eBay Inc. and Facebook Inc. v. Santosh Ghimire, Do Surf In P. Ltd. and Babin Manandhar
Case No. D2014-1629
1. The Parties
The Complainants are eBay Inc. of San Jose, California, United States of America, and Facebook Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells International LLP, France.
The Respondents are Santosh Ghimire, Do Surf In P. Ltd. and Babin Manandhar of Kathmandu, Bagmati, Nepal.
2. The Domain Names and Registrar
The disputed domain names , , , and
are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 the Respondents of the Complaint, and the proceedings commenced on October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. Email communications were received from the Respondent Santosh Ghimire on October 12 and 19, 2014 by the Center. But the Respondents did not submit any formal response by the specified due date.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on November 13, 2014. 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.
The Complainants are eBay Inc. and Facebook Inc. The Complainants also act on behalf of PayPal and Instagram. The Complainants attach proof to the Complaint of their 100% ownership of PayPal and Instagram. The Complainants therefore rely upon their own trademark rights and those of PayPal and Instagram. eBay Inc. owns numerous trademarks in the mark EBAY in many jurisdictions around the world, including inter alia Community Trademark No. 000825802, registered on January 4, 2000; Chinese Trademark No. 1418902, registered on July 7, 2000; U.S. Trademark No. 2218732, registered on January 19, 1999. PayPal also owns numerous registered PAYPAL trademarks, inter alia U.S. Trademark No. 2646490, registered on November 5, 2002; and Community Trademark No. 001362565, registered on December 4, 2000. Facebook Inc. owns numerous trademark registrations in the mark FACEBOOK, inter alia Nepalese Trademark Nos. 31628 and 31629, registered on January 22, 2012; U.S. Trademark No. 3041791, registered on January 10, 2006 and Community Trademark No. 006455687 registered on October 7, 2008. Finally, Instagram owns numerous trademark registrations in the mark INSTAGRAM, inter alia International Trademark No. 1129314 registered on March 15, 2012; and U.S. Trademark No. 4146057 registered on May 22, 2012. In addition, the four companies mentioned also own numerous domain names to which various authorised websites resolve.
The dates of registration of the disputed domain names are as follows: was registered on October 20, 2011; was registered on April 30, 2013;
was registered on February 16, 2014; was registered on February 16, 2014; and was registered on February 26, 2014.
Consolidation of complaints can quite obviously not be lightly permitted in cases where the complainants do not have a common legal interest in the disputed domain names, as was pointed out by the panel in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021, “[where there is no common legal interest] the complainants would need to make a compelling case that the respondent has engaged in common conduct that has affected their individual rights in like fashion.” A number of factors have been identified by previous UDRP panels as being relevant where the Respondents have engaged in common conduct that affects the Complainants in like fashion. The most significant of these must be that the Complainants are faced by what is or appears to be a single Respondent, owner of all the disputed domain names; that the disputed domain names have similarities in them, such as the inclusion of a complete trademark, and terms as “login” or “signin”, or other generic terms with a similar meaning; that the Complainants are in broadly similar businesses and stand to suffer analogous adverse consequences from the Respondent’s conduct; and that the websites to which the disputed domain names resolve also demonstrate operational or apparent similarities: see National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, supra; and Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331.
The Complainants, unrelated companies, do not have a shared legal interest in the disputed domain names. However, they seek to consolidate their complaints, on the general basis of the Respondent having engaged in “common conduct”. In this case the following factors support consolidation. The disputed domain names appear to be under the common control of one party (the registrants of each of the dispute domain names is the same, with the exception of , but the administrative and technical contact for the latter is the same person as the registrant of the other disputed domain names). The disputed domain names also all include the term “login”.
Further, the websites that were accessible to the Panel on November 23, 2014 (i.e., “www.ebayuklogin.com”; “www.facebooklogins.net”; and “www.instagramloginsignin.com”, the other disputed domain names resolving on that date to a page displaying “Internet Explorer cannot display the webpage”) show a very similar structure, pattern and layout. The webpages for the sites that were inaccessible to the Panel are also similar, as demonstrated by the screenshots attached to the Complaint and generated when the Complainant accessed them at an earlier point. Although the content is not the same in each case it consists of general background information, randomly selected and not systematic. The latter two websites accessed by the Panel also displayed numerous links to unrelated sites, as the screenshots attached to the Complaint for , and
also demonstrate. The Complainants are all major businesses who operate wholly on the Internet and whose services are accessed by some form of secure entry to operational websites and who allow the performance of tasks or commands online.
