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eBay obtains transfer of thousands of domain names under UDRP
PRACTICE AREA GROUP: Intellectual Property
In eBay Inc v Du Hongxia (Case No D2014-2015), eBay has succeeded in securing the transfer to it of thousands of domain names comprising the well-known EBAY trademark, followed by a number and the generic '.com' or '.net' top-level domain identifiers (eg, 'ebay002.com'). The domain names were registered by Du Hongxia and Liu Yujiao, who used a privacy service to conceal their identities. The domain names were connected to various Chinese language websites, some of which were associated with gambling. The respondents did not submit a response to the complaint.
The decision first addressed a number of procedural issues.
With regard to the identity of the respondents, the panel found that the use of a privacy service by the respondents which concealed their identities had no material part to play in the dispute and was therefore disregarded by the panel.
Further, under the Rules for Uniform Domain Name Dispute Resolution Policy, the default language of the proceedings is the language of the registration agreement relating to the domain names, which in this case was Chinese. eBay argued that the language of the proceedings should be English because it would be unduly harsh to require eBay to translate into Chinese the extensive documentation relating to the domain names, particularly where the respondents had clearly targeted its highly distinctive EBAY trademark (the respondents had also targeted other well-known trademarks such as SONY, NIKE and BMW). The panel noted that it must ensure that the proceedings take place with “due expedition”. It therefore accepted that to require eBay to translate all the relevant documentation into Chinese would involve “enormous expense and lead to extensive delays”. The panel found that permitting the proceedings to be in English would not unduly disadvantage the respondents because they were likely to understand English (or have access to those who do understand English).
In addition, eBay requested that the complaint, which related to domain names held in the names of two different registrants (ie, Du Hongxia and Liu Yujiao), proceed as one consolidated complaint. In support of its request, eBay produced evidence which demonstrated that the respondents were either one and the same entity or were acting in concert with a common design or were under common control. The panel was satisfied that it could order the proceedings to be consolidated in circumstances where the domain names in question were subject to common control and the consolidation would be fair to the parties. The panel agreed with eBay and found that it was fair that the complaint proceed as one consolidated complaint.
The panel then went on to apply Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP).
With regard to Paragraph 4(a)(i), unsurprisingly the panel found that the domain names were all confusingly similar to the EBAY mark.
With regard to Paragraph 4(a)(ii), the panel found that the very fact that the respondents registered thousands of domain names all including the EBAY mark required an explanation. In the absence of any such explanation, the panel found that the respondents had no rights or legitimate interest in the domain names.
Finally, with regard to Paragraph 4(a)(iii), the panel was satisfied that the registration by the respondents of thousands of domain names which were confusingly similar to the well-known EBAY mark without any obvious justification and without the authority of eBay was likely to have been done so with abusive intent. The panel went on to find that the domain names were being used for commercial gain and that the respondents were trading on the reputation and goodwill associated with the well-known EBAY mark. The domain names were therefore registered and used in bad faith.
The panel thus ordered the transfer of all the domain names to eBay.
The panel used the flexibility in the Rules effectively to ensure a speedy, cost-effective resolution to the dispute which otherwise could have been complicated by the fact that the proceedings concerned thousands of domain names, two languages and two respondents trying to conceal their identities. This decision is testament to the efficacy of the UDRP as a tool that can be applied pragmatically to resolve even the largest and most procedurally complex cybersquatting cases.
This article originally appeared in World Trademark Review on 23 January 2015.