eBay Inc. v. eBay Motors
Claim Number: FA1705001731822
Complainant is eBay Inc. (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, United States. Respondent is eBay Motors (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ebay-online.com>, registered with Google Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 15, 2017; the Forum received payment May 15, 2017.
On May 17, 2017, Google Inc. confirmed by e-mail to the Forum that the <ebay-online.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. verified that Respondent is bound by the Google Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 2017, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ebay-online.com. Also on May 22, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions in this Proceeding:
Complainant uses the EBAY mark in connection with an online marketplace for various goods and services. Complainant registered the EBAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,218,732, registered Jan. 19, 1999), as well as in numerous other jurisdictions, which demonstrates its rights in the mark. See Compl., at Attached Ex. 3. Respondent’s <ebay-online.com> is confusingly similar to Complainant’s mark because it incorporates the EBAY mark in its entirety, adding only a hyphen, the generic term “online,” and the generic top-level domain (“gTLD”) “.com.” None of these additions meaningfully distinguish the disputed domain name from Complainant’s registered mark.
Respondent has no rights or legitimate interests in <ebay-online.com>. Respondent is not commonly known by the domain name, Complainant has not authorized Respondent to use the EBAY mark for any purpose; and Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services. The domain name’s resolving site is inactive. Instead, Respondent uses the domain name to impersonate Complainant via email and to phish for financial information from Complainant’s customers, presumably for Respondent’s financial gain. See Compl., at Attached Ex. 9-13.
Finally, Respondent registered and continues to use the <ebay-online.com> domain name in bad faith. Respondent’s use of the disputed domain name involves capitalizing on Complainant’s notoriety, so that it may monetarily profit by way of the sensitive customer information it obtains through phishing. This practice not only disrupts Complainant’s business, it fraudulently harms and confuses Complainant’s customers. Further, Respondent must have had actual notice of Complainant’s rights in the EBAY marks, because Respondent’s phishing scheme was designed around Complainant’s business—from the confusing similarity of the domain name all the way down to its use of the EBAY mark’s famous color scheme. See Compl., at Attached Ex. 10-13. Finally, the fact that Respondent uses a privacy service to mask its identifying information supports findings of bad faith registration and use of <ebay-online.com>. See Compl., at Attached Ex. 1.
B. Respondent’s Contentions in Response:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <ebay-online.com> domain name November 20, 2016. See Compl., at Attached Ex. 1.
FINDINGS:
Complainant established rights and legitimate interests in the protected mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in either Complainant’s
protected mark or the disputed domain name containing it.
Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark; the domain name is confusingly similar to the mark.
Respondent registered the disputed domain name for a fraudulent purpose and is using it to trick Internet users seeking Complainant into giving up their personal information through Respondent’s fraudulent phishing scheme.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name was been registered and is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
The first prong of Policy ¶ 4(a)(i) requires that a complainant demonstrate its rights in a trademark. Complainant registered the EBAY mark—used in its online marketplace—with the USPTO as early as 1999 (e.g. Reg. No. 2,218,732, registered Jan. 19, 1999), which demonstrates its longstanding rights in the mark. See Compl., at Attached Ex. 3. Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Accordingly, the Panel finds that Complainant established its rights in or to the EBAY mark under Policy ¶ 4(a)(i).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the disputed domain name is identical or confusingly similar to the mark or marks at issue. Here, Complainant argues that the disputed domain name is confusingly similar to its EBAY mark because it is composed entirely of the mark, with only three minor additions: a hyphen, the generic term “online,” and a “.com” gTLD. None of these, Complainant argues, sufficiently distinguishes the disputed domain name from its EBAY mark. Generally, punctuation is insufficient to differentiate a domain name from a trademark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, addition of generic words—particularly words like “online,” which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks. See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Finally, addition of the “.com” gTLD is irrelevant for a confusing similarity determination. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, this Panel finds that the additions made to Complainant’s EBAY mark in <ebay-online.com> do not differentiate the two for the purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protect mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <ebay-online.com> domain name as required by Policy ¶ 4(a)(ii). In addition to asserting that it did not authorize nor license Respondent’s use of the EBAY mark, Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of similarity between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the WHOIS information concerning <ebay-online.com> identifies “Contact Privacy Inc.” as the registrant, which Complainant argues provides no evidence that Respondent is commonly known by the domain name. See Compl., at Attached Ex. 1. The Panel finds that Respondent is not commonly known by the domain name or Complainant’s mark, and thus has no rights or legitimate interest in, the <ebay-online.com> domain name pursuant to policy 4(c)(ii).
