WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc., PayPal, Inc. v. Rene Rene/Wuxi Yilian LLC
Case No. D2015-0010
1. The Parties
The Complainants are eBay Inc. (the “first Complainant”) and PayPal, Inc. (the “second Complainant”) of San Jose, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Rene Rene of China/Wuxi Yilian LLC of Xiamen, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names, listed in the attachment to this decision, are registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015, involving 141 domain names against Wuxi Yilian LLC. On January 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 141 domain names. On January 9, 2015, the Registrar informed the Center that 21 of these domain names were already expired and deleted. On January 13, 14 and 15, 2015, the Registrar transmitted by email to the Center its verification responses disclosing registrants and contact information for the remaining domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2015 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint and requesting it to address the issue of multiple domain names and underlying registrants. On the same day, the Center also requested the Complainant to remove the expired domain names as confirmed by the Registrar from the current proceeding. The Complainant filed the amended Complaints on January 20 and 21, 2015 involving the disputed domain names listed in the attachment to this Decision.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceeding commenced on January 22, 2015. According to the transmission records, it appears that the Complaint was successfully transmitted to the Respondent, for at least some of the contact details (in particular, a fax number and at least one email address). In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on February 18, 2015. The Panel finds that it was properly constituted. 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.
4. Factual Background
The second Complainant is a wholly owned subsidiary of the first Complainant. For convenience, and unless otherwise indicated, both Complainants are collectively referred to as the “Complainant” in this Decision.
The first Complainant is a global leader in the field of online commerce and shopping. It commenced its business in 1995, and now claims a global customer base of 233 million people, and over 124 million active registered users. Its website at “www.ebay.com” is the 18th most visited website in the world and the second most visited for shopping (according to the company Alexa). The EBAY brand is ranked 28th in Interbrands Best Global Brands 2014.
The second Complainant is a global leader in the field of online payment and money transfers. It was created in 1998, and currently has more than 152 million active accounts worldwide. It was acquired by the first Complainant in 2002. The second Complainant’s website at “www.paypal.com” is ranked the 34th most visited website in the world.
The Complainants each own numerous trademark registrations consisting of or containing the terms EBAY and PAYPAL in many jurisdictions throughout the world and a large portfolio of domain names in connection with their business, including domain names with various country code extensions, including the extension for China, <ebay.cn> and <paypal.cn>, where the Respondent has its address.
Both Complainants also have a significant presence on social media, and have been the target of numerous cybersquatters, as evidenced by large number of prior proceedings involving each under the Policy. The Complainant’s trademarks have been recognized as well known in a number of those previous UDRP cases, including recent cases involving Chinese respondents: see e.g.eBay Inc. v. Du Hongxia/Liu Yujiao/WHOIS AGENT, DOMAIN WHOIS PROTECTION SERVICE,
WIPO Case No. D2014-2015; eBay Inc., PayPal Inc. v. Bao Zheng, Two Stooges LLC / Ni Hao, Two Stooges LLC,
WIPO Case No. D2014-1478.
The disputed domain names were registered between February and November, 2014. All are registered with the same Registrar, Bizcn.com, Inc. In the initial Complaint, the Complainant identified Wuxi Yilian LLC as the Respondent, apparently based on the WhoIs details available to the Complainant in December 2014, which identified a privacy service as the registrant of the disputed domain names. After submission of the Complaint to the Center, and verification by the Registrar of the registrant’s details, the Complainant submitted the amended Complaint, identifying both “Wuxi Yilian LLC” and “Rene Rene” as the Respondent and varying the list of the disputed domain names (to delete a number and add one). The WhoIs details at January 15, 2015 indicated that “Rene Rene” was the named registrant for all of the disputed domain names.
The disputed domain names do not resolve to active websites. The Complainant provides evidence that some of the disputed domain names previously pointed to a website prominently displaying the PAYPAL trademark and falsely suggesting an affiliation with the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainants argue that they have a common grievance against the Respondent, and that it would be equitable and procedurally efficient to permit the consolidation of the Complaint. The Complainant refers to paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) for support in this connection.
