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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. Sunho Hong
Case No. D2000-1633
1. The Parties
Complainant is eBay Inc. ("Complainant" or "eBay"), a Delaware corporation with a principal place of business at 2145 Hamilton Avenue, San Jose, California, 95125 USA.
Respondent is Sunho Hong, an individual d/b/a ebaykorea.com ("Respondent" or "Hong") located at 205 Orchard Street #B-1, East Rutherford, New Jersey 07073 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is "ebaykorea.com" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA.
3. Procedural History
On November 23, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 27, 2000, the Center received hardcopy of the Complaint. On November 28, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
On November 30, 2000, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.
The Center verified that the Complaint with Amendment 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 December 1, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On December 24, 2000, the Center advised Respondent that it was in default for failing to file its Response. On December 26, 2000, the Center received email from Respondent. No Response has been received.
On January 3, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
eBay owns a federal registration for the EBAY mark, U.S. Registration No. 2,218,732 issued January 19, 1999, as well as numerous pending applications to register this mark in the United States for a wide variety of goods and services. eBay also holds broad common law rights in the EBAY mark as supported by the Declaration of Jay Monahan, Esq. (the "Monahan Declaration") filed in support of the Complaint.
eBay owns a foreign trademark registration for the EBAY mark in South Korea (Registration No. 0060864, filed December 24, 1998). eBay owns numerous other foreign trademark registrations for the EBAY mark, including registrations in the European Community, New Zealand, Australia, Taiwan, Benelux, Germany, Iceland, Israel, Japan, China, Mexico, Norway, Peru, Chile and Switzerland. In addition, eBay has numerous pending trademark applications for the EBAY mark, including in Turkey, United Kingdom, Brazil, Hungary, Canada, Colombia, Czech Republic, Egypt, Hong Kong, India, Indonesia, Malaysia, Philipines, Poland, Romania, Saudi Arabia, Singapore, Ukraine, Venezuela and Vietnam. eBay expects that registration certificates for these pending applications will issue in due course.
eBay operates its primary website at the domain address "ebay.com". eBay provides its services in numerous countries around the world, including, among others, Canada, France, Australia, Germany, Japan, and the United Kingdom, and its services are also advertised in those markets. For example, eBay uses the trademark EBAY CANADA to promote its services in Canada and operates those services as the domain name "ebaycanada.com". The eBay service is accessible from every country that has access to the Internet. eBay maintains a specialized web page directed toward Korean users. This page, located at the web address "www.ebay.com/koreancity", includes a section entitled "Korean Treasures."
eBay owns many domain names that consist of the EBAY trademark plus the name of a country. These domain names include, but are not limited to, the following: "ebayfrance.com", "ebayjapan.com", "ebayargentina.com", "ebaybelgium.com", "ebaybrasil.com", "ebaybrazil.com", "ebaycanada.com", "ebay-canada.com", "ebaychile.com", "ebaycuba.com", "ebayfinland.com", "ebaydenmark.com", "ebaygermany.com", "ebayisrael.com", "ebayitaly.com", "ebaynorway.com", "ebayportugal.com", "ebaysingapore.com", "ebaysweden.com", "ebayswitzerland.com", "ebayvenezuela.com", "ebayaustria.com", and "ebay4china.com".
As set forth in the Monahan Declaration, the EBAY mark is famous: eBay coined and has been using the EBAY trademark since at least as early as September 1995 (long before Respondent registered the Domain Name), in connection with its online person-to-person trading services. eBay has devoted substantial resources to advertise and promote its services and products under the EBAY mark, and the mark embodies the substantial goodwill that eBay has earned as a result of providing high quality services and products. In addition to its own advertising efforts, eBay has been the subject of thousands of unsolicited articles in the media, including national and international print, radio and television, highlighting eBay’s pioneering and successful efforts in online person-to-person trading. eBay was the first, and is one of the most successful, person-to-person auction listing sites on the Internet.
