DECISION

Amazon.com, Inc. v. Rayaneh Net

Claim Number:  FA0309000196217

PARTIES

Complainant is Amazon.com, Inc., Seattle, WA (“Complainant”) represented by Kevin M. Hayes, Esq. of Klarquist Sparkman, LLP.  Respondent is Rayaneh Net, Tehran, Iran (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amazoniran.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 18, 2003; the Forum received a hard copy of the Complaint on September 22, 2003.

On September 22, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <amazoniran.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@amazoniran.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 21, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:

1. Respondent’s <amazoniran.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark.

2. Respondent does not have any rights or legitimate interests in the <amazoniran.com> domain name.

3. Respondent registered and used the <amazoniran.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Amazon.com, is the holder of numerous registrations for the AMAZON.COM mark in over 40 countries, as well as the European Union.  For example, Complainant holds multiple registrations for the AMAZON.COM mark on the Principal Register with the United States Patent and Trademark Office (“USPTO”) including Registration No. 2,078,494 (registered on July 15, 1997), 2,167,345 (registered on June 23, 1998) and 2,633,281 (registered on October 8, 2002).

Initially, Complainant sold books through its <amazon.com> website and has subsequently grown to become the world’s largest online bookseller.  Additionally, Complainant’s operations have expanded to now include a full line of goods ranging from computer products and electronic toys to apparel and household goods, and services such as movie listings.  

Complainant’s innovative and successful use of the Internet as a medium of commerce has made it one of the world’s best known Internet retailers.  Tens of millions of customers from over 220 countries have purchased goods and services through Complainant’s <amazon.com> website.  In 2002, complainant recorded revenue in excess of $3.9 billion.  Nearly one-third of Complainant’s revenue is derived from international sales, with international sales topping $1 billion in 2002.

Respondent, who is not a licensee of Complainant, registered the <amazoniran.com> domain name on April 29, 2003.  Respondent is selling books from its website located at the <amazoniran.com> domain name.  In addition, Respondent duplicated Complainant’s AMAZON.COM logo and used it at its website.

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the AMAZON.COM mark through registration of its mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

Respondent’s domain name, <amazoniran.com>, is confusingly similar to Complainant’s mark.  Respondent has merely added the geographic term “Iran” to Complainant’s famous AMAZON.COM mark.  Due to the similarity of the domain name and Complainant’s mark and the fact that both Complainant and Respondent operate within the same industry, consumers may mistakenly believe that Respondent’s domain name is Complainant’s domain name for its services in Iran.  Thus, the Panel concludes that the domain name is confusingly similar to Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In this proceeding, Respondent failed to submit a Response to the Panel.  Once Complainant has alleged that Respondent does not have rights and legitimate interests in the domain name, the burden shifts to Respondent to provide evidence that it does have rights and legitimate interests in the domain name.  However, since Respondent has not met its burden, the Panel finds that Respondent does not have any rights or legitimate interests in the <amazoniran.com> domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Complainant has not granted Respondent a license to the use its famous AMAZON.COM mark.  Moreover, there is no evidence before the Panel showing that Respondent is known by the <amazoniran.com> domain name.  Consequently, the Panel concludes that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Respondent is using the <amazoniran.com> domain name to sell books on the Internet, a service that directly competes with services offered by Complainant under its AMAZON.COM mark.  Furthermore, Respondent not only uses Complainant’s entire mark in its domain name, it even duplicated Complainant’s logo and posted it on its website.  By using Complainant’s mark, copying its logo and offering the same services as Complainant on its website, the Panel is led to believe that Respondent is trying to pass itself off as Complainant.  Accordingly, the Panel finds that Respondent’s infringing use of the <amazoniran.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Avery Dennison Corp. v. Ray Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).       

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the <amazoniran.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s AMAZON.COM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  In addition to using Complainant’s entire AMAZON.COM mark in its domain name, Respondent offers services that compete with Complainant and displays a duplicated version of Complainant’s logo at its website.  Clearly, Respondent went to great lengths to make it appear that it was affiliated with or endorsed by Complainant and it is likely that Internet users will believe that Respondent’s website is somehow associated with Complainant.  Accordingly, the Panel finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

Furthermore, using another’s mark to pass oneself off as another is bad faith in itself.  At its website, Respondent gave Internet users the impression that it was affiliated or associated with Complainant’s business.  Respondent’s attempt to pass itself off as Complainant is likely to result in consumers erroneously believing that the <amazoniran.com> domain name is simply Complainant’s domain name for Iran.  Thus, the Panel finds that Respondent’s attempt to pass itself off as Complainant is evidence that Respondent registered and used the <amazoniran.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <amazoniran.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 28, 2003

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