The Complainant says that the disputed domain names are identical or confusingly similar to its registered trademarks, of which it provides evidence in the Complaint. The Complainant points to the fact that its marks are entirely incorporated in the disputed domain names, with a number adding only generic, descriptive or geographic terms which only serve to reinforce confusing similarity.
The Complainant also says that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent is unable to invoke any of the circumstances that might demonstrate such rights, set out in paragraph 4(c) of the Policy.
Thirdly, the Complainant says that the Respondent registered and has used the disputed domain names in bad faith. It is inconceivable that the Respondent was not aware of the Complainant’s rights when it registered the disputed domain names. The Complainant submits that the Respondent registered the disputed domain names to create confusion among Internet users, and to prevent the Complainant from reflecting its marks in corresponding domain names. Given the strength of the Complainant’s marks, there cannot be any actual or contemplated good faith use of the disputed domain names and they would inevitably cause confusion among Internet users. The use of a privacy service by the Respondent, and the provision of false WhoIs contact information, is further evidence of bad faith.
A number of the Complainant’s arguments, although included in the amended Complaints, relate to matters that ultimately became irrelevant in this case (including the language of some of the registration agreements, and websites resolving from domain names that were removed from the amended Complaint). The Panel has accordingly ignored those parts of the amended Complaint that are not relevant to the list of 93 disputed domain names attached to this Decision.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below, immediately following a consideration of the consolidation of the Complaint and the differently named Respondents.
A. Consolidation of the Complaint
The Complainant argues that both the first and second Complainants should be permitted to file a consolidated Complaint, as they are both legally related and share a common grievance against the Respondent.
Although the Policy does not explicitly provide for multiple complainants to be treated as one, neither does it explicitly preclude it. The majority of panels have accepted complaints filed by multiple complainants, particularly where they are related entities. See e.g.Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter,WIPO Case No. D2007-1254. See also e.g.Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.,
WIPO Case No. D2005-1336. This approach has also been accepted in recent prior cases involving the Complainant and in similar circumstances to this case: eBay Inc., PayPal Inc. v. Bao Zheng, Two Stooges LLC / Ni Hao, Two Stooges LLC, supra.
The Complainants in this case are clearly related. The second Complainant is wholly owned by the first Complainant. The Panel does not consider that the Respondent would be disadvantaged by the consolidation of the Complaint. The Respondent also has lodged no objection to this approach. The overall interests of fairness and efficiency would appear to be advanced by allowing the consolidation of the Complainants in these circumstances. Accordingly, the Panel has allowed the Complaint to proceed in the name of both Complainants.
B. Differently named Respondents
The Complaint lists two differently named Respondents, although the confirmation of the registrant details by the Registrar indicates that the disputed domain names are all held under a single named Respondent: “Rene Rene”. Regardless, the remainder of the Complaint is drafted as if the Respondent is a single entity, and the Complainant has made no request to consolidate the Complaint against a single Respondent.
Paragraph 4.16 of the WIPO Overview 2.0 refers to the criteria to be applied where multiple respondents are involved, and states that such a complaint would typically need to be accompanied by a request for consolidation. However, that paragraph of the WIPO Overview 2.0 appears directed to the circumstances where the respondents are, in fact, different entities.
The Complaint is silent on whether the two named Respondents are to be treated as one entity in fact. In the absence of any clear argument from the Complainant, or contrary evidence from the Respondent, the Panel has inferred that both named Respondents should be treated as a single entity for the purpose of this proceeding. This is for the following reasons:
- The name of the underlying registrant of the disputed domain names (Rene Rene) is the same. Although the actual identify of the Respondent remains unclear, in the absence of a Response, there is no evidence that this Respondent is not a single entity.
- The initially-named registrant of the disputed domain names appears to be a privacy service. It has been recognized as such in previous UDRP decisions under the Policy: See e.g.ALDI GmbH & Co. KG v. Marius Mueller / Wuxi Yilian LLC,
WIPO Case No. D2014-1391. Accordingly, the Panel has retained a reference to the privacy service as a named Respondent.
