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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

eBay Inc. v. Akram Mehmood

Case No. DAE2007-0001

 

1. The Parties

The Complainant is eBay Inc., of San Jose, California, United States of America, represented by Cooley Godward Kronish LLP, United States of America.

The Respondent is Akram Mehmood, of Dubai, United Arab Emirates.

 

2. The Domain Name and Registrar

The disputed domain name <ebay.ae> is registered with UAE Network Information Center (UAEnic).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2007 electronically and on January 31, 2007 in hardcopy. On January 29, 2007, the Center transmitted by email to UAE Network Information Center (UAEnic) a request for registrar verification in connection with the domain name at issue. On February 17, 2007, after several reminders, UAE Network Information Center (UAEnic) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 26, 2007 the Respondent, Mr. Mehmood, sent an email to the Center stating that the disputed domain name is registered in the name of EBAY PORTAL and that neither he nor EBAY LLC is the right Respondent. Nonetheless, Mr. Mehmood stating being an officer of both EBAY PORTAL and EBAY L.L.C. mentioned that his lawyer would reply to the Complaint in the following weeks. In its reply the Center informed the Respondent that according to the information provided by the Complainant his denomination as the Respondent was consistent with the registrant information confirmed by the registrar of record of the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .AE (the “Policy”), the Rules for Domain Name Dispute Resolution for .ae (the “Rules”), and the World Intellectual Property Organization Supplemental Rules for .ae Domain Name Dispute Resolution Policy (“aeDRP”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2007. The Response was filed with the Center on April 2, 2007.

The Center appointed Dr. Torsten Bettinger, Dr. Colin Yee Cheng Ong and Professor Mohamed-Hossam Loutfi as panelists in this matter on May 21, 2007. The Panel finds that it was properly constituted. Each member of 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. The language of the proceeding is English, being the language of the Domain Name Registration and Service Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.

 

4. Factual Background

The Complainant is eBay Inc., which has operated the “www.ebay.com” website under the name “eBay” continuously since 1995 in connection with an online trading/auction business. Beginning in 1999, the Complainant obtained several US federal registrations for the EBAY word mark and its seven-color logo, as follows:

EBAY, No. 2,218,732, registered January 19, 1999;

EBAY, No. 2,367,932, registered July 18, 2000;

Ebay with red, blue, yellow, green, purple, orange and brown logo, No. 2,410,023, registered December 5, 2000;

EBAY, No. 2,501,043, registered October 23, 2001;

EBAY, No. 2,518,652, registered December 11, 2001;

EBAY, No. 2,578,260, registered June 11, 2002;

EBAY, No. 2,592,515, registered July 9, 2002;

EBAY, No. 2,604,374, registered August 6, 2002;

EBAY, No. 2,662,130, registered December 17, 2002;

EBAY, No. 2,666,767, registered December 24, 2002;

EBAY, No. 2,700,675, registered March 25, 2003;

EBAY, No. 2,700,836, registered March 25, 2003;

EBAY, No. 2,737,342, registered July 15, 2003;

EBAY, No. 2,744,717, registered July 29, 2003; and

EBAY, No. 2,759,150, registered September 2, 2003.

The Complainant owns trademark registrations for EBAY in countries around the world, inter alia, trademark registration No. 38899 in the United Arab Emirates.

The Respondent registered the disputed domain name in 2002. This domain name resolves to a website which shows the name EBAY.AE PORTAL and designates itself as the “Middle East Marketplace”.. Furthermore, the Respondent’s website displays a color logo similar to The Complainant’s EBAY color logo.

The Complainant received a telephone call on September 5, 2006 and an email on September 6, 2006 from Mr. Rohan Haksar, who stated the he was acting on behalf of the Respondent, and requested that EBAY LLC and the Complainant’s management meet to discuss business opportunities, possible expansion of the Respondent’s business outside of the United States of America, and potential coexistence with the Complainant.

On December 20, 2006, the Complainant’s intellectual property Counsel pointed out that the Respondent’s registration of the disputed domain name and use of the Respondent’s EBAY mark on EBAY LLC’s corresponding website constitutes a trademark infringement and demanded that the Respondent immediately transfer the disputed domain name to the Complainant and to agree to cease all use of the EBAY trademark in any format.

