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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eBay Inc. v. rle enterprises

Case No. D2008-1068

1. The Parties

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

The Respondent is rle enterprises, United States of America.

2. The Domain Names and Registrar

The disputed domain names <ebayip.com> and <ebayofip.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On July 14, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2008. The Response was filed with the Center August 13, 2008.

Complainant submitted an unsolicited Supplemental Filing with the Center on August 22, 2008. Respondent submitted an unsolicited Supplemental Filing with the Center on August 27, 2008.¹

The Center appointed Jeffrey M. Samuels, Bruce E. O’Connor and Gordon Harris as panelists in this matter on September 25, 2008. 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.

4. Factual Background

Complainant eBay Inc. has operated a web site at “www.ebay.com” under the EBAY mark since September 1995, in connection with online commerce, trading, and Internet auction services. eBay provides its primary online marketplace services in numerous countries around the world and in numerous languages and it services are accessible from virtually any location around the world using the Internet. During the fourth quarter of 2007, there were approximately 637 million new listings added to eBay worldwide. Each day, more than 6.7 million new items are listed for sale in over 50,000 different categories of goods. eBay has over 276 million registered users worldwide.

Complainant owns several U.S. trademark registrations for the EBAY mark, as well as numerous foreign trademark registrations, Complaint, Annex D. The EBAY mark has been found to be famous by at least one U.S. court, Complaint, Annex I. Interbrand has ranked eBay’s EBAY brand as the 48^th best global brand.

The disputed domain names were registered on May 3, 2007. As of June 17, 2008, the disputed sites contained sponsored links to various third party sites, Complaint, Annex J. On August 30, 2007, Complainant wrote to Respondent’s Administrative Contact, Richard Ehrlickman, via email regarding its use of the disputed domain names. The email stated that any use of the disputed domain names is likely to cause consumers to believe that Respondent’s web sites are sponsored by or affiliated with Complainant, and requested Respondent neither use the domain names nor offer to sell or transfer them to a third party, Complaint, Annex L. On December 7, 2007, one Mr. Ehrlickman responded via email that he did not accept Complainant’s “premise of ownership or assertions” and stated that he intended to “launch an open IP exchange site” in connection with the disputed domain names, Complaint, Annex M. On December 14, 2007, Complainant sent another email to Mr. Ehrlickman reiterating its concerns, Complaint, Annex N. On January 13, 2008, Mr. Ehrlickman wrote to Complainant stating that he had “expended time, resources and capital” on the open Intellectual Property exchange site, and that he would be willing to discuss “alternatives … that could accommodate both parties interests”, Complaint, Annex O.

On January 29, 2008, Complainant wrote to Mr. Ehrlickman indicating that Respondent’s use of the domain names containing the EBAY mark would likely be considered trademark infringement. Complainant advised that it wished to resolve the matter amicably and requested Mr. Ehrlickman to provide proposed alternatives to resolve the matter, Complaint, Annex P. On May 28, 2008, Complainant again wrote to Mr. Ehrlickman proposing a conference to discuss Complainant’s position Complaint, Annex Q.

On June 12, 2008, Complainant’s Intellectual Property Counsel spoke with Mr. Ehrlickman. According to Complainant’s Counsel, during the call he explained that the EBAY mark is registered worldwide and that Respondent’s use of the domain names in dispute would create a high risk of likelihood of confusion. Mr. Ehrlickman advised Complainant’s Counsel of his alleged business plan to auction patents on the web sites and that, despite Complainant’s objections, he continued to develop his plan and secure investment in his company. According to Complainant’s Counsel, Mr. Ehrlickman offered to sell the domain names to Complainant for USD 7,500. Complainant’s Counsel responded that Complainant does not pay infringers but would be willing to reimburse Mr. Ehrlickman for his domain name registration costs. Mr. Ehrlickman responded that he would “take his chances” and continue with his business plan, Complaint, Annex R. On June 23, 2008, Mr. Ehrlickman wrote to Complainant’s Counsel increasing his asking price for the two domain names in issue to USD 10,000 and explaining that such purchase would “afford both parties the cost avoidance of a protracted situation and the associated negative publicity”, Complaint, Annex R.

