Complainants are eBay Inc. and PayPal, Inc., both of San Jose, California, United States of America ("United States" or "U.S."), represented by Hogan Lovells (Paris) LLP, France.
Respondents are Noorinet and Linecom, both of the Republic of Korea.
The disputed domain name <ebaybank.com> is registered with the registrar KINX Co., Ltd. The disputed domain names <ebaycafe.com>, <ebaypixel.com>, <paypalfrance.com>, and <paypaltransfer.com> are registered with the registrar Megazone Corp., dba HOSTING.KR. The disputed domain names <ebayfashion.com>, <ebayplus.com>, <ebaypro.com>, <paypal-card.com>, <paypalcn.com>, <paypalhosting.com>, <paypalshop.com>, and <thaiebay.com> are registered with the registrar Gabia, Inc. (KINX Co., Ltd., Megazone Corp., dba HOSTING.KR and Gabia, Inc. are hereinafter the "Registrars").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2016. On January 11, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 12, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the Respondents' contact details.
On January 19, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Name was Korean. On the same day, the Complainants requested for English to be the language of the proceeding. The Respondents did not reply.
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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on February 23, 2016.
The Center appointed Moonchul Chang as the sole panelist in this matter on March 17, 2016. 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.
Complainants are eBay Inc. ("eBay") and PayPal, Inc. ("PayPal"). Since its creation in 1995, eBay has been growing as a global company in the field of online commerce and shopping. eBay Inc. owns numerous trademarks in the mark EBAY in many jurisdictions around the world, including, inter alia, U.S. Trademark No. 2218732, registered on January 19, 1999; Korean Trademark No. 0084069, registered on February 19, 2003; Community Trademark No. 1499599, registered on June 6, 2001.
On the other hand, since its creation in 1998 PayPal has developed as a global company in the field of online payment and money transfers. PayPal also owns numerous registered PAYPAL trademarks, including, inter alia, U.S. Trademark No. 2646490, registered on November 5, 2002; Community Trademark No. 001362565, registered on December 4, 2000; and Korean Trademark No. 0093643, registered on November 25, 2003. In addition, both Complainants also own numerous domain names to which various authorized websites resolve.
Respondents are Noorinet (the "First Respondent") and Linecom (the "Second Respondent").
According to the publicly available WhoIs information and confirmed by the Registrars, the disputed domain names were registered as follows:
<ebaybank.com> was registered on July 20, 2014;
<ebaycafe.com> was registered on July 27, 2012;
<ebayfashion.com> was registered on April 22, 2008;
<ebaypixel.com> was registered on December 25, 2006;
<ebayplus.com> was registered on March 28, 2011;
<ebaypro.com> was registered on November 18, 2009;
<paypal-card.com> was registered on May 22, 2007;
<paypalcn.com> was registered on February 7, 2009;
<paypalfrance.com> was registered on October 21, 2011;
<paypalhosting.com> was registered on July 10, 2011;
<paypalshop.com> was registered on June 17, 2007;
<paytransfer.com> was registered on October 2, 2011; and
<thaiebay.com> was registered on September 29, 2007.
Complainants contend that:
(i) The disputed domain names are confusingly similar to Complainants' trademarks EBAY and PAYPAL. The disputed domain names incorporate the marks EBAY and PAYPAL in their entirety. The disputed domain names only differ from Complainants' trademarks EBAY and PAYPAL by the addition of generic terms such as "bank", "cafe", "fashion", "pixel", "plus", "pro", "card", "cn", "France", "hosting", "shop", "transfer", and "thai". The mere addition of a generic term is insufficient to distinguish the disputed domain names from the Complainants' trademarks given that the dominant element in each case is Complainants' trademarks EBAY or PAYPAL.
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names. Respondents are not authorized dealers, distributors, or licensees of the Complainants, nor have they been otherwise allowed by Complainants to make any use of their EBAY or PAYPAL marks. There is no conceivable legitimate interest in the use of the disputed domain names by Respondents.
