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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EBAY, Inc. v. LivingSprings2000, a business entity form unknown and Martin Lewis, an individual, d/b/a LivingSprings2000
Case No. D 2000-1444
1. The Parties
Complainant is EBAY, Inc. ("eBay"). eBay is a Delaware corporation with its principal place of business in San Jose, California, United States of America (USA). Respondents are LivingSprings2000 and W. Martin Lewis. Respondents’ address is: P.O. Box 1072, Corinth, Mississippi 38834 (USA).
In the Response, Respondents recast the caption and indicate a single Respondent: ebayRus Inc., a Mississippi Corporation. Respondents’ affidavit contains documents from the State of Mississippi showing the incorporation of that corporation on September 5, 2000. W. Martin Lewis is listed as the registered agent and the address of the registered office is 1495 Hwy. 72 West, P.O. Box 1676, Corinth, Mississippi 38835-1676. Presumably this corporation owns the interest in the Domain Names at issue, although the Registrar confirmed that LivingSprings2000 is the current registrant.
2. The Domain Names and Registrar
This dispute concerns three domain names: ebayrus.com, ebayrus.net and ebayrus.org ("Domain Names"). Melbourne IT, Ltd. D/B/A Internet Names Worldwide ("Melbourne IT, Ltd."), is the registrar.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint by email and in hard copy on October 23, 2000. The Center verified that the complaint 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is October 27, 2000.
Issuance of Complaint
The complaint indicates that WHOIS records for the Domain Names list Respondents LivingSprings2000 and Martin Lewis at the following address: P.O. Box 1072, Corinth, Mississippi 38834, (USA). Complainants sent a copy of the complaint by email to the following address: "email@example.com". Martin Lewis is the Administrative and Billing contact for all of the Domain Names. His email is "firstname.lastname@example.org".
Confirmation of Registration Details
On October 27, 2000, the Center transmitted via email to Melbourne IT, Ltd. a request for registrar verification in connection with this case. On October 30, 2000, Melbourne IT, Ltd. transmitted by email to the Center their verification response confirming the registrations in paragraph 2 (above) and indicating that the Administrative and Billing contact is W. Martin Lewis.
Notification of Respondents
On October 30, 2000, the Center transmitted to "email@example.com", Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by November 18, 2000.
Filing of Response
On November 18, 2000, the Respondents filed a response via email.
Constitution of Administrative Panel
On December 9, 2000, the Center notified the parties via email that the Administrative Panel would consist of the following persons: Mr. David Wagoner as the Presiding Panelist and Professor Frederick M. Abbott and Ms. Joan Clark as Co-Panelists.
Compliance with the formalities of the Policy and the Rules
Upon review of the file, the Panel concludes that the Center has fully complied with the formalities of the Policy and Rules, that Respondents were given adequate notice of this proceeding, and that Respondents have been accorded due process.
4. Factual Background
eBay owns a federal registration for the EBAY mark, US Registration No. 2,218,732, issued January 19, 1999, as well as numerous pending applications to register EBAY for a wide variety of goods and services. A copy of eBay’s trademark registration along with copies of the applications are attached to the complaint as Exhibit F and a chart listing on a worldwide basis the serial number for each of eBay’s registrations and the filing number for each of eBay’s applications is attached to the complaint as Exhibit J.
eBay’s federal service mark is for: on-line trading services in which seller posts items to be auctioned and bidding is done electronically, and providing evaluative feedback and ratings of sellers’ goods and services, the value and prices of sellers’ goods, buyers’ and sellers’ performance, delivery, and overall trading experience in connection therewith, in class 35.
On August 21, 2000, Respondents registered with Melbourne IT the three domain names set out in section 2 above all beginning with ebay: "ebayrus.com", "ebayrus.net", and "ebayrus.org". The suffixes ".com", ".net" and ".org" should not be considered to be part of the domain names for the purpose of this proceeding. For simplicity purposes the Panel will refer to these three domain names collectively as the "Domain Names".
Respondents intend to engage in the same line of business as eBay: on-line person-to-person trading services.
5. Parties’ Contentions
Complainant's challenge is based on its trademark "EBAY" which was registered in the U.S. on January 18, 1999, with a first use in 1995, in connection with Complainant's on-line person-to-person trading services; the mark "EBAY" is also the subject of several applications for registration of the mark for various wares and services. Some of these applications are for the mark in a special design, with the third and fourth letters being above the line of the first and second letters, all the letters being in lower case.
Complainant's affidavit states that Complainant has spent in excess of $30,000,000 since 1999, for advertisement and promotion of its services; it is understood this was to attract users to its site , described as "ebay" and /or "ebay.com".
Complainant states that both of the parties both operate in the on-line auction business, that the Domain Names in issue are confusingly similar to Complainant's trademark, and that the Domain Names "mimic the coloring and a distinctive lettering style of [Complainant's] well-known logo mark EBAY". Complainant asserts that the suffix "rus" suggests "are us" which does not give the viewer the impression of a new word or expression independent of the EBAY.
