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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eBay Inc. v. SGR Enterprises and Joyce Ayers
Case No. D2001-0259
1. The Parties
The Complainant in this administrative proceeding is eBay Inc. ("eBay"), a Delaware corporation having a principal place of business in San Jose, California, USA.
The Respondent is SGR Enterprises ("SGR"), an entity of unknown status having a post office box mailing address in Jensen Beach, Florida, USA. The Administrative and Billing Contact for the contested domain names is Joyce Ayers ("Ayers"), who has the same post office box mailing address in Jensen Beach, Florida, USA.
2. The Domain Names and Registrar
The domain names involved in this administrative proceeding are <ebaylive.com> and <ebaystores.com>. The corresponding domain name registrar for these domain names is Network Solutions, Inc. (NSI) of Herndon, Virginia.
3. Procedural History
On February 17, 2001, eBay’s Complaint was submitted by e-mail to the WIPO Arbitration and Mediation Center (the Center) for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). See Rules, ¶ 3(b). A hardcopy of the Complaint was received by the Center on February 19, 2001.
It appears that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that payment was properly made, and that eBay has complied with the formal filing requirements. On February 26, 2001, NSI verified that it is the registrar for the two contested domain names, that Version 4.0 of its service agreement with SGR is in effect, and that the contested domain names are in active status.
On February 16, 2001, eBay’s counsel attempted service of the Complaint by express mail and e-mail to the addresses listed for SGR and Ayers. On February 26, 2001, eBay’s counsel notified the Center that these service attempts were unsuccessful. On February 27, 2001, the Center attempted delivery of its Notification of this administrative proceeding (and eBay’s Complaint) by courier, fax, and e-mail to the addresses listed for SGR and Ayers, as well as to the technical contact for the contested domain names, Mike Orihuela of ECQUAL Systems in Stuart, Florida. E-mail delivery attempts also were made to the "postmaster" for the contested domain names. These delivery attempts were unsuccessful.
It appears that SGR and Ayers either provided false contact data to NSI when the contested domain names were registered, or have not kept their contact data current and up-to-date. In any event, the Panel deems that SGR and Ayers were properly notified in accordance with the Rules, ¶ 2(a).
On March 21, 2001 a Notice of Default was sent by the Center to the parties.
In its Complaint, eBay elected to have this proceeding decided by a single member panel. On March 29, 2001, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on March 30, 2001 of the ability and availability to serve as the sole panelist for this matter. On March 30, 2001, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the administrative panel for this proceeding was properly constituted.
On April 2, 2001, the Center forwarded to the undersigned the case file for this proceeding. Also on April 2, 2001, a Notice of Appointment of Administrative Panel and Projected Decision Date was sent by the Center to the Parties. The Center notified the parties that the undersigned would be the sole Panelist to decide this matter.
4. Factual Background
eBay claims ownership of several federal registrations for the mark EBAY, including U.S. Registration No. 2,218,732, issued January 19, 1999, and U.S. Registration No. 2,410,023, issued December 20, 2000, as well as numerous pending applications to register this mark in the United States for a variety of goods and services. eBay also claims ownership of numerous other trademark registrations for the EBAY mark, and has applied to register the mark, in many countries throughout the world.
eBay operates its primary Web site at the URL http://www.ebay.com. eBay states that it provides its services in numerous countries around the world, including the United States, Canada, France, Australia, Germany, Japan, Italy, and the United Kingdom, and its services are advertised in those markets. The eBay service is accessible, says eBay, from every country that has access to the Internet.
eBay also claims to have registered many domain names that consist of the EBAY trademark plus the addition of a generic or descriptive term. These domain names include, but are not limited to, the following: <ebayaddress.com>, <ebayappraisal.com>, <ebayappraisals.com>, <ebaykid.com>, <ebaylands.com>, <ebayauctionnews.com>, <ebayautotrader.com>, <ebay-magazine.com>, <ebayenglish.com>, <ebayhometown.com>, <ebayresidence.com>, <ebaypremium.com>, <ebaywatch.com>, <ebaystore.com>, <ebayclassifieds.com>, and <ebayparts.com>.
eBay asserts that it has been using the EBAY trademark since at least as early as September, 1995, in connection with its online person-to-person trading services. eBay claims that it has devoted substantial resources to advertise and promote its services and products under the EBAY mark, and contends that the mark embodies the substantial goodwill that the company 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 a plethora of unsolicited articles in the media, including national and international print, radio and television, highlighting eBay’s successful efforts in online person-to-person trading. eBay claims to be the first, and one of the most successful, person-to-person auction-style trading sites on the Internet.