(iii) The disputed domain names were registered and are being used by Respondents in bad faith. Firstly, Respondents registered the disputed domain names in full knowledge of Complainants' rights at the time of registration of the disputed domain names. Secondly, Respondents registered the disputed domain names for purposes of selling or transferring them to Complainants or to competitors of Complainants. Thirdly, Respondents have engaged in a pattern of registering domain names infringing Complainants trademarks which is a strong indication of Respondents' bad faith. Finally, Respondents are using the disputed domain names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with Complainants' marks. Although among the disputed domain names the domain name <ebaypro.com> is not currently resolving, passive holding of a domain name does not prevent a finding of bad faith use of a domain name.
Respondents did not reply to Complainants' contentions.
Although paragraph 10(e) of the Rules generally empowers panels to consolidate multiple domain name disputes in accordance with the Policy and the Rules, neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants or multiple respondents per se in a single administrative proceeding. Consolidation of complaints can quite obviously not be lightly permitted in cases where complainants do not have a common legal interest in the disputed domain names, as was pointed out by the panel in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021, "[where there is no common legal interest] the complainants would need to make a compelling case that the respondent has engaged in common conduct that has affected their individual rights in like fashion." A number of factors have been identified by previous UDRP panels as being relevant where respondents have engaged in common conduct that affects complainants in like fashion. The most significant of these requires that complainants are faced by what is or appears to be a single respondent that owns all of the disputed domain names; that the disputed domain names have similarities in them, such as the inclusion of a complete trademark and generic terms with a similar meaning; that complainants are in broadly similar businesses and stand to suffer analogous adverse consequences from respondents' conduct; and that the websites to which the disputed domain names resolve also demonstrate operational or apparent similarities: see National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra; and Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331 ("Fulham").
Although Complainants still maintain strong ties with each other, they are individual companies that do not have a common legal interest in the disputed domain names. However, they seek to consolidate their complaints on the general basis of Respondents having engaged in "common conduct". In this case the following factors support consolidation: (i) Complainants are both companies that operate online and the disputed domain names identically reproduce Complainants' trademarks with generic terms; and (ii) there is a pattern of registration and use of the dispute domain names by resolving to similar parking websites.
Further, in Fulham the question whether it would be equitable and procedurally efficient to consolidate the complaints was also raised. The panel in that case pointed out that separate proceedings would be inefficient and unnecessary where the disputed domain names are used for the same purposes; the substantive arguments are the same in each case; all the complainants are represented by a single authorized representative for the purposes of the proceedings; the case involves a relatively small number of disputed domain names; relevant filings, including annexes, are not unreasonably voluminous; and there is an applicable fee schedule covering the complaint as filed (factors reiterated in Fulham at 5B). These factors are all satisfied in this case.
Overall, the Panel agrees with Fulham that this is a case "fitting within the 'common conduct' category in which it would be equitable and fair to permit consolidation."
With respect to multiple respondents, the Panel notes Complainants' contentions supported by evidence that: (i) the Respondents have similar contact details; (ii) most of the disputed domain names share a similar structure (consisting of a trademark and a descriptive term); and (iii) the disputed domain names are being used in a similar fashion. Therefore, the Panel finds that the disputed domain names are subject to common control and the consolidation would be fair and equitable to all Parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.16).