On December 27, 2006 the Complainant received an email by the Respondent in which the Respondent acknowledged the Complainant’s prior rights in its “popular” EBAY word and logo marks in the United Arab Emirates but refused to transfer the domain name.

On March 14, 2007 the Respondent commenced a law suit in the Court the First Instance in Dubai.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

The Complainant owns numerous trademark registrations for the EBAY word mark in many jurisdictions around the world, including registrations in Saudi Arabia, China, Taiwan, Hong Kong, Japan, Vietnam, South Korea, Singapore, Malaysia, Thailand, Indonesia, the European Union, New Zealand, Australia, Benelux, Canada, Germany, Iceland, India, Israel, Mexico, Norway, Peru, Chile, Turkey, United Kingdom, Colombia, Czech Republic, Romania, Hungary, Venezuela, South Africa, and Switzerland.

The Complainant contends that the EBAY trademark is famous and that it has been using the EBAY word mark since early September 1995 and long before the Respondent had registered its Domain Name. The Complainant adds that it has devoted substantial resources to advertise and promote its services and products under the EBAY marks throughout the world.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is identical with the trademark EBAY as it fully incorporates its trademark and that the ccTLD “.ae” cannot be a factor in the assessment of similarity.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that:

- The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because his use of the domain name in a way similar to the Complainant’s website and in connection with the Complainant’s mark and well-known and highly stylized EBAY Color Logo causes an infringement of Complainant’s rights and can therefore not be regarded as a bona fide use within the meaning of paragraph 4(c)(i) of the Policy;

- The Respondent is not known under or related to the names “Ebay LLC” and/or “ebay.ae” prior to its registration of the disputed domain name and does not have rights in the names or an authorization or license to use the Complainant’s trademarks in his domain name.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that:

- The Respondent registered the domain name with full knowledge that using Complainant’s famous EBAY mark as a domain name would likely cause an Internet user visiting that domain name to assume that the domain name is somehow sponsored or affiliated with the Complainant;

- The Respondent had admitted and expressly recognized that Complainant owns senior rights in the EBAY mark in the United States of America;

- The Respondent by using the domain name attempted to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s well-known EBAY mark.

B. Respondent

The Respondent asserts that the disputed domain name is based on the initial of the term “Emirates” and the descriptive term “bay” that his website focuses on clients trading from the Middle East and therefore does not interfere with Complainant’s business interests.

In reference to the element in paragraph 4(a)(i) of the Policy, the Respondent states that

- his business has only regional presence in the Middle East and that therefore the use of the disputed domain name does not infringe Complainant’s trade or service mark;

- the trade mark application filed by the Respondent is not identical or similar with Complainant’s mark or website.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Respondent contends he has a right or legitimate interest in the domain name. In support of this assertion the Respondent states that:

- his website is not nearly identical to Complainants’ one;

- the domain name in question does not infringe Complainant’s trade mark or service mark;

- rights and interests in the disputed domain name have accrued since its registration;

- before any notice of the dispute he used the domain name in connection with a bona fide offering of goods and services;

- he has spent a considerable amount of money and time for promoting the website “www.ebay.ae”.

In reference to the element in paragraph 4(a)(iii) of the Policy, Respondent contends that the domain name has not been registered and is not being used in bad faith. In supports of this assertion the Respondent states that:

- he had no constructive knowledge of the Complainant’s mark when registering the domain name;

- the domain name is not intended to mislead consumers;

- the domain name was not registered primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant;

- the domain name was not registered in order to prevent the Complainant from registering it and that Respondent has not engaged in a pattern of such conduct.

 

6. Discussion and Findings

A. Co-Pending Litigation Issues

The Respondent filed a lawsuit against the Complainant under Record No. 9734/2007 before the Dubai First Instance Court on March 14, 2007 requesting

“that the Defendant not to challenge the Plaintiff and to stop threatening the same, as well as to compel it to pay all fees, expenses and attorney fees.”

