Ebay filed a UDRP to get the domain BillionaireBay.com from a French company that holds a trademark in France for BILLIONAIREBAY but this is where it gets complicated.
The mark’s application in France was opposed at the time by eBay, leading to the mark’s rejection for auctions and marketplace services, however the BILLIONAIREBAY trademark proceeded to registration for the other goods and services for which it was sought to be registered.
In a nutshell: A valid mark by the Respondent led to the Forum (NAF) panelist to deny the domain’s transfer. It was a decision that leveraged all of the case’s details, noting that the UDRP was designed with cybertsquatting in mind—this is not one such case.
The domain transfer was denied.
DECISION
eBay Inc. v. BillionaireBay BBAY-GANDI / BILLIONAIREBAY
Claim Number: FA2301002027563
PARTIESComplainant is eBay Inc. (“Complainant”), represented by Amanda Marston, US. Respondent is BillionaireBay BBAY-GANDI / BILLIONAIREBAY (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is (“Domain Name”), registered with Gandi SAS.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 13, 2023; Forum received payment on January 13, 2023.
On January 16, 2023, Gandi SAS confirmed by e-mail to Forum that the domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2023 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@billionairebay.com. Also on January 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant offers online marketplace and auction services. Complainant claims rights to the EBAY mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”)(e.g. Reg. No. 2,218,732, registered January 19, 1999). Respondent’s domain name is identical or confusingly similar to Complainant’s EBAY mark as it incorporates the mark in its entirety and adds the term “billionair”, as well as the generic top-level domain (“gTLD”) “.com” to form the Domain Name.
Respondent lacks rights or legitimate interests in the domain name. Respondent is not licensed or authorized to use Complainant’s well-known EBAY mark. Respondent also does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent inactively holds the Domain Name.
Respondent registered and uses the domain name in bad faith. First, Respondent capitalizes on the goodwill associated with Complainant’s EBAY mark by purporting to offer competing services. Respondent’s registration and use of the Domain Name is an example of opportunistic bad faith. Moreover, Respondent had actual knowledge of Complainant’s rights in the EBAY mark as evidenced by the promotion of Respondent’s proposed services. Finally, Respondent’s failure to respond to Complainant’s cease and desist letters is further evidence of Respondent’s bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, having failed to establish that Respondent lacks rights or legitimate interests in the Domain Name, has not established all required elements of its claim, and thus its complaint must be denied.
DISCUSSION
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 that Complainant must 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 has been registered and is being used in bad faith.
In view of 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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the EBAY mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,218,732, registered January 19, 1999). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) (“Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).).
In light of the Panel’s dispositive finding on the issue of rights and legitimate interests, the Panel declines to address the question of confusing similarity.
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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 asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the EBAY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
This case involves an unusual set of facts. The Domain Name was registered on August 29, 2008. In 2011 the Respondent obtained a French company name registration for BillionareBay which was cancelled in 2016. In 2011 the Respondent acquired a French trademark registration for the trademark BILLIONAIREBAY, which was cancelled in June 2021. On November 26, 2019, Complainant sent a letter of demand to Respondent in respect of the Domain Name which it did not respond to.
In January 2021, Respondent obtained a French company name registration for BillionareBay which as of the date of the decision remains active. On November 22, 2021, Respondent filed a further trademark application for BILLIONAREBAY, which was opposed by Complainant. On August 22, 2022 a decision was issued by INPI (Institut National de la Propriété Industrielle) in which the Complainant was partially successful in opposing the registration of the BILLIONAREBAY trademark in respect of a range of services including for auctions and marketplace services, however the BILLIONAREBAY trademark (No. 4819161) proceeded to registration for the other goods and services for which it was sought to be registered.
The Domain Name presently resolves to a website (“Respondent’s Website”) that contains the phrase “World’s Premier UHNWI Auctions & NFTs Marketplace Grand Opening 2022” but is otherwise inactive. Complainant states that Respondent, in the 14 years it has held the Domain Name, has never run an active website from the Domain Name (as opposed to a landing page suggesting a luxury auction house or online marketplace was forthcoming which has been the case both presently and in previous years). The Complaint annexes promotional material from 2017 displayed on third party websites which suggests Respondent intended to offer an auction service for wealthy individuals and was aware of the Complainant (the Respondent’s proposed service is described as “the EBAY for the 1%”). The Respondent’s Website contains links to Facebook and Twitter pages, that on their face are operated by Respondent. These pages contain occasional references to luxury goods, which are said to be goods that will be auctioned soon on the Respondent’s Website, but there is no evidence before me that they were auctioned using the Respondent’s Website as there is no evidence that an active website has ever existed at the Domain Name.
The fundamental issue in this proceeding is this: A respondent has rights or legitimate interests in a domain name if they are commonly known by the Domain Name. The WHOIS lists “BillionaireBay BBAY-GANDI / BILLIONAIREBAY” as registrant of record. The Respondent (or, as asserted by Complainant and not denied by Respondent, an individual connected to the Respondent) holds a French company registration for BILLIONAREBAY SAS, being a company name that corresponds with the Domain Name and an active and valid French trademark registration for BILLIONAREBAY, albeit for a narrower range of goods and services then the trademark was originally sought to be registered for. Respondent also held a similar trademark registration from 2011 to 2016. The Panel notes that these rights, were Respondent seeking to obtain the Domain Name as a complainant in a UDRP proceeding, would more than satisfy the requirements of the first element of the Policy; namely that a party has rights in a trademark that is identical or confusingly similar to the Domain Name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ¶ 2.12, states, in response to the question “Does a respondent trademark corresponding to a domain name automatically generate rights or legitimate interests?” that:
“2.12.1 Panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element.
