eBay Inc. v. Douglas Bennett
Case No. D2015-1178
1. The Parties
Complainant is eBay Inc. of San Jose, California, United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Douglas Bennett of Proctor, Vermont, US.
The disputed domain name is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceeding commenced on July 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 7, 2015.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 19, 2015. The Panel finds that it was properly constituted. 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, created in 1995, is the world’s largest online marketplace, with a customer base of over 233 million customers in 39 markets. It has over 155 million active buyers worldwide. In 2014, the total value of goods sold was over USD 72 billion.
Complainant owns numerous trademark registrations in at least 31 countries. It first registered EBAY in the US in 1999, and has used the mark consistently for 20 years. In 2014, the EBAY mark ranked 28th in the Interbrand Best Global Brands.
Most of Complainant’s goods are sold through its main website at “www.ebay.com”, which was registered in August 1995. Complainant owns approximately 38 other domain names containing the mark EBAY. These websites are the only way for customers to use Complainant’s services.
Respondent registered the disputed domain name on November 3, 2014. It currently points to a website that offers customers based outside the United Kingdom of Great Britain and Northern Ireland (“UK”) a service that allows them to purchase goods from any English online store, including “ebay.co.uk” and “Amazon”, and money orders, and forward them to customers through Respondent’s UK store. However, the company name, “Ebay-Delivery Ltd” appearing in the “About Us” section of the website at the disputed domain name is false. An online search performed of UK companies shows that there is no such company in the UK. There also have been reports that the site is fraudulent, as reported at “www.scamwarners.com” and others.
The disputed domain name also provides job opportunities under the Recruitment Services tab on its website, which constitute “working at home scams”. Complainant obtained an employment contract, which states that the employee works from home and is responsible for “shipping of goods/ products directly to the recipients or their representatives”, which is related to criminal activity associated with illegal money laundering and reshipping fraud (which will be explained later).
Finally, Complainant’s lawyers’ computer security system has determined that Respondent’s website constitutes a security threat due to malware.
5. Parties’ Contentions
Complainant asserts that it has rights in the EBAY trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s EBAY mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the generic word “delivery”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
In particular, Complainant alleges that Respondent has engaged in “reshipping fraud” (or “parcel mule scam”), which constitutes registration and use in bad faith. The US Postal Service (US Post Office Publication 300A) describes this illegal activity as:
“A relatively new scheme targeting businesses and credit card owners is ‘reshipping fraud.’ Criminals operating primarily from Eastern European countries and Nigeria have been conducting widespread, international schemes involving bogus job offers, fraudulent credit card orders, and the reshipping of illegally obtained products.
The scam begins when criminals buy high-dollar merchandise – such as computers, cameras, and other electronics – via the Internet using stolen credit cards. They have the merchandise shipped to addresses in the United States of paid ‘reshippers’ (who may be unaware they are handling stolen goods). The reshippers repackage the merchandise and mail it to locations in Russia, Estonia, Lithuania, Romania and Germany. Victimized businesses include such well-known companies as Amazon, Gateway and eBay, and other Internet auction sites.”
Other sources provided by Complainant indicate that this scheme has existed since 2008.
Complainant alleges that Respondent has engaged in reshipping fraud based on the following:
1) Respondent’s company name, “Ebay-Delivery Ltd”, is false because it is not registered in the UK;
2) Respondent’s website offers an employment contract in which the employee works from home and is responsible for shipping of goods/products directly to the recipients or their representatives. Moreover, the telephone number appearing on the contract is the same as the number appearing on the website to which the disputed domain name is pointing; and
3) Complainant conducted a search that revealed that the disputed domain name has been linked to reports of online fraud.
Complainant therefore alleges that Respondent has blatantly abused registration and use of the disputed domain name such that Complainant had no choice but to file this Complaint to protect its legitimate business interests and rights, and to protect consumers from being misled as to the source of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various worldwide trademark registrations for the EBAY mark.
The disputed domain name is confusingly similar to Complainant’s EBAY mark. It contains Complainant’s EBAY mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “delivery”. Numerous previous UDRP decisions have held that the addition of a common word does not typically distinguish a disputed domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. In particular, with respect to the addition of the generic term “delivery”, see, e.g., Inter IKEA Systems B.V. v Marc Gray, Glatpackfurniture Delivery and Assembly, WIPO Case No. D2014 0281 () (“It is well established that the addition of generic or descriptive terms such as here ‘delivery’ and ‘options’ to a trademark used in a domain name is insufficient in itself to negate the confusing similarity between a trademark and a domain name.”) UDRP panels in other decisions involving eBay have made similar findings. See, e.g., eBay Inc. v SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259.
Accordingly, the Panel finds that Complainant has rights in the EBAY mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the EBAY mark and has not authorized Respondent to register or use the disputed domain name. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the EBAY mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“For the purposes of paragraph 4(a)(iii), 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 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 web site or location or of a product or service on your web site or location.”
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, Complainant holds various US and international trademark registrations for the EBAY mark. The EBAY mark is highly distinctive and well known internationally. Complainant has provided online marketplace services continuously since 1995, almost 20 years prior to Respondent’s registration of the disputed domain name. Other UDRP panels have found that the EBAY mark is well known and that it is more likely than not that respondents were aware of Complainant’s mark at the time of registration of the disputed domain name. See, e.g., eBay Inc. v Shangli Liang, WIPO Case No. D2014-0037.
Based on these facts, this Panel infers that Respondent must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Respondent clearly is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement of his website, in violation of paragraph 4(b)(iv) of the Policy.
The disputed domain name incorporates in its entirety Complainant’s highly distinctive and well known EBAY mark, which would mislead Internet users into thinking that it is affiliated with Complainant. This impression is enhanced by using the EBAY mark in conjunction with the generic term “delivery”, which is closely related to Complainant’s services as an online marketplace.
The company name, “Ebay-Delivery Ltd” appearing in the “About Us” section of the website at the disputed domain name is false. An online search performed of UK companies shows that there is no such company in the UK. There also have been reports that the site is fraudulent, as reported at “www.scamwarners.com” and others.
It also appears that Respondent is using the EBAY mark to facilitate reshipping fraud. The disputed domain name provides job opportunities under the Recruitment Services tab on its website. Complainant obtained an employment contract, which states that the employee works from home and is responsible for “shipping of goods/ products directly to the recipients or their representatives”, which is consistent with the criminal activity of reshipping fraud, as described in the US Postal Service Publication 300A. Consequently, Respondent may be involving unsuspecting persons in criminal activity by handling and reshipping stolen goods.
Finally, Complainant’s lawyers’ computer security system has determined that Respondent is using the disputed domain name to spread malware, with the deliberate intention of harming Internet users. See 24/7 Real Media Inc v Thomas Shultz, WIPO Case No. D2009-0043.
For each of these reasons, this Panel finds that Respondent has violated paragraph 4(b)(iv) of the Policy, and the third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to Complainant.
Sandra A. Sellers
Date: August 25, 2015