C. Identical or Confusingly Similar
The disputed domain names can be divided into two categories for the purpose of considering whether they are confusingly similar to the Complainant’s EBAY and PAYPAL marks which are registered in a large number of jurisdictions, including in China where the Respondent has its address.
The first category involve the disputed domain names that entirely incorporate the Complainant’s EBAY mark. All of the disputed domain names in this category incorporated the Complainant’s mark as the first-appearing element, and add a word apparently in German separated by a hyphen. In each case, the separation of the Complainant’s mark with the hyphen clearly identifies that mark. As relevantly noted in the WIPO Overview 2.0, paragraph 1.2, “[i]n order to satisfy this test [of confusing similarity], the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion.”
As a clearly separated and first-appearing element, the Complainant’s mark is clearly recognizable as such in each of this first category of disputed domain names. While the Complainant does not identify the meaning of each of the apparently German words that follow, the Panel has inferred that each has a separate meaning and, as such, are insufficient to distinguish the mark. But even if those terms were made-up, the Complainant’s mark remains clearly distinguished. As such, it is reasonable to infer that many Internet users would be confused as to whether the disputed domain names had some association with the Complainant.
The second category in this case are the disputed domain names that entirely incorporate the Complainant’s PAYPAL mark. The majority of the disputed domain names in this category include that mark as the first-appearing element, and/or as a hyphenated component. The Complainant implies, although does not articulate in every case, that each disputed domain name in this category also adds a geographic, descriptive, or geographic term or numerals. Regardless of whether the added terms do, in fact, carry these meanings, the Panel does not consider it determinative because the Complainant’s mark is clearly visible in each. As such, for similar reasons to those outlined above in relation to the Complainant’s EBAY mark, the Panel considers that these disputed domain names are confusingly similar to the Complainant’s PAYPAL mark.
The Panel accordingly finds that the Complaint has satisfied the first element of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain names. This paragraph requires the Complainant to, at minimum, present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. A prima face case is one which appears credible on its face. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See WIPO Overview 2.0, paragraph 2.1.
In this proceeding, the Complainant has made a substantial case against the Respondent, which stands unanswered. The Complainant has very-well known and distinctive trademarks. The fame of the Complainant’s marks are widely recognized, and have been recognized in previous cases under the Policy (cited above). Given the fame of the Complainant’s marks, it is difficult to conceive of any good faith use by the Respondent. There is nothing else in the case file which calls this into question.
The Panel accordingly finds that the Complainant has established a prima facie case against the Respondent. The Complaint has satisfied the second element of the Policy.
E. Registered and Used in Bad Faith
Bad faith may be found if the Respondent knew or, in appropriate cases, ought to have known of the Complainant. See, for example, Moari Television Service v. Damien Sampat,WIPO Case No. D2005-0524 in which the then panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited decisions to similar effect. Other UDRP cases have taken a similar approach (e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,
WIPO Case No. D2000-1409.)
There are a number of indicators in this case that the Respondent was well-aware of the Complainant’s marks when it registered the disputed domain names:
- The Complainant’s marks are very well-known world-wide. As noted above, the Complainant’s websites are among the most visited in the world.
- The Complainant’s marks are particularly well-known for their use in connection with Internet commerce. The registration of confusingly similar disputed domain names is self-evidently an attractive proposition for marks which are strongly associated with on-line commerce.
- The Complainant’s marks are distinctive in a trademark sense. There is no evidence that the Ebay and Paypal terms have any legitimate association other than with the business of the Complainant.
- The Respondent has registered a large number of confusingly similar domain names that all prominently include the Complainant’s marks. This strongly suggests that it is the identifying value of the Complainant’s marks which was a motivating factor in the registration of the disputed domain names.
- The Respondent did not contest the allegations against it.
These factors all point to the bad faith registration of the disputed domain names.