As of early February, 2001, eBay states that there were over six million items listed for bid on the eBay Web site. Each day, says eBay, over 600,000 new items are listed for sale, and over one million separate bids are placed on items in over 4,700 different categories of goods. In addition to its online trading services, says eBay, the eBay Web site 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 states that it 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 also states that it recently launched a high profile television advertising campaign, with placement during popular prime time programming and major sporting events. 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 asserts that it has entered into numerous agreements that have promoted the EBAY name (including via books). Since Respondents have defaulted in this proceeding, all of the above facts are undisputed.
SGR registered the contested domain names in June 1999. eBay contends that SGR and Ayers have not used these domain names to offer goods or services over the Internet, nor do they provide any content at the Web sites that would resolve to the domain addresses http://www.ebaylive.com or http://www.ebaystores.com. Moreover, says eBay, SGR and Ayers have not made any demonstrable preparations to use the contested domain names name in that manner. In fact, states eBay, SGR and Ayers have not placed any content at those web sites since registering the contested domain names over a year and a half ago. During the pendency of this matter, the Panel attempted to access live web sites that would resolve to Uniform Resource Locators (URLs) associated with the disputed domain names. The Panel was unable to do so.
Respondents have not replied to eBay’s many attempts to contact them. On July 10, 1999, eBay sent an e-mail message to Ayers at the address listed in NSI’s WhoIs database informing SGR and Ayers of eBay’s rights and asking them to transfer the <ebaylive.com> domain name to eBay. On July 6, 1999, eBay sent an e-mail to Ayers informing SGR and Ayers of eBay’s rights and asking them to transfer the <ebaystores.com> domain name to eBay. Although this e-mail correspondence was sent to Ayers at the e-mail address listed in NSI’s WhoIs database, Respondents never responded.
On November 10, 2000, eBay again sent an e-mail correspondence to Ayers asking Respondents to transfer the contested domain names to eBay. Again, Respondents did not respond. eBay then sent a letter to SGR and Ayers at the address listed in NSI’s WhoIs database via certified mail return receipt requested. There is no evidence that Respondents replied to this letter.
On November 16, 2000, eBay’s counsel attempted to contact Ayers on the telephone to discuss SGR’s registration and use of the contested domain names. Although the individual answering the telephone initially spoke in unaccented English, when eBay’s counsel asked to speak to Ayers, the administrative contact for both domain names, the person claimed not to understand English and hung up.
Finally, on January 23, 2001, eBay sent SGR and Ayers an e-mail message reiterating eBay’s concerns about the contested domain names and requesting that they contact eBay by February 2, 2001. To date, eBay has never heard from SGR or Ayers.
According to evidence submitted by eBay, SGR has made it a practice of registering domain names containing the trademarks of other companies. NSI’s WhoIs database shows that SGR has registered at least 50 domain names. Those domain names include <msnstores.com>, <1800flowerslive.com>, <etoyslive.com> and ftdlive.com>, which contain the trademarks of Microsoft Corp., 1-800-FLOWERS.COM, eToys, and FTD.COM, respectively. SGR thus has exhibited a pattern of registering domain names containing the trademarks of other companies plus the addition of generic terms such as "live" or "stores".
5. Parties’ Contentions
eBay asserts that the <ebaylive.com> and <ebaystores.com> domain names are identical or confusingly similar to a trademark or service mark in which eBay has rights; that SGR and Ayers have no rights or legitimate interests in respect of these domain names; and that the contested domain names have been registered and are being used in bad faith.
Respondents have not made their position known in this administrative proceeding, as they are in default in answering the Complaint.
6. Discussion and Findings
Transfer or cancellation of the contested domain names will be ordered if eBay has shown that the following three elements are present:
(i) the contested domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain names; and
(iii) the contested domain names have been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present.
Policy, ¶ 4(a).
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site 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 the registrant’s web site or location or of a product or service on his web site or location.
Policy, ¶ 4(b).
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his 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) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is 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.
Policy, ¶ 4(c ).
SGR and Ayers had the opportunity to respond and present evidence that they have rights or legitimate interests in respect of the contested domain names. They chose not to do so. eBay is not entitled to relief simply by reason of SGR and Ayers’s default. However, the Panel can and does draw evidentiary inferences from Respondents’ failure to respond. See Miles D., Ltd. dba Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).