In Fulham (above) the question whether it would be equitable and procedurally efficient to consolidate the complaints was also raised as significant. The panel in that case pointed out that separate proceedings would be inefficient and unnecessary where the disputed domain names are used for the same purposes; the substantive arguments are the same in each case; all the complainants are represented by a single authorized representative for the purposes of the proceedings; the case involves a relatively small number of disputed domain names; relevant filings, including annexes, are not unreasonably voluminous; and there is an applicable fee schedule covering the complaint as filed (factors reiterated in Fulham at 5B). These factors are all satisfied in this case.
Accordingly the Panel permits consolidation into a single complaint.
The Panel also accepts that for the same reasons there is a single entity behind the registration of all the disputed domain names (hereinafter “the Respondent”).
6. Parties’ Contentions
The Complainants and their relevant subsidiaries are all major Internet based businesses with a well established reputation worldwide, as supported by the various data contained in the Complaint.
According to the Complainants, the disputed domain names are all confusingly similar to their relevant trademarks, since they incorporate the latter in their entirety in each case, with the addition of generic terms. Terms such as “login” are standard terms commonly used on the internet in particular in connection with membership based websites, according to the Complainants. The addition of the generic Top-Level Domain (“gTLD”) suffixes “.net” or “.com” are said to be generally accepted as irrelevant to the question of confusing similarity.
The Complainants assert that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain names. The Respondent is not an authorised dealer, distributor, or licensee of the Complainants, and has not been authorized by the Complainants to use any of the relevant trademarks. The Respondent is not commonly known by any of the disputed domain names, the Complainants assert.
Further, the Complainants assert that the disputed domain names are not used in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The websites to which the disputed domain names resolve do not merely contain information, but display commercial hyperlinks and advertising banners. The disputed domain name resolves to a website that prominently displays the eBay logo without any authorization by the relevant Complainant. According to the Complaint, none of this amounts to bona fide use, but rather to a pursuit of profit derived from the abuse of the Complainants’ goodwill.
Nor is a fair noncommercial use of the disputed domain names demonstrated by the contents of the websites to which they resolve. According to the Complaint, those websites are all clearly commercial, as demonstrated by the display of banners and links from which the Respondent is said to obtain commercial gain. While the Respondent purports to provide “informational websites”, the reality is, according to the Complaint, that the Respondent’s real intention is to profit commercially from the sites. This is demonstrated by the presence of numerous advertisements and by the fact that most of the information on these websites is banal. According to the Complainants, the various websites have been established in a manner that generates an appearance of legitimacy while hiding the reality of commercial purpose.
The Complainants also point out that although the website associated with
currently does not appear to display commercial advertisements and banners, the fact that the Respondent has demonstrated a pattern of using the disputed domain names consisting of famous trademarks to point to purportedly “informational websites” that contain advertisements and commercial links indicates that the Respondent’s intentions for this website are the same and not well-meaning.
The Complainants assert that various UDRP panels have accepted that the Complainants’ four marks are famous and well known around the world. Therefore it is inconceivable that the Respondent was not aware of them at the time of registration of the disputed domain names. The Respondent had actual or constructive notice of the Complainants’ rights.
The Complainants also submit that the disputed domain names were registered to prevent the Complainants from reflecting their well-known trademarks in the corresponding domain names. They also submit that the Respondent has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy. The Complainants assert that a search they conducted revealed that the Respondent has engaged in a pattern of registering domain names incorporating the well-known trademarks of third parties, for instance, , and .
According to the Complainants, the disputed domain names were not only registered but are also being used in bad faith. The Respondent was without a doubt aware of the fact that Internet users would expect to find the Complainants’ own websites when accessing the sites to which the disputed domain names point. They would expect that the Complainants are offering help or support at those websites. According to the Complaint, the Respondent is deliberately using the disputed domain names to mislead Internet users searching for the Complainants into believing that the Respondent’s websites are affiliated to or sponsored by the Complainants.