The Panel also finds that the Respondent has then used the disputed domain names in bad faith. While the Respondent does not currently use the disputed domain names in connection with active websites, it is well-established that the passive holding of a domain name can, in appropriate circumstances, constitute a bad faith “use” for the purpose of the Policy: Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The Complainant also provides evidence that some of the disputed domain names have previously been used in connection with websites that falsely suggest a legitimate connection with the Complainant.
The further evidence of bad faith use of the disputed domain names is that:
- The Complainant’s marks are so well known it is inconceivable that the Respondent could use them legitimately.
- The Respondent’s registration of such a number of domain names that incorporate the Complainant’s marks are, in this Panel’s view, a “pattern of conduct” designed to prevent the Complainant from reflecting its mark in a corresponding domain name. Paragraph 4(b)(ii) of the Policy provides that such conduct is evidence of bad faith registration and use. This conclusion is only reinforced by evidence in the Complaint that the Respondent has also registered the trademarks of third parties in domain names.
- The Respondent appears to have taken steps to conceal its identity. The Respondent has done this by the use of a privacy service, and the provision of obviously false contact details in the WhoIs record.
- Again, the Respondent has not contested the claims against it.
The Panel accordingly finds that the Complaint has satisfied the third element of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and in response to the remedies requested by the Complainant, the Panel orders that the following disputed domain names, be transferred to the first Complainant, eBay Inc.:
<ebay-aktualisieren.com>, <ebay-bestaetigen.com>, <ebay-onlinehilfe.com>, <ebay-passwortschutz.com>,<ebay-passwortsicherheit.com>, <ebay-sicherer.com>, <ebay-sicherheitscenter.com> and <paypal-ebaysicherheit.com>.
The Panel further orders that the following disputed domain names be transferred to the second Complainant, PayPal, Inc.:
<feedback-paypal.com>, <gewerbe-paypal.com>, <juniangebote-paypal.com>, <online-paypal-gewinne.com>, <paypal-abrechnung.com>, <paypalagbinfo.com>, <paypalagb-online.com>, <paypalagbonline.com>, <paypal-agb24.com>, <paypal-aktionen.com>, <paypal-aktuellisiert.com>, <paypal-antispam.com>, <paypal-austria.com>, <paypalaustria.com>, <paypal-aws.com>, <paypalbetreuung.com>, <paypal-carecenter.com>, <paypal-ceo.com>, <paypal-de-support.com>, <paypal-emailkommunikation.com>, <paypal-emailsupport.com>, <paypal-email2014.com>, <paypal-feedback.org>, <paypal-fragen.com>, <paypal-gegenbetrug.com>, <paypal-geldsparen.com>, <paypal-gewerbe24.com>, <paypal-gewinnspiel.com>, <paypal-hilfe.com>, <paypal-hilft.com>, <paypalid193.com>, <paypalid39481.com>, <paypal-info2014.com>, <paypalkonto.com>, <paypal-konto-online.com>, <paypalkonto.org>, <paypal-kontostand.com>, <paypal-kontouebersicht.com>, <paypal-kontouebersicht.org>, <paypal-kreditkarte.com>, <paypal-kundenhilfe.com>, <paypal-kundenschutz.com>, <paypal-muttertag.com>, <paypal-newsletter.com>, <paypal-oesterreich.com>, <paypal-onlinehandel.com>, <paypal-onlinekonto.com>, <paypalonline-nachrichten.com>, <paypal-onlinessl.com>, <paypal-onlinestatus.com>, <paypal-osterei.com>, <paypal-ostersuche.com>, <paypal-paypal-online.com>, <paypalregeln.com>, <paypal-ruckbuechung.com>, <paypal-rueckbuchung.com>, <paypal-ruestetauf.com>, <paypal-rundumdiewelt.com>, <paypal-safe24.com>, <paypal-schutz24.com>, <paypal-secure-online.com>, <paypal-servicevertrag.com>, <paypalsicherheit-deutschland.com>, <paypal-sicherheitseinstellung.com>, <paypalssl-sicherheit.com>, <paypal-ssl-sicherheitsverfahren.com>, <paypal-sslupdate.com>, <paypal-swiss.com>, <paypal-switzerland.com>, <paypal-system24.com>, <paypal-telefonbestaetigen.com>, <paypal-telfon.com>, <paypal-uebersicht.com>, <paypal-umfrage2014.com>, <paypal-umstellungen.com>, <paypal-update-news.com>, <paypal-verbraucherschutz.com>, <paypalverifi9381.com>, <paypal-versichert.com>, <paypal-vertragsbestimmungen.com>, <paypal-wartungen.com>, <paypal47.com>, <sec-check-pay-pal.com>, <sicherheitsupdate-paypal.com> and <sichermein-paypal.com>.