Complainant asserts that Respondents have no rights in the EBAY mark, that Respondents’ primary intent was to divert potential customers of Complainant to Respondents’ web site, and that Respondents registered and have used the Domain Names in bad faith.
Complainant has been prompt in challenging the Domain Names by forwarding a Complaint, which was received by the Center on October 24, 2000. It appears from the Response that Complainant was "e-mailing" and challenging Respondents before that.
B. The ResponseRespondents deny there is confusion and assert that the suffix "RUS" indicates "OR US" which would distinguish the domain name from Complainant's name and mark.
Respondents argue that "E" and "BAY" are both generic, so Complainant cannot have rights in the combination "EBAY".
Respondents rely heavily on various domain name registrations for marks that contain "e", "bay" and combinations of these with or without figures such as "1"and "2"as prefixes or suffixes.
Respondents also state they have not determined their next course of action with respect to changing the color or appearance of their web site, and add they will change their web page appearance and color "if that is the problem".
The Response states that Respondents’ web site was just 2 days away from activation, and Respondents’ affiant declares that "ebayRus is at present, DEAD" because of Complainant and its complaint, and plans for the launch are cancelled "contemplating your decision".
6. Discussion and Findings
Paragraph 4.a of the Policy directs that Complainant must prove, with respect to each domain name in issue, each of the following:
(1) The domain name in issue is identical or confusingly similar to the Complainant’s trademarks or service marks and
(2) Respondents have no rights or legitimate interests in respect of the name, and
(3) The domain name has been registered and is being used in bad faith.
Paragraph 4.b of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which, if proved, shall demonstrate Respondents’ rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar Domain Names
Complainant has proved that Respondents’ Domain Names are confusingly similar to trademarks in which Complainant has rights.
The Panel finds the Domain Names to be confusingly similar to the trademark EBAY in which Complainant has rights. The addition of the suffix "Rus" not only fails to distinguish the Domain Names from the trademark, it reinforces the identification of the Domain Names as referring to the owner of the trademark. Contrary to Respondents’ contention, "Rus" phonetically means "are us", and not "OR us". In making the untenable argument that "R" is pronounced "or" and not "are", Respondents are admitting that the first part of the Domain Names is a reference to "ebay", Complainant's trademark.
The Panel does not accept Respondents’ view, even if the two components of Complainant's mark are considered to be generic, that the combined mark is consequently invalid and unworthy of protection.
Respondents interpret the Busy Body, et al, case D2000-0127 (F.M. Abbott sole panelist), as standing for the proposition that because "e" is generic or commonly descriptive, it cannot acquire secondary meaning in combination with another term. This is incorrect. eBay has a registered service mark and the benefit of the presumption of secondary meaning.
Whether or not Complainant has objected to other domain names containing "ebay" is irrelevant to a determination of the present dispute.
B. Respondents’ Rights or Legitimate Interests in the Domain Names
The Panel finds that Respondents have no rights or legitimate interests in the Domain Names, which the Panel finds were inspired by and copied from Complainant's name and trademark.
Although Respondents assert that they made demonstrable preparations to use the Domain Names prior to notice of a dispute, the Panel finds that their preparations were not to use the Domain Names in connection with a "bona fide" offering of goods or services. Policy 4c(i). Respondents’ lack of bona fides is evident from the style of lettering of the letters "ebay" which, while not identical to Complainant's positioning of the letters, is so similar thereto as to be intentional. In essence Respondents adopted Complainant’s trade dress, and thus attempted to deceive the public.
In addition, the fact that Respondents are guilty of bad faith in the registration and planning for use of the Domain Names, as the Panel concludes in the next section of this Decision, effectively negates any conclusion that Respondents were planning to engage in "bona fide" activities. Although Complainant has the ultimate burden of proof on this issue, Respondents have the burden of going forward with some evidence on their behalf. This they have not done.
Moreover, Respondents are in no position to argue that they made preparatory plans with no "notice" of Complainant’s trademark rights. Respondents’ plans are nearly a carbon copy of Complainant’s activities indicating that Respondents had actual notice of Complainant’s business programs and successes, as well as its name and trademark.
C. Domain Names Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith. Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with Complainant's mark. Policy 4b(iv). This is apparent from the suffix "Rus", indicating an identification with Complainant's name and trademark, as discussed above, as well as the similarity of the lettering of Respondents’ Domain Names, as they appeared on the website advertisements, to the design of Complainant's name and mark on its web site.
The Panel confirms the opinions of numerous previous decisions, starting with the Telstra decision (D2000-0003), holding that use of a domain name may include passive holding of the domain name, even if the web site has not been activated.
In light of the foregoing, the Panel decides that:
(1) The Domain Names registered by Respondents and at issue here are confusingly similar to Complainant’s trademark,
(2) Respondents have no rights or legitimate interests in respect of the Domain Names at issue, and
(3) The Domain Names at issue have been registered and are being used in bad faith by Respondents.
Accordingly the Panel requests that the Registration of the 3 Domain Names set forth in paragraph 2 of this Decision be transferred to Complainant.
David Everett Wagoner
Prof. Frederick M. Abbott Ms. Joan Clark
Dated: December 23, 2000