Fresh from the “it can’t be really this stupid” department comes the UDRP filed by eBay for a number of gTLD domains, and here’s why.
The domains are: ebay.fashion, ebay.yoga, ebay.wedding, ebay.horse, ebay.work, ebay.vodka, ebay.surf, ebay.garden, ebay.rodeo, ebay.fishing, ebay.fit, ebay.casa, ebay.cooking, and ebay.beer – all of which are registered with Hosting Concepts B.V. d/b/a Registrar.eu.
So who was so stupid as to register a famous trademark such as EBAY in all these gTLDs?
As it turns out, the domains were registered by CHIP SA, a Luxembourg company that works with the Trademark Clearinghouse, which is basically an ICANN mechanism enabling trademark holders to add their brands in a database, triggering alerts when attempts to register domains infringing on these brands take place.
In other words: Ebay provided their brand to the Trademark Clearinghouse themselves, but it seems they forgot all about it. The question is, why were these domains allowed to resolve to landing pages, as opposed to being locked down.
Jan Jansen, CHIP CEO, was named as the Respondent in this UDRP. He provided information to the panel confirming their role in the registration of these eBay domains, and encouraged the transfer of the domains to the Complainant.
eBay Inc. v. Jan Jansen
Claim Number: FA2212002026015
PARTIES
Complainant is eBay Inc. (“Complainant”), represented by Amanda Marston of Holland & Hart LLP, Colorado, USA. Respondent is Jan Jansen (“Respondent”), Luxembourg.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are ebay.fashion, ebay.yoga, ebay.wedding, ebay.horse, ebay.work, ebay.vodka, ebay.surf, ebay.garden, ebay.rodeo, ebay.fishing, ebay.fit, ebay.casa, ebay.cooking, and ebay.beer (collectively “Domain Names”), registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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 December 30, 2022; Forum received payment on December 30, 2022.
On January 11, 2023, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the ebay.fashion, ebay.yoga, ebay.wedding, ebay.horse, ebay.work, ebay.vodka, ebay.surf, ebay.garden, ebay.rodeo, ebay.fishing, ebay.fit, ebay.casa, ebay.cooking, and ebay.beer domain names are registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 February 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@ebay.fashion, postmaster@ebay.yoga, postmaster@ebay.wedding, postmaster@ebay.horse, postmaster@ebay.work, postmaster@ebay.vodka, postmaster@ebay.surf, postmaster@ebay.garden, postmaster@ebay.rodeo, postmaster@ebay.fishing, postmaster@ebay.fit, postmaster@ebay.casa, postmaster@ebay.cooking, postmaster@ebay.beer. Also on February 3, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
On March 6, 2023 the Panel issued a Panel Order under Rule 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). The context of this Panel Order arose following its review of the informal response from Respondent on February 11, 2023 which effectively stated that:
a) Respondent is the Clearinghouse for Intellectual Property, which provides brand protection services for trademark holders (the named Respondent is the CEO of the Clearinghouse for Intellectual Property); and
b) The Domain Names were registered and held on the instructions of Complainant who had engaged an agent to provide Trademark Registry Exchange Services under the Clearinghouse for Intellectual Property.
The Panel Order sought additional submissions from both parties as to the true identity of Respondent, and documentary material supporting the claim that the Domain Names were registered and held at the direction of Complainant.
On March 9, 2023, Respondent provided an additional submission supporting its earlier statements and indicating that it considered the entire process a misunderstanding. On March 13, 2023 Complainant provided a further Response which provided evidence that Respondent consents to the transfer of the Domain Names to Complainant. On the same day Respondent sent a further e-mail to Forum, confirming that it consents to transfer of the Domain Names to Complainant.
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 formal response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, eBay Inc., operates an online shopping market and auction website. Complainant has rights in the EBAY mark through multiple trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 2,218,732, which was registered on January 19, 1999). Respondent’s domain names are identical to the EBAY mark since they incorporate the entire mark, only adding generic top-level domains (“gTLDs”) that relate to Complainant’s services.
Respondent lacks rights or legitimate interests in the Domain Names since Respondent is not licensed or authorized to use Complainant’s EBAY mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent seeks to falsely affiliate itself with Complainant and does not make active use of the Domain Names. Further, Respondent was on notice of Complainant’s rights in the EBAY mark.
Respondent registered and uses the Domain Names in bad faith by failing to make active use of the Domain Names. Respondent also registered the Domain Names with a privacy service and did so with actual knowledge of Complainant’s rights in the EBAY mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However on February 11, 2023 Forum received an informal communication from Respondent identifying Respondent as connected to the Clearinghouse for Intellectual Property and suggesting that the present proceeding arose from a miscommunication since the Domain Names were registered on instruction from Complainant.
C. Additional Submissions
Respondent’s Additional Submission confirm Respondent’s earlier submissions. Complainant’s Additional Submission contains material confirming that Respondent seeks transfer of the Domain Names as well as further submissions to the effect that even if the Panel finds that Respondent does not consent to transfer of the Domain Names Complainant is entitled to an order for transfer under the Policy.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the Domain Names to Complainant. However, after the initiation of this proceeding Hosting Concepts B.V. d/b/a Registrar.eu. placed a hold on Respondent’s account and therefore Respondent cannot transfer the Domain Names while this proceeding is still pending.
In a circumstance such as this, where Respondent has not contested the transfer of the Domain Names, but instead agrees to transfer the Domain Names to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the Domain Names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
DECISION
As Complainant and Respondent both seek to transfer the Domain Names from Respondent to Complainant, the Panel concludes that such relief shall be GRANTED.
Accordingly, it is Ordered that the ebay.fashion, ebay.yoga, ebay.wedding, ebay.horse, ebay.work, ebay.vodka, ebay.surf, ebay.garden, ebay.rodeo, ebay.fishing, ebay.fit, ebay.casa, ebay.cooking, and ebay.beer domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 14 2023