James A. Barker
Sole Panelist
Date: March 4, 2015
The disputed domain names
<ebay-aktualisieren.com>, <ebay-bestaetigen.com>, <ebay-onlinehilfe.com>, <ebay-passwortschutz.com>, <ebay-passwortsicherheit.com>, <ebay-sicherer.com>, <ebay-sicherheitscenter.com>, <feedback-paypal.com>, <gewerbe-paypal.com>, <juniangebote-paypal.com>, <online-paypal-gewinne.com>, <paypal-abrechnung.com>, <paypalagbinfo.com>, <paypalagb-online.com>, <paypalagbonline.com>, <paypal-agb24.com>, <paypal-aktionen.com>, <paypal-aktuellisiert.com>, <paypal-antispam.com>, <paypal-austria.com>, <paypalaustria.com>, <paypal-aws.com>, <paypalbetreuung.com>, <paypal-carecenter.com>, <paypal-ceo.com>, <paypal-de-support.com>, <paypal-ebaysicherheit.com>, <paypal-emailkommunikation.com>, <paypal-emailsupport.com>, <paypal-email2014.com>, <paypal-feedback.org>, <paypal-fragen.com>, <paypal-gegenbetrug.com>, <paypal-geldsparen.com>, <paypal-gewerbe24.com>, <paypal-gewinnspiel.com>, <paypal-hilfe.com>, <paypal-hilft.com>, <paypalid193.com>, <paypalid39481.com>, <paypal-info2014.com>, <paypalkonto.com>, <paypal-konto-online.com>, <paypalkonto.org>, <paypal-kontostand.com>, <paypal-kontouebersicht.com>, <paypal-kontouebersicht.org>, <paypal-kreditkarte.com>, <paypal-kundenhilfe.com>, <paypal-kundenschutz.com>, <paypal-muttertag.com>, <paypal-newsletter.com>, <paypal-oesterreich.com>, <paypal-onlinehandel.com>, <paypal-onlinekonto.com>, <paypalonline-nachrichten.com>, <paypal-onlinessl.com>, <paypal-onlinestatus.com>, <paypal-osterei.com>, <paypal-ostersuche.com>, <paypal-paypal-online.com>, <paypalregeln.com>, <paypal-ruckbuechung.com>, <paypal-rueckbuchung.com>, <paypal-ruestetauf.com>, <paypal-rundumdiewelt.com>, <paypal-safe24.com>, <paypal-schutz24.com>, <paypal-secure-online.com>, <paypal-servicevertrag.com>, <paypalsicherheit-deutschland.com>, <paypal-sicherheitseinstellung.com>, <paypalssl-sicherheit.com>, <paypal-ssl-sicherheitsverfahren.com>, <paypal-sslupdate.com>, <paypal-swiss.com>, <paypal-switzerland.com>, <paypal-system24.com>, <paypal-telefonbestaetigen.com>, <paypal-telfon.com>, <paypal-uebersicht.com>, <paypal-umfrage2014.com>, <paypal-umstellungen.com>, <paypal-update-news.com>, <paypal-verbraucherschutz.com>, <paypalverifi9381.com>, <paypal-versichert.com>, <paypal-vertragsbestimmungen.com>, <paypal-wartungen.com>, <paypal47.com>, <sec-check-pay-pal.com>, <sicherheitsupdate-paypal.com> and <sichermein-paypal.com>