Accordingly, this Panel, having regard to all relevant circumstances, concludes that the consolidation of the multiple domain name disputes asserted by Complainants against Respondents is consistent with the Policy and Rules.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise. In this present case, the Registrars confirmed that the language of the Registration Agreement for the disputed domain names is Korean. However, the Complaint was filed in English. Complainants request that the language of proceeding be English for the following reasons: (i) the disputed domain names identically reproduce Complainants' EBAY and PAYPAL trademarks in conjunction with a variety of English terms such as "bank", "fashion", "pixel", "plus", "pro", "card", "cn", "France", "hosting", "shop", "transfer", and "thai"; (ii) the websites to which the disputed domain names resolves are in English and therefore Respondents are targeting English speakers; and (iii) because the activities carried out via the disputed domain names are illegitimate and detrimental to Complainants, it would be disproportionate to require Complainants not to submit the present Complaint in English as this would result in additional expense and unnecessary delay for Complainants. On the other hand, Respondents did not reply to Complainants' contentions.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties' level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, this Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Tumblr, Inc. v. Kenny Kim, WIPO Case No. D2013-0440).
The disputed domain names incorporate Complainants' trademarks EBAY or PAYPAL in their entirety with the addition of generic terms such as "bank", "cafe", "fashion", "pixel", "plus", "pro", "card", "cn", "France", "hosting", "shop", "transfer", and "thai". The dominant feature of the disputed domain names is "ebay" or "paypal" which is identical to Complainants' trademarks. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant's trademark, this is sufficient to find the domain name "confusingly similar" within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited,WIPO Case No. D2000-1678). The generic Top-Level Domain suffix ".com" or ".net" can be generally disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by Complainants.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on Complainants. However, once Complainants present a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names, the burden of production shifts to Respondents to show their rights or legitimate interests. If Respondents fail to come forth asserting any right or legitimate interest, Complainants are considered to have satisfied their burden (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, Complainants have never licensed or authorized Respondents to use Complainants' trademarks or to register any domain names incorporating the EBAY or PAYPAL marks. Respondents have used Complainants' widely known registered trademarks without permission from Complainants.
Secondly, Complainants contend that Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services. In this present case, Respondents failed to come forward with any appropriate allegations or evidence that might demonstrate their rights or legitimate interests in the disputed domain names to rebut Complainants' prima facie case.
Thirdly, there is no evidence presented to the Panel that Respondents have used, or have made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or are making a legitimate noncommercial or fair use of the disputed domain names. In addition, there is no evidence to suggest that Respondents have been commonly known by the disputed domain names.
Accordingly, this Panel concludes that Complainants have satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith". As this requirement is conjunctive, the complainant must establish both bad faith registration and bad faith use of the disputed domain name. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since Complainants' trademarks EBAY and PAYPAL are widely known and the disputed domain names entirely incorporate Complainants' trademarks, in this Panel's view it is highly unlikely that Respondents were unaware of Complainants' trademarks at the time of the registration of the disputed domain names.
Secondly, according to the evidence Complainants presented to this Panel the disputed domain names previously resolved to parking websites with sponsored links displaying Complainants' EBAY and PAYPAL trademarks or referring to services related to Complainants. It is considered that Respondents were deliberately using the disputed domain names to intentionally attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainants' marks.
Thirdly, the disputed domain names were being offered for sale on the associated websites.
It might be considered that Respondents registered the disputed domain names for purposes of selling them to Complainants or to competitors of the Complainants.
Finally, having considered Respondents' registrations of multiple confusingly similar disputed domain names incorporating Complainants' widely known trademarks, together with the fact that the Respondents have also been the respondents in over 60 domain name disputes (see, e.g., L'Oréal v. Noorinet, WIPO Case No. D2015-0755 and Colgate-Palmolive Company v. Linecom, WIPO Case No. D2013-0712), the Panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been established with respect to the disputed domain names in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainants have satisfied the third element under paragraph 4(a) of the Policy in the present case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <ebaybank.com>, <ebaycafe.com>, <ebaypixel.com>, <ebayfashion.com>, <ebayplus.com>, <ebaypro.com> and <thaiebay.com> be transferred to Complainant eBay Inc., and <paypal-card.com>, <paypalcn.com>, <paypalhosting.com>, <paypalshop.com>, <paypalfrance.com>, and <paypaltransfer.com> be transferred to Complainant PayPal, Inc.
Date: April 11, 2016
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