DECISION

Amazon.com, Inc. v. Seo Jeonggon

Claim Number: FA0407000306578

PARTIES

Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin M. Hayes of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204.  Respondent is Seo Jeonggon (“Respondent”), 1475-3youngchunri, changsungeub, changsunggun chnnam NA 515800, KR.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amazob.com>, registered with Domain Monkeys Llc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.

Robert T. Pfeuffer, Senior District Judge, Chairman, Anne M. Wallace, Q.C. and Edward C. Chiasson, Q.C., as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 29, 2004; the Forum received a hard copy of the Complaint on August 2, 2004.

On July 30, 2004, Domain Monkeys Llc confirmed by e-mail to the Forum that the domain name <amazob.com> is registered with Domain Monkeys Llc and that the Respondent is the current registrant of the name.  Domain Monkeys Llc has verified that Respondent is bound by the Domain Monkeys Llc 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 August 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 24, 2004 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@amazob.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 August 31, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge, Anne M. Wallace, Q.C., and Edward C. Chiasson, Q.C., as Panelists.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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

From a reading of the Complaint it appears that the main issues are under ICANN Policy ¶4(a)(i)  “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”  The Complaint points out and is supported by many exhibits that the Complainant has used the name AMAZON.COM and other AMAZON marks, both registered and at common law, for providing goods and services for many years.  It states that in the year 2003 AMAZON.COM recorded revenues under this name in excess of $2.5 billion U.S. dollars, $3.9 billion dollars in 2002 and $3.1 billion in 2001.  Complainant has attached exhibits indicating that Complainant has rights in AMAZON.COM as evidenced by trademark registrations in over 40 countries as well as the European Union.  Complainant points out that on numerous occasions cybersquatters from all over the world have attempted to infringe on the AMAZON-type domain name and trade off of Complainant’s fame and goodwill.  It sets out in its Complaint numerous decisions by other panels in cases of this nature.

Complainant contends that the disputed domain name is confusingly similar to Complainant’s AMAZON marks because it is merely a typo of Complainant’s marks.  It points out that the disputed domain name simply substitutes a “b” for the “n” in Complainant’s AMAZON marks.  It is further stated that the substitution forms a domain name that looks and sounds highly similar to Complainant’s marks and that it is extremely likely that Internet users will mistakenly arrive at a website corresponding to Respondent’s domain name by mistyping Complainant’s intuitive URL into a web browser.  Complainant states that, as a result, confusion to the consuming public is highly likely.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name.  It points out that Complainant has not licensed Respondent to use the <amazob.com> domain name and that Respondent is not using the disputed domain name in connection with a bone fide offering of goods or services.  Complainant alleges that the website to which the disputed domain name resolves is simply a generic search page, but contains a banner for Complainant’s website.  Complainant further states that Respondent must have been aware of Complainant’s famous name and marks at the time he registered the disputed domain name because it has included a banner on its website referring to Complainant’s website.

Complainant alleges that Respondent has never been commonly known by the name <amazob.com> citing the WHOIS records showing that Respondent is known as “seo jeonggon,” rather than “amazob.com” and that because of the fame of Complainant’s marks, Respondent should not be considered commonly known by the disputed domain name.  Further, most consumers would associate a domain name that is confusingly similar to Complainant’s tradename and marks with the Complainant AMAZON.com.

Complainant further states that the disputed domain name was registered and is being used in bad faith.  It alleges that Respondent has a long history of cybersquatting and its typosquatting on Complainant’s famous marks leave little question that Respondent’s attempt to ride the coattails of Complainant’s famous name and marks is clearly in bad faith, in violation of ICANN policies and U.S. federal law.  Complainant alleges that the registering of the disputed domain name is a typo-ploy which has been recognized as demonstrating bad faith on numerous prior occasions when similar issues have been decided by other panels.  It also points out that Respondent appears to be a recidivist cybersquatter and that several panels have transferred domain names from Respondent in UDRP proceedings.

B. Respondent

Respondent has defaulted and failed to respond to Complainant’s allegations in all things.

C. Additional Submissions

No additional submissions have been received by the panel from the Complainant.

FINDINGS

The panel finds from a review of the evidence that the allegations contained in Complainant’s pleadings are proved by a preponderance of the evidence submitted.  The panel therefore finds that the domain name in dispute <amazob.com> is confusingly similar to Complainant’s trademark and its AMAZON.com use at common law, that Respondent has no rights or legitimate interests in the disputed name and that Respondent’s registration of the disputed domain name <amazob.com> was in bad faith and use.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 and AMAZON.com marks by registering them with the United States Patent and Trademark Office (Reg. No. 2,078,496 issued July 15, 1997 and Reg. No. 2,696,140 issued March 11, 2003).  The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).  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).

The Panel is convinced from the evidence that the <amazob.com> domain name registered by Respondent is confusingly similar to Complainant’s AMAZON marks because the domain name merely subsitututes the letter “n” with the letter “b.” The misspelling of Complainant’s mark will take advantage of a common typographical error made by Internet users on keyboards where the two letters are adjacent.  The substitution of the letter “n” with the letter “b” does not negate the confusing similarity of Respondent’s domain name.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Rights or Legitimate Interests

The Panel finds that the Respondent is not commonly known by the <amazob.com> domain name and that he is not a licensed user of the AMAZON marks.  Therefore, the Panel  finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds and agrees with Complainant’s contention that the <amazob.com> domain name will divert Internet users to a website that features a generic search engine and hyperlinks for various topics, as well as a banner for Complainant’s website.  Respondent’s use of a domain name confusingly similar to Complainant’s AMAZON trademark will divert Internet users to a website featuring advertisments and a generic search engine which is not a use in connection with a bona fide offering of goods or services. Policy ¶ 4(c)(i).  Nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

The Panel notes that Complainant has established a prima facie case in support of its allegations.  Respondent has defaulted and failed to answer.  Complainant has therefore produced sufficient evidence to lead to the inference that Respondent does not have a legitimate interest.  The Panel therefore so concludes in the absence of any information to the contrary from the Respondent.

Registration and Use in Bad Faith

The Panel finds that Respondent is using the <amazob.com> domain name to redirect Internet users seeking Complainant’s products and services to Respondent’s commercial website.  The Panel further finds that Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

The Panel notes and so finds from the evidence that Respondent had actual or constructive knowledge of Complainant’s marks because Respondent is also displaying a banner advertisement for Complainant’s website on the website at the <amazob.com> domain name.  The Panel is therefore convinced that the Respondent’s registration of a domain name confusingly similar to Compalinant’s AMAZON marks, despite knowledge of Complainant’s rights in its marks, is evidence of bad faith registration and use.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

DECISION

The Panel therefore finds that all requirements of ¶4(a) of the Policy and each element thereof has been proved to its satisfaction to wit:

1. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect to the domain name; and

3. the domain name has been registered and is being used in bad faith.

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

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

ROBERT T. PFEUFFER, Senior District Judge, Chair

ANNE M. WALLACE, Q.C., Panelist

EDWARD C. CHIASSON, Q.C., Panelist

Dated: September 21, 2004

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