2.12.2 The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). Absent evidence of such circumstances indicating pretext however, panels have been reluctant to reject a respondent trademark registration out of hand.”
The Panel notes its concern with the conduct of the Respondent over the course of 14 years of ownership of the Domain Name and the failure of the Respondent to participate in the proceeding. In particular, the Panel notes that the Complaint contains evidence that Respondent has (both currently on the Respondent’s Website and in various past promotions) expressed an intention to operate some form of retail space from the Domain Name in competition with Complainant (i.e. “the EBAY for the 1%”), but at no point has it actively operated such a site. Nevertheless, given the nature of the UDRP, the Panel is reluctant to “go behind” the registration of the Respondent’s trademark and question its validity especially after the decision of INPI to allow registration of the BILLIONAIREBAY trademark. The case of Mubadala Trade Marks Holding Company, LLC, Al Yah Satellite Communications Company PrJSC, and Al Maisan Satellite Communications Company, LLC v. Emedia Development Ltd. and Whois Privacy Services Pty Ltd. D2013-0570 (WIPO May 23, 2013) involved similar fact situations and the quote below summarises the issue faced by the Panel well.
“The UDRP was designed as a fast, efficient mechanism for the resolution of clear-cut cases of cybersquatting. It operates on the basis of an abbreviated record, affords no opportunity for discovery or in-person pleadings, and is conducted on a comparatively rapid schedule. UDRP panels are, therefore, not capable of deciding disputes which involve a “weighing” of respective trademark rights. Nor are they competent to “look behind” a trademark granted by a national authority to question or re-assess its validity.
The Respondent’s explanation of his motives in this case is, in the Panel’s view, highly improbable, particularly with regard to the timing of his registration of the disputed domain names in light of the Complainants’ press releases. His actions in this case are similar to the fact patterns of both Tiara Hotels & Resorts LLC v. John Pepin, WIPO Case No. D2009-0041 and Abu Dhabi Future Energy Company PJSC v. John Pepin, WIPO Case No. D2008-1560, in which the respective UDRP panels ordered the transfer of the relevant domain names. In this matter, however, the Respondent has taken the additional step of securing registered United Kingdom trademark rights in identical terms.
The Panel notes that prior UDRP panels have elected to consider cases under the UDRP wherein both parties hold registered trademark rights. In perhaps the best-known case to address this issue, the Madonna case (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847), the panel held that the respondent’s actions were consistent with cybersquatting activities and that no weight need be accorded to the respondent’s trademark registration. In that matter, however, the respondent’s rights were granted by a jurisdiction which undertook no pre-registration evaluation of marks, and the respondent openly conceded that his only motive in registering the mark was to shore up his rights to the domain name.
In this case, both the Complainants and the Respondent possess valid trademark rights in the terms “yahclick” and “yahlive.” The Respondent’s rights were granted by the United Kingdom, which does undertake a thorough pre-registration review of applied-for marks, and further the Respondent’s trademarks were granted expressly for the provision of third-party online advertising (which could, in theory, encompass PPC usage). Despite the Panel’s misgivings about the sincerity of the Respondent’s motives and allegations, the UDRP was not designed to resolve such complicated questions of fact and law.
The complex issues raised by this case should properly be addressed by a court of competent jurisdiction, and accordingly, the Complaint must be dismissed.”
The case of Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) summarized the issue more pithily, stating “If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”
The Panel is not satisfied that the present case is analogous to the Madonna case referred to above, where the then respondent acquired a trademark from a jurisdiction that did not undertake a pre-registration examination solely for the purpose of legitimatizing its ownership of the Domain Name and circumventing a UDRP decision against it. Rather, the present case concerns a similar fact situation to Mubadala. Notwithstanding the Panel’s concerns with the conduct of the Respondent, the Respondent (or an entity connected with Respondent) holds valid business name and trademark registrations in France, a jurisdiction that does undertake a review of an applied-for registration. Indeed Respondent was able to register BILLIONAIREBAY as a trademark in France notwithstanding the (partially successful) opposition to the registration by Complainant. The Panel is particularly reluctant to re-assess the validity of the BILLIONAREBAY mark when, less than 1 year ago, the French national intellectual property body considered this very issue and allowed the BILLIONAREBAY mark to proceed to registration.
Respondent has established trademark rights in France in a mark essentially identical to the Domain Name for a range of goods and services and thus has rights or legitimate interests in the Domain Name. Were the Respondent to seek to actively use the Domain Name for any purpose that amounted to an infringement of the Complainant’s rights in the EBAY Mark, Complainant has an existing remedy in the French court. Such a court would be in a better position then this Panel to consider the nature of the Respondent’s (presently hypothetical) conduct, the extent to which such conduct breaches Complainant’s EBAY Mark, and the extent to which such conduct is legitimised by reason of Respondent holding a registered trademark for a limited range of goods and services in France.
The Uniform Domain Name Dispute Resolution Policy is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, FA 1577032 (Forum Oct. 9, 2014) (“The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable. ”). Panels have recognized that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”. Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Also see Courtney Love v. Brooke Barnett, FA 944826 (Forum May 14, 2007) (“the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.”)
Finally Panels have noted that disputes involving parties that have at least a prima facie case for rights are outside the scope of the Policy. See Love v. Barnett, FA944826 (Forum May 14, 2007) (“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy”.) This is such a case. Given the nature of Respondent’s registered company name and trademark, the Panel finds that Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the Domain Name and hence satisfy the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
In light of the Panel’s dispositive finding on the issue of rights or legitimate interests, the Panel declines to address the question of registration and use in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the domain name REMAIN WITH Respondent.
Nicholas J.T. Smith, Panelist