For example, Paragraph 14 of the Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Contested Domain Names are Confusingly Similar to the EBAY trademark
The contested domain names consist of the EBAY trademark plus the addition of the generic terms "stores" and "live." The most prominent part of these domain names is the EBAY mark. Because the contested domain names incorporate the identical EBAY trademark, an Internet user viewing a Web sites located at addresses using these domain names would likely assume that the Web sites and/or operators are somehow sponsored by, or affiliated with eBay, when they are not.
The fact that eBay routinely employs its EBAY mark with other words in domain names increases the likelihood of confusion. For example, eBay states that it has registered the domain name <ebaypremier.com> and uses the name EBAY PREMIER to promote its services for fine art collections. In addition, eBay also states that it has registered the domain name <ebaymotors.com> and uses the name EBAY MOTORS to promote its online automobile trading services. eBay also asserts that it has registered a significant number of domain names that consist of the EBAY trademark plus the addition of a generic term. Accordingly, an Internet user familiar with the EBAY mark is likely to be confused when encountering the contested domain names that are registered to a third party.
By adopting domain names that incorporate the identical EBAY mark and simply adding generic terms, Respondents are attempting to capitalize on the eBay name. A registrant that simply adds numerals or generic terms to the Complainant’s trademark does not avoid a finding that domain name to be confusingly similar to a trademark in which the Complainant has rights. See, e.g., Caterpillar Inc. v. Roam the Planet, Ltd., Case No. 2000-0275 (WIPO June 7, 2000) (<catmachines.com>) (the addition of the generic word "machines" to Complainant’s trademark did not serve to distinguish domain name from mark CAT); Nike Inc. v. Farrukh Zia, Case No. D2000-0167 (WIPO April 27, 2000) (<enike.com>) (domain name constructed by addition of generic "e" to Complainant’s mark held to be confusingly similar to mark); NCP Marketing Group, Inc. v. Entredomains, Case No. D2000-0387 (WIPO July 5, 2000) (<taebotv.com>) (domain name constructed by adding generic "tv" suffix to Complainant’s trademark found to be confusingly similar because "[r]espondent does not, by adding a generic noun or common descriptive term or adjective following a word or letter mark, create a new or different mark.").
The contested domain names are also phonetically and visually similar to the EBAY mark as well as many other domain names owned by eBay. Domain names that are phonetically and visually similar to well-known marks have been deemed to be confusingly similar thereto. See, e.g., Expedia, Inc. v. European Travel Network, Case No. D2000-0137 (WIPO April 18, 2000) (<xpediatravel.com>). Based on these decisions and the facts of this case, the Panel finds that the contested domain names are confusingly similar to the EBAY trademark in which Complainant has rights. Policy, ¶ 4(a)(i)
Respondents have no Legitimate Rights or Interests in the Contested Domain Names
SGR and Ayers do not use, nor is there evidence of their demonstrable preparations to use, a name or trademark corresponding to the contested domain names in connection with a bona fide offering of goods or services. Respondents do not use these domain names to offer goods or services at a Web site or sites located at the URLs corresponding to the domain names. Moreover, SGR and Ayers have not placed any content at those sites since registering the domain names over a year and a half ago.
SGR and Ayers cannot be viewed as having used a name or trademark corresponding to the contested domain names in connection with a bona fide offering of goods or services. The domain names were registered in June 1999, long after eBay adopted the EBAY trademark. Respondents had constructive notice of the EBAY mark, as a trademark search on the date of the registration of the domain names 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 Respondents registered the domain names.
Where a Respondent has constructive notice of a trademark, and yet registers a confusingly similar domain name thereto, the Respondent cannot be said to have a legitimate interest in the domain name. See, e.g., CCA Industries v. Dailey, Case No. D2000-0148 (WIPO April 26, 2000) (<bikinizone.com>) (constructive notice found where domain name is confusingly similar to Complainant’s mark, and the mark was registered prior to Respondent’s domain name); Young Genius Software AB v. MWD, Case No. D2000-0591 (WIPO August 7, 2000) (<younggenius.com>) (constructive notice found where Complainant had a trademark registration in Sweden and the domain name registration under the .se top-level domain name prior to the date of Respondent’s domain name registration).
