding of bad faith registration. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072.

Further, the likelihood of confusion has to be appreciated globally, taking account of all relevant factors and the more distinctive the earlier mark the greater would be the likelihood of confusion. Where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. See Ellerman Investments Ltd. and another v. C-Vanci [2006] EWHC 1442, Caterpillar Inc. v. Spiral Matrix/ Kentech,Inc., /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808) and PRL USA Holdings, Inc. v. Yan ShifWIPO Case No. D2006-0700.

The Complainant also contends that the Respondent’s bad faith is shown in its registration of the disputed domain name by using incomplete and/or inaccurate contact information. The Panel agrees that the Respondent’s purposefully using false contact information in registering the domain name to conceal its identity may be an additional proof of the Respondent’s bad faith.

Based on the above findings, the Panel finds that the Respondent has registered and is using the domain name in bad faith as provided in paragraph 4(b)(iv) of the Policy, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

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 name <ebaaaay.com> be transferred to the Complainant.

Dated: December 28, 2006