According to Complainant, Mr. Ehrlickman has registered a number of domain names containing well-known trademarks, including <googleofip.com>, <ibmip.com>, <ibmofip.com> and <yahooofip.com>, Complaint, Annex T.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the <ebayip.com> and <ebayofip.com> domain names are confusingly similar to Complainant’s EBAY mark because they incorporate Complainant’s distinctive and famous EBAY mark in its entirety, adding only the merely descriptive terms “ip”, a commonly understood acronym for intellectual property, and “ofip”. As such, Complainant argues, the domain names convey the same overall visual and phonetic impression as the EBAY mark.

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant indicates that Respondent is not an authorized dealer, distributor, or licensee of Complainant. Complainant also maintains that Respondent cannot claim that he made demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services prior to notification of this dispute since Respondent’s plan to launch a patent auction site through the use of the <ebayip.com> and <ebayofip.com> domain names cannot be deemed bona fide.

With respect to the issue of bad faith registration and use, Complainant argues that, given eBay’s prominence on the Internet, “it is clear that Respondent registered the Domain Names in bad faith, with full knowledge that including the EBAY marks as part of its Domain Names would likely cause an Internet user visiting the Web sites at “www.ebayip.com” and “www.ebayofip.com” to assume that the Domain Names are somehow sponsored by or affiliated with eBay.”

Respondent’s current passive holding of the domain names also constitutes bad faith, Complainant declares. Complainant also points to Respondent’s offer to sell the domain names to Complainant for sums in excess of out-of-pocket costs associated with the registration of such names as support for a determination of bad faith registration and use. Finally, Complainant refers to Respondent’s registration of other domain names that incorporate other well-known marks (e.g. IBM, YAHOO, and GOOGLE) as strong evidence of bad faith registration and use.

B. Respondent

Respondent indicates that it now intends to utilize the sites, which are currently under construction, as an intellectual property discussion site for commentary on the positives and negatives of selling IP assets online. The Response includes the text of Respondent’s proposed home pages. They read as follows:

ebayofip.com

Intellectual Property (IP) Discussion Site

Established in 1995, EBAY is the industry’s standard setter for selling products online between owner and prospect buyer. Additional online sites have recently been providing the same services in the IP arena (activelinks-ip.com, ipmarket.com, nipoonline.org, etc). With an impressive list of satisfied long term clients, EBAY has repeatedly proven it can and does deliver the highest level of selling services. Should Intellectual Property Assets be sold online? Please register and post your comments in the forum below:

This website is not connected to or affiliated with the EBAY or the other IP online selling and buying websites.

For the official EBAY website go to http://www.ebay.com;

for the official Activelink-ip website go to http://www.activelinks-ip.com;

for the official ipmarket website go to http://www.ipmarket.com; and

for the official nipoonline website go to http://www.nipoonline.org/iptrading.htm,

and click on the identified links.

ebayip.com

Established in 1995, EBAY is the industry’s standard setter for selling products online between owner and prospect buyer. Additional online sites have recently been providing the same services in the IP arena (activelinks-ip.com, ipmarket.com, nipoonline.org, etc). With an impressive list of satisfied long term clients, EBAY has repeatedly proven it can and does deliver the highest level of selling services. Should Intellectual Property Assets be sold online? Please register and post your comments in the forum below:

This website is not connected to or affiliated with the EBAY or the other IP online selling and buying websites.

For the official EBAY website go to http://www.ebay.com;

for the official Activelink-ip website go to http://www.activelinks-ip.com;

for the official ipmarket website go to http://www.ipmarket.com; and

for the official nipoonline website go to http://www.nipoonline.org/iptrading.htm,

and click on the identified links.

Please go to http://www.ebayofip.com to connect to the IP Discussion Site

Respondent contends that its proposed use of the disputed domain names to critique or offer information on Complainant and other sites is a legitimate noncommercial and fair use under the Policy. Respondent notes that he is an expert in intellectual property and was recently awarded recognition as a “Certified Licensing Professional” by the Licensing Executive Society.