Additionally, given eBay’s prominence on the Internet, which is supported by the evidence made of record, SGR and Ayers must have registered the domain names with full knowledge that including EBAY in the domain names that they registered would allow them to divert visitors to a Web site or sites not authorized by eBay. SGR and Ayers have no plausible reason to include "ebay" in their domain names other than to capitalize on the goodwill of eBay.
There is no evidence that either SGR or Ayers have been commonly known by the contested domain names. They are not affiliated with eBay and have not received any permission or consent to use the EBAY trademark in domain names.
Based upon the above facts and administrative decisions, the Panel finds that the SGR and Ayers have no legitimate interest or rights in the contested domain names. Policy, ¶ 4(a)(ii).
The Domain Names Were Registered and are Being Used in Bad Faith.
SGR and Ayers had at least constructive notice of eBay’s trademark rights at the time the contested domain names were registered. Actual or constructive knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, supra; Document Technologies v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000) (<htmlease.com>) (Respondent’s knowledge of Complainant’s mark at the time of registration of the domain name suggests bad faith).
Since the <ebaylive.com> and <ebaystores.com> domain names and the EBAY mark are confusingly similar, an Internet user viewing a Web site located at such domain address would be likely to assume that the contested domain names were somehow sponsored by or affiliated with eBay. No plausible explanation exists as to why SGR and Ayers selected the name EBAY as part of the disputed domain names other than to trade on the goodwill of eBay.
SGR and Ayers have not made any demonstrable preparations to offer goods and/or services using the contested domain names. The failure to make use of a domain name may indicate that a Respondent’s primary intent is to sell the domain name or that the domain name was registered without a bona fide intent to make good faith use of it. See, e.g., Mondich v. Brown, Case No. D2000-0004 (WIPO February 16, 2000) (<americanvintage.com>); SAir Group v. Reinhart, Case No. D2000-0482 (WIPO July 6, 2000) (<qualiflyer.com>). As stated in Educational Testing Service v. TOEFL, Case No. D2000-0044 (WIPO March 16, 2000) (<toefl.com>), "because 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." In this case, since registering the contested domain names over a year and a half ago, SGR and Ayers have not placed any content on Web sites associated with these domain names.
The practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith. Ownership of numerous domain names that correspond to the names or marks of well known business entities suggests intent to profit from the activities of others. J.P. Morgan v. Resource Marketing, Case No. D2000-0035 (WIPO March 23, 2000) (<jpmorgan.org>). Respondents’ practice of registering domain names containing the trademarks of other companies plus the addition of generic terms such as "live" or "stores" supports a finding that the contested domain names were registered and are using in bad faith.
SGR and Ayers utterly have failed to respond to eBay’s numerous communications seeking to resolve this matter amicably. The failure to respond positively to a Complainant’s efforts to make contact provides "strong support for a determination of ‘bad faith’ registration and use." Encyclopaedia Britannica, Inc. v. Zuccarini et al., Case No. D2000-0330 (WIPO June 7, 2000) (<encyclopediabrittanica.com> and others); eBay Inc. v. Sunho Hong, Case No. D2000-1633 (WIPO January 18, 2001) (<ebaykorea.com>).
In any event, it would be extremely unlikely that SGR and Ayers could use the contested domain names without violating eBay’s rights. See, Cellular One Group v. Paul Brien, Case No. D2000-0028 (WIPO March 10, 2000) (<cellularonechina.com>) (finding that it would be "difficult, perhaps impossible" for Respondent to use the <cellularonechina.com> domain name without violating Complainant’s rights); See also, Telstra Corp., Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO February 18, 2000) ("it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate").
Finally, Respondents’ providing false contact information and/or their failure to provide accurate and up-to-date contact information provides further evidence supporting the conclusion that the contested domain names were registered and are being used in bad faith. See, Telstra Corp., Ltd. v. Nuclear Marshmallows, supra., and Advanced Micro Devices, Inc. v. [No Name], Case No. D2000-0515 (WIPO January 24, 2001) (<advancedmicrodevices.com>).
Based on circumstances surrounding the registration and use of the contested domain names, as well as the above cited administrative decisions, the Panel finds that disputed domain names have been registered and being used in bad faith. Policy, ¶ 4(a)(iii).
For the foregoing reasons, the Panel directs that the contested domain names, <ebaylive.com> and <ebaystores.com> be transferred to Complainant, eBay Inc. Policy, ¶ 4(i) and Rules, ¶ 15.
Dated: April 11, 2001