As of November 17, 2000, there were over five million auction listings posted on the eBay website. Each day, over 400,000 new items are listed for sale, and over one million separate bids are placed on items in over 4,320 different categories of goods. In addition to its online trading services, the eBay website offers a variety of related services, including currency conversion tools, escrow services, charity auctions, theme-oriented pages, and many others that combine to make eBay a unique person-to-person trading community offering substantial value to its users.
eBay enjoys a widespread reputation in the marketplace as a high-quality trading forum. eBay has advertised and promoted the eBay mark across many sites on the Internet, including AOL, Yahoo! and Lycos, and in print and radio media, as well as via a presence at venues such as collector trade shows and on college campuses. eBay’s founder and its CEO are often called upon to speak, and interviews of them have been featured in prominent radio and television programs such as The Today Show, National Public Radio, and the National Press Club. In addition, eBay has entered into numerous agreements that have promoted the EBAY name (including via books).
5. Parties’ Contentions
A. Complainant contends that it has a registered trademark in EBAY. Complainant further contends that the Domain Name is identical with and confusingly similar to the EBAY mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent does not contest Complainant’s assertion that it has a registered mark in EBAY or that the Domain Name is identical with and confusingly similar to the marks.
Respondent failed to contest Complainant’s assertion that Respondent has no rights or legitimate interest in the Domain Name.
Respondent failed to contest Complainant’s assertion that Respondent registered and used the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Identity or Confusing Similarity
Complainant contends that it has a registered trademark in EBAY. Complainant further contends that the Domain Name is identical with and confusingly similar to the EBAY mark pursuant to the Policy paragraph 4(a)(i).
The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the "www.ebaykorea.com" domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.
eBay owns many domain names that employ the EBAY mark in conjunction with a country name and uses those domain names to promote its services in other countries. For example, eBay has registered the domain name "ebaycanada.com" and uses the mark EBAY CANADA to promote its services in Canada. eBay also has a pending application to register the EBAY CANADA mark. In addition, eBay uses the "ebayjapan.com" domain name to promote its services in Japan and "ebayfrance.com" to promote its domain name in France. eBay likewise uses the names "eBay Australia", "eBay Germany", and "eBay United Kingdom" to promote its services in those countries. eBay owns many other domain names that consist of the EBAY mark plus the addition of a country name.
By adopting a domain name that incorporates the identical EBAY mark and simply adding the name of a country, Respondent is attempting to capitalize on the "eBay" name. Registrant clearly is hoping to mislead consumers to believe that the Domain Name is affiliated with eBay to attract Internet users to Respondent’s website for Respondent’s commercial gain.
Administrative panels and panelists considering similar cases where registrants simply added a country name to a registered trademark have found such domain names to be confusingly similar. See AT&T Corp. v. WorldclassMedia.com ("attmexico.com", "att-latinamerica.com"), WIPO Administrative Panel Decision in Case No. D2000-0553 (transfer ordered where domain names incorporating the AT&T trademark plus a country or place name were found to be confusingly similar to the AT&T trademarks); America Online, Inc. v. Dolphin@Heart ("aolfrance.com", "aolgermany.com", "aolireland.com", "aolspain.com"), WIPO Administrative Panel Decision in Case No. D2000-0713 (transfer ordered where domain names were confusingly similar because the "addition of a place name generally does not alter the underlying mark to which it is added."); Wal-Mart Stores, Inc. v. Walmarket Canada ("walmartcanada.com"), Administrative Panel Decision in Case No. D2000-0150 (transfer ordered where "walmartcanada.com" domain name was found to be confusingly similar to complainant’s WAL-MART trademark); and Cellular One Group v. Paul Brien (cellularonechina.com), Administrative Panel Decision in Case No. D2000-0028 (transfer ordered where "cellularonechina.com" domain name was found to be identical or confusingly similar to the CELLULARONE trademark).