Additionally, Complainant argues that Respondent is not engaging in a bona fide offering of good or services or a legitimate noncommercial or fair use of the domain name. The domain name’s resolving site, Complainant contends, is inactive—Respondent simply uses <ebay-online.com> to create email addresses, which it uses to impersonate Complainant. See Compl., at Attached Ex. 9. Attempts to ‘pass off’ as the true holder of rights in a mark fails to provide a bona fide offering or noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, an inactive resolving site itself may provide evidence of a respondent’s lack of rights or legitimate interests in a domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, this Panel finds that Complainant made its prima facie showing against Respondent under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant contends that Respondent uses <ebay-online.com> to obtain sensitive user information through phishing tactics. In this scheme, Respondent attempts to contact Complainant’s customers and obtain sensitive financial information from them concerning their accounts. See Compl., at Attached Ex. 9. Presumably, Respondent intends to use this information to illegally obtain money from Complainant’s customers. Evidence of phishing supports findings that a respondent has no interest in a disputed domain name. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). This Panel finds that Respondent’s use of <ebay-online.com> is not a legitimate, fair or bona fide use under a Policy ¶ 4(a)(ii) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant makes one prominent assertion that falls within the articulated provisions of Policy ¶ 4(b): that Respondent registered and uses the disputed domain name to disrupt Complainant’s business under Policy ¶ 4(b)(iii). Complainant alleges that Respondent uses <ebay-online.com> to interfere with its customer relationships by impersonating Complainant via email and conducting fraudulent payment schemes. See Compl., at Attached Ex. 9-13. Disruption of this nature can occur even when a respondent is not a direct competitor of a complainant, so long as the respondent’s actions create some consumer confusion or interference. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it “[left] Internet users with the assumption that it was Complainant's business they were doing business with”). Therefore, the Panel finds that Complainant sufficiently alleges Respondent’s bad faith within the meaning of Policy ¶ 4(b)(iii).
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant argues that Respondent engages in a phishing scheme designed to allow Respondent to obtain Internet user information—presumably for financial gain. See Compl., at Attached Ex. 9-13. Using a confusingly similar domain name to phish for sensitive information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Respondent presumably intends to—or actually does—profit from this phishing scheme. See Compl., at Attached Ex. 9. The Panel finds that Complainant established Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant also argues that Respondent registered the disputed domain name despite actual notice of Complainant’s rights in the EBAY mark, which provides clear evidence of bad faith. Although Panels have held that constructive notice alone is insufficient for a finding of bad faith, this Panel finds that Complainant’s evidence of actual notice sufficiently constitutes bad faith registration and use of the <ebay-online.com> domain name pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith). Complainant argues that the EBAY mark’s widespread notoriety evidences actual notice to Respondent of Complainant’s rights in the marks. Even more, Complainant contends, Respondent carefully designed a phishing scheme that was made possible by Complainant’s fame; Complainant argues that Respondent was so aware of Complainant’s mark that it copied the mark’s design and color scheme in its fraudulent emails. See Compl., at pg. 10; see also Attached Ex. 12. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the EBAY mark and registered and used the <ebay-online.com> domain name in bad faith.
Finally, the Panel notes that Respondent engaged a privacy service, and in doing so withholds identifying information. Use of a privacy service, without more, does not reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of a proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances that surround a respondent’s engagement of a privacy service, such as that used here, prevents well-intended Internet users from knowing that they are being subjected to a fraud and the name of the Registrant that perpetrated that fraud and such conduct certainly supports findings of bad faith registration and use. It also thwarts an orderly ICANN system by hiding Respondent’s true identity in these cases. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, this Panel finds that Respondent utilized a privacy shield in a manner that materially adversely affects or obscures the facts of this proceeding, and finds that Respondent registered and used the disputed domain name in bad faith in this manner also under a Policy ¶ 4(a)(iii) evaluation.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ebay-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 26, 2017
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