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Generic Top Level Domain Name (gTLD) Decisions |
Amazon.com, Inc. v Netsolutions proxy
services
Claim Number: FA0410000350255
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 Netsolutions
proxy services (“Respondent”), P.O. Box 9948, Tsuen Wan, Hong Kong, HK
00000 HK.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <amazonline.com>, registered with
Fabulous.com Pty Ltd.
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 Panelists in this proceeding.
R. Glen Ayers, Jr., the Hon. Irving
Perluss (Ret.), and the Hon. Richard DiSalle (Ret.) served as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on October 25, 2004; the National
Arbitration Forum
received a hard copy of the Complaint on October 27, 2004.
On October 28, 2004, Fabulous.com Pty
Ltd. confirmed by e-mail to the National Arbitration Forum that the domain name
<amazonline.com> is registered
with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the
name. Fabulous.com Pty Ltd. has
verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 October 29, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of November 18, 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@amazonline.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 December 6,
2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr., the
Hon. Irving Perluss (Ret.), and the Hon. Richard DiSalle (Ret.),
as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts that it holds registered marks, including AMAZON.COM and AMAZON. Complainant has attached a list of its
registered marks, including marks registered in multiple countries. These marks are registered in Hong
Kong. Respondent used a post office box
in Hong Kong as an address for registration of this domain name.
Complainant then asserts that the domain
name is either identical to or confusingly similar to its registered
marks. The domain name <amazonline.com>,
says Complainant, is a “domain name that looks and sounds like ‘amazon online’.
. .” Complainant asserts that, at first
glance, the registered domain name looks like the term “online” added to the
term “amazon” and
that this is confusingly similar.
Complainant goes on to assert that
Respondent has no rights or legitimate interest in the name. It asserts that Respondent is not commonly
known by this domain name and is not in any way “associated with any legitimate
use” of
the domain name. Complainant
asserts that Respondent has not licensed any of its marks.
As to
bad faith, Complainant asserts that bad faith can be shown because Respondent’s
knew or should have known about the AMAZON.COM
mark and the many registered
Amazon marks. Complaiant asserts that its marks have gained worldwide
prominence. Also, Complainant asserts
and provides some evidence that Respondent’s domain name resolves to a website
containing links to competitors
of Complainant.
B. Respondent
Respondent
did not submit a Response.
C. Additional
Submissions
There
were no additional submissions.
FINDINGS
Complainant has established rights in the
AMAZON family of marks through its registration of the marks with the U.S.
Patent and Trademark
Office (e.g., Reg. No. 2,078,496, issued July 15,
1997). Complainant also has
registration rights for the AMAZON mark in Hong Kong (Reg. No. 199,810,510,
issued March 3, 1997). Complainant
further contends that it has established common law rights in the marks through
their use in commerce and the marks’ worldwide
recognition. 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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established.
The <amazonline.com>
domain name is confusingly similar to Complainant’s AMAZON mark because it
fully incorporates the AMAZON mark and merely adds the
descriptive word
“line.” The addition of a descriptive
term to Complainant’s mark does not negate the confusing similarity between the
<amazonline.com> domain name
and the mark pursuant to Policy ¶ 4(a)(i).
See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930
(Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement”
did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business).
Respondent’s domain name, a
domain name so completely evocative of Complainant’s mark, certainly violates
the “confusing similar”
standard. This
use of a domain name that looks and sounds like the AMAZON mark used with the
Internet term “online” cannot pass muster.
Respondent is not commonly known by the <amazonline.com> domain name and
is not authorized or licensed to register or use a domain name that
incorporates Complainant’s mark, and therefore
Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See 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 interests where Respondent was not
commonly known by the mark
and never applied for a license or permission from
Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant;
(2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Furthermore, Respondent has failed to
rebut any of Complainant’s assertions.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name because Respondent intentionally incorporated
the
AMAZON mark in the domain name with the purpose of profiting from the mark’s
goodwill, by hosting a search engine website at
the disputed domain name. Respondent’s commercial use of the
misleading domain name is neither a bona fide offering of goods or services
pursuant to Policy
¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA
117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because Respondent is
using the infringing domain name to sell prescription
drugs it can be inferred
that Respondent is opportunistically using Complainant’s mark in order to
attract Internet users to its
website); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to
profit using Complainant’s mark by redirecting Internet
traffic to its own website).
Moreover, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights or legitimate interests pursuant
to Policy ¶
4(a)(ii). 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 Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with
respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
Here, Respondent has remained
silent.
Respondent’s commercial use of the
misleading domain name constitutes bad faith pursuant to Policy ¶
4(b)(iv). There is no clear evidence to
allow the Panel to find that Respondent was commercially benefiting from use of
the <amazonline.com> domain
name by receiving click-through fees for redirecting Internet users to
Complainant’s competitors. See Bank of Am. Corp. v. Out Island Props.,
Inc., FA 154531 (Nat. Arb. Forum June 3, 2003). There is clear evidence that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent
was
using the confusingly similar domain name to attract Internet users to its
commercial website. So, while there is
no evidence that fees were paid to Respondent, there is evidence of commercial
use.
And, the AMAZON marks are known
worldwide. They are “famous”
marks. Respondent registered the domain
name in bad faith pursuant to Policy ¶ 4(a)(iii) because it had either actual
or constructive knowledge
of Complainant’s rights in the AMAZON mark. Prior UDRP decisions support the conclusion
that Respondent’s registration and use of the domain name constitutes bad faith. See
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); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given
the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith); see also
Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status
that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
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 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;
(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.
The domain name <amazonline.com>
is confusingly similar to Complainant’s many AMAZON marks. This “play on words” certainly violates the
“confusingly similar” standard.
Respondent has no rights or legitimate
interests in the domain name.
Respondent certainly registered the
domain name in bad faith, for the domain name contains links to
competitors. And, give the relatively
recent registration of the <amazonline.com> domain name and the
very famous nature of Complainant’s marks, the act of registration is evidence
of bad faith, as set out above.
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 <amazonline.com>
domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Jr., Chair
with the Hon. Irving Perluss (Ret.)
and the Hon. Richard DiSalle (Ret.)
Dated:
December 20, 2004
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