Respondent also argues that the parties do not compete commercially and, thus, Complainant cannot establish bad faith on the basis that the disputed domain names disrupt the business of a competitor. Respondent further contends that since it is not using the domain names, the domain names are not being used in bad faith. It also asserts that Complainant’s counsel made the first offer to purchase the domain names for $270. According to Respondent, Complainant’s Counsel, during the June 12, 2008, phone conversation, asked how much Respondent wanted for the domain names and Respondent responded USD 7,500. Subsequent to the call, after having had time to consider all its expenses and time, Respondent requested USD 10,000 for transfer of the domain names.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant eBay Inc., through its use of and registrations covering the EBAY mark, has rights in such mark.

The Panel further determines that each of the disputed domain names is confusingly similar to the EBAY mark. As noted by Complainant, each of the disputed domain names incorporates in full the EBAY mark followed by descriptive terms. Numerous UDRP panels have held that such circumstances support a finding of confusing similarity under this element of the Policy. See, e.g., Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 (4microsoft2000.com held confusingly similar to MICROSOFT mark); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (Addition of descriptive term “buy” combined with Complainant’s distinctive “LANTIS” mark exploits the source indicating qualities of Complainant’s mark and increases the risk of consumer confusion).

B. Rights or Legitimate Interests

The Panel concludes that Complainant has met its burden of establishing that Respondent does not have rights or legitimate interests in the disputed domain names. Respondent contends that it intends to use the domain names to critique or offer information on Complainant and that such use is a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. More specifically, Respondent indicates that it intends to use the domain names in connection with a discussion site dealing with online IP assets for sale.

However, the Panel notes that paragraph 4(c)(iii) of the Policy requires evidence that one is “making” a legitimate noncommercial or fair use of the domain name. Mere assertions of intent are not enough to satisfy this aspect of the Policy. See, e.g., Edward Van Halen v. Deborah Morgan, WIPO Case No. D2000-1313 (mere intent to develop a fan site not sufficient to show legitimate interest); Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (“The only evidence supporting Respondent’s claim is the unpublished home page…. That home page, though, has never been used, and thus Respondent has not made any use, fair or otherwise, as required by Paragraph 4(c)(iii).”) The only use of the disputed domain names has been as an address for a site including sponsored links to third party vendors of goods and services, of the type available from Complainant at its web site using the EBAY mark. Although Respondent says that this site was a parked site whose content was controlled by its ISP, Respondent cannot so duck responsibility for the site. The Panel takes notice that most ISPs offer a domain name registrant the option of either using sponsored links on a parked site or of using a generic page with no sponsored links. Respondent chose the former, and cannot claim either a bona fide use as required under Paragraph 4(c)(i) or a noncommercial or fair use as required under Paragraph 4(c)(iii).

C. Registered and Used in Bad Faith

The Panel concludes that each of the disputed domain names was registered and is being used in bad faith, within the meaning of the Policy. Given the fame of the EBAY mark, it is clear that Respondent registered the domain names in an effort to take advantage of the goodwill Complainant has built up in the mark. Registration of a domain name containing a famous mark is strong evidence of bad faith. See, e.g., Guinness UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055.

Moreover, despite Respondent’s contention that the domain names are not being used, it has been held by numerous UDRP panels that passive holding of a domain name does not preclude a finding of bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Especially this is so where the Respondent, as here, is responsible for sponsored link use of the domain names in competition with Complainant.

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 names <ebayip.com> and <ebayofip.com> be transferred to the Complainant.

Dated: October 9, 2008

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¹ On August 22, 2008, Complainant filed a document labeled “Complainant’s Reply to Respondent’s Response.” On August 27, 2008, Respondent filed a document labeled “Respondent’s Response to Complainant’s Reply to Respondent’s Response Dated August 22, 2008.” The applicable Rules provide for the submission of a Complaint and a Response. No express provision is made for supplemental filings by either party, except in response to a deficiency notice of if requested by the Center or the Administrative Panel. Upon being notified of the submission of the supplemental filings in this case, the Panel requested that such filings be forwarded to it to determine if they should be considered in rendering its decision. Based on such review, the Panel concluded that such supplemental filings should not be considered.