eBay tried to shoehorn a trademark dispute into a cybersquatting dispute.
eBay has lost a dispute it filed to get control of the domain name BillionaireBay .com in a UDRP cybersquatting case.
National Arbitration Forum panelist Nicholas J.T. Smith correctly noted the limitations of the Uniform Domain Name Dispute Resolution Policy. It is a policy designed to resolve clearcut cases of cybersquatting and not a way to settle complex trademark disputes.
In this case, it’s clear that the domain owner was aware of eBay and even trying to trade off of eBay’s reputation by creating an “eBay for the 1%”. However, the domain owner created a company with the BillionaireBay name and recently secured a French trademark for the name despite eBay challenging that mark. (The French trademark authority approved the mark after removing some categories of services that conflicted with eBay’s services.)
Smith noted that given the rights the Respondent has secured in BillionaireBay, had the Respondent filed a UDRP in this proceeding, he would have succeeded on the first element of having rights in a mark that were confusingly similar.
Summarizing Smith’s decision, he noted that this is a complex trademark dispute, not a simple cybersquatting claim. eBay can go after the domain owner in court if it chooses:
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.
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