Respondent has not contested the assertions by eBay that the Domain Name is confusingly similar to the EBAY mark.
Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the EBAY mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Respondent is not affiliated with eBay and has not received any permission or consent to use the EBAY mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c).
Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product
The four criteria established by the Policy paragraph 4(b) are non-exclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any active website at "www.ebaykorea.com" or made any other use of the Domain Name "ebaykorea.com". See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.
To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044.
See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000,); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000,) (citing cases where panel found inaction constitutes bad faith).
In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000,) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D00-0004 (February 16, 2000,) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business");
In the present case, the Domain Name was registered on February 7, 1999. The Domain Name has not yet been used for any legitimate purpose. The lack of any legitimate, good faith use suggests bad faith.
A second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s mark. Respondent registered the "ebaykorea.com" Domain Name on February 7, 1999, long after eBay adopted the EBAY trademark. Respondent had substantial constructive notice of the EBAY mark, as a trademark search on the date of the registration of the Domain Name would have revealed eBay’s registration of the EBAY mark in the United States. eBay’s trademark registration for the EBAY mark in the United States issued in January 1999, before Respondent registered the Domain Name. Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000,) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).
A third factor is Respondent’s refusal to voluntarily transfer the contested Domain Name. Complainant alleges that the following communications took place with Respondent:
On November 24, 1999, eBay’s counsel sent a letter informing Respondent of eBay’s rights and asking Respondent to transfer the ebaykorea.com domain name to eBay. Although this letter was sent to Respondent at the address listed on the Network Solutions Whois database, the letter was returned by Federal Express.
On October 24, 2000, eBay’s counsel sent another letter to Registrant (sent to a different address than the first letter, as noted on the Whois database). This letter informed Respondent of eBay’s rights and asked Respondent to transfer the "ebaykorea.com" Domain Name to eBay. eBay’s counsel received confirmation from Federal Express that this letter was delivered. Respondent failed to respond to eBay’s letter.
On November 1, 2000, eBay’s counsel sent another letter to Respondent, again asking that Respondent resolve this matter amicably by agreeing to transfer the Domain Name. Respondent failed to respond to eBay’s letter.
On November 8, 2000, eBay’s counsel called Respondent at the phone number listed on the Network Solutions Whois database. Counsel left a voice mail message at that number, but Respondent failed to return the call.
On November 13, 2000, eBay’s counsel sent an email to Respondent at the email address listed on the Network Solutions Whois database. A copy of eBay’s October 24, 2000, letter was attached to the email.
On November 16, 2000, Respondent replied by email, stating that he refused to transfer the Domain Name. Respondent wrote, "I have received your letter, but I don’t intend to transfer the damain [sic]: www.ebaykorea.com to ebay."
Respondent has ignored Complainant’s request to transfer ownership of the Domain Name. Failure to positively respond to a complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).
A fourth factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name "cellularonechina.com". The WIPO panel agreed with Complainant, based on facts essentially the same as those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ¶ 7.
Respondent’s Domain Name uses the entirety of Complainant’s trademark, namely the phrase "eBay." No plausible explanation exists as to why Respondent selected the name EBAY as part of the Domain Name other than to trade on the goodwill of eBay. Despite contact by eBay’s counsel over a one-year period, Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Name "ebaykorea.com" in order to benefit from the well-known EBAY mark.
Respondent has failed to come forward with any facts to contradict the assertions of Complainant.
The evidence establishes: (i) inaction by Respondent in the use the Domain Name to post any content on the Internet or for any other legitimate purpose; (ii) constructive knowledge by Respondent of Complainant’s rights in the EBAY mark upon the registration of the Domain Name; (iii) Respondent’s failure to positively respond to Complainant’s request for transfer; and (iv) the use of Complainant’s entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith. Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the Domain Name "ebaykorea.com" is confusingly similar to Complainant’s registered EBAY trademark, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to eBay Inc.
Richard W. Page
Dated: January 18, 2001