Paragraph 18 of the Rules for Uniform Domain Name Dispute Resolution Policy provides as follows:

“18. Effect of Court Proceedings

(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of domain name dispute that is the subject of complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

The Panel notes that the record before the Panel is sufficiently developed to reach a conclusion under the Policy and that other panels confronted with the question of deciding a case in the face of a related court proceeding have frequently exercised the discretion provided under Paragraph 18 to issue a decision, recognizing that doing so does not prevent either party, if dissatisfied with the result, from continuing to seek relief in court (See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187; Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation, WIPO Case No. D2001-1094; AB SKF and SKF Beaings India Limited v. Vikas Pagaria, WIPO Case No. D2001-0867; and Fadesa Inmobiliaria, S.A. v. Flemming Madsen, WIPO Case No. D2001-0570).

In the circumstances, the Panel exercises its discretion under Paragraph 18 of the Rules to proceed to a decision.

B. Identical or Confusingly Similar to Complainant’s Trademark

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

In line with such provision, the Complainant must prove two limbs, i.e., that it enjoys the trademark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107;

Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).

The Panel finds that the Complainant successfully proves these two aspects. First, the Complainant enjoys trademark right over the mark EBAY through both the trademark registrations and extensive use via the Internet, which is reachable from any country . Secondly, the disputed domain name, which wholly incorporates Complainant’s trademark EBAY, is confusingly similar to the Complainant’s trademark EBAY.

It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

Under the consensus view of the WIPO decisions under the Policy, the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity (See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698). For this reason, it is not necessary to compare the contents of the Complainant’s and the Respondent’s websites for the purpose of paragraph 4(a)(i) of the Policy.

The Panel thus finds that the domain name <ebay.ae> is identical to the EBAY mark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is the consensus view among Panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.

The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s widely-known trademark EBAY and that Respondent’s use of the domain name is neither a bona fide offering of goods and services not a legitimate non-commercial use. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant’s mark.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name, or that Respondent has made a noncommercial or fair use of the disputed domain name.

Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services.

As previously held by other WIPO Panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant” (See e.g., Drexel University v. David Brouda, WIPO Case No. D2001-0067).

The Respondent uses the Complainant’s widely-known trademark as its domain name in order to direct Internet users to a website which conveys a visual impression of the Complainant’s website and to provide Internet auction services which appear identical to those offered by the Complainant. The Respondent has admitted and expressly recognized that the Complainant owns senior rights to the Complainant’s mark.

The Panel therefore sees no other plausible explanation for the Respondent’s conduct than that Respondent uses the disputed domain name to create a false impression of association and to capitalize on the goodwill of the Complainant. Such use can not can not constitute a bona fide offering of goods or services. To conclude otherwise in this case would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy. (See, inter alia, Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548; Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land, WIPO Case No. D2000-0385; Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123).

Further, the likelihood of confusion has to be appreciated globally, taking account of all relevant factors and the more distinctive the earlier mark the greater would be the likelihood of confusion. Where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. (See, Caterpillar Inc. V. Spiral Matrix/ Kentech, Inc WIPO Case No.D2006-0808); PRL USA Holdings, Inc. v. Yan Shif WIPO Case No. D2006-0700)

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

D. Registered or Used in Bad Faith

The Panel, while noting that the .AE Policy only requires that a complainant shows that the respondent registered or used the domain name at issue in bad faith, in this case it is also convinced that the Respondent both registered and has been using the domain name in bad faith.

A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including the circumstances set out in paragraph 4(b)(iv), indicating that the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his/its 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 his/its website or location or of a product or service on his/its website or location. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

The Complainant’s marketplace EBAY is widely known throughout the world and also in Dubai where citizens from around the world, including from the USA and Europe are based, many of whom may be familiar with the Complainant’s website. The Respondent has admitted and expressly recognized that the Complainant owns senior rights to the Complainant’s mark. Nevertheless, the Respondent registered and is using an identical domain name in connection with services apparently identical to those offered by the Complainant for a website that is substantially similar to the Complainant’s, and that suggest to consumers that they were making use of the Complainant’s online auction services.

This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on Respondent’s website.

In addition, Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (see Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).

Accordingly, the Panel concludes that the Respondent registered and used the domain name <ebay.ae> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ebay.ae> be transferred to the Complainant.

Date: June 16, 2007