Further, the Respondent is unduly taking advantage of the Complainants’ goodwill for the sake of its own profit, asserts the Complaint. The “www.ebayuklogin.com” website displays numerous commercial banners, but also offers an unauthorised “eBay app for iPhone”, prominently displaying eBay’s multicolor trademark. According to the Complainants, it is imperative that consumers not be exposed to such an app, whose safety and efficacy cannot be assured. The “www.facebookloginhelp.net” website also displays a device mark that is very similar to the Facebook “F” styled mark. Use of such a mark on a website displaying many commercial links is a further demonstration of bad faith, according to the Complainants.
The Complaint further states that it would not be immediately apparent to an Internet user that the websites associated with the disputed domain names are not official websites of the Complainants, further confusing Internet users. No clear and prominent disclaimers are on display, and the disclaimers relating to the “www.facebooklogins.net” and “www.facebookloginhelp.net” websites are buried in the fine print.
Finally, the Complainants assert that no response was received to their letter of demand, which has been acknowledged as a further indication of bad faith by previous UDRP panels.
The Respondent did not formally reply to the Complainants’ contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
None of the disputed domain names is identical to any of the Complainants’ trademarks. However, all the disputed domain names incorporate a trademark of one of the Complainants’ in its entirety and as the initial and most prominent part. Each of the trademarks of the Complainants are distinctive. The addition of the generic terms “login”, “loginhelp” or “loginsignin” does nothing to disassociate the disputed domain names from the Complainants, their trademarks or their goodwill. As pointed out regularly by previous UDRP panels, the addition of generic terms does not distinguish disputed domain names from the trademarks associated. The inclusion of the marks and terms such as “login” or “signin” only reinforces the impression of an operational connection between the websites to which the disputed domain names resolve and the owner of the trademark.
Therefore the Panel holds that the disputed domain names are confusingly similar to the Complainants’ relevant trademarks.
B. Rights or Legitimate Interests
Nothing before the Panel indicates that the Respondent has any rights or legitimate interests in the disputed domain names. The Complainants did not authorize any use of their trademarks, either for inclusion in registered domain names or for any other purpose. There is no indication that either of the parties named as the Respondents is known by the disputed domain names or carry on legitimate business under them. The websites to which the disputed domain names resolve do not amount to genuine informational sites. Instead they contain banner advertising and hyperlinks, and uncoordinated sections of banal information. The impression is of an attempt to hide the true commercial purpose of the websites under a thin veneer of legitimacy. The Panel notes that the website associated with
did not appear to display commercial advertisements and banners. However, the Panel finds that, due to the fact that there is no apparent disclosure of the relationship between the Complainant and the Respondent, and that this website has a similar structure, pattern and layout to the website to which the other disputed domain names resolve, the Respondent’s intentions for this website is also likely to be to deceptively divert Internet users. None of this is apt to vest rights or legitimate interests in the Respondent.
Therefore the Panel holds that the Respondents have no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
It is inconceivable that the Respondent familiar enough with the Internet to register the disputed domain names, should not have been aware of the goodwill vesting in the relevant trademarks of the Complainants at the time of registration of the disputed domain names. All four trademarks are very prominent on the web, and represent functional and operational capabilities on the Internet that most users would be familiar with. The deliberate inclusion of Internet-relevant terms such as “login” further demonstrates that the Respondent must have been aware of the Complainants’ trademark rights at the time of registration. Further, as noted above under Rights or Legitimate Interests regarding the use of the disputed domain names, the websites established by the Respondent give every impression of a deliberate attempt to hide a true commercial purpose under a veneer of mere information content. This is demonstrated by the inclusion of banal information in an unsystematic way, the inclusion of hyperlinks and banner ads, and the misuse of certain of the Complainants’ trademarks and devices, including colourable imitations of the Facebook trademark. Whatever disclaimers are included are not prominently enough displayed.
Therefore the Panel holds that the disputed domain names were registered and are being used in bad faith.
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 names , , , and
be transferred to the Complainants, in particular and
to eBay Inc. and , and to Facebook Inc.
William A. Van Caenegem
Date: November 26, 2014