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Generic Top Level Domain Name (gTLD) Decisions |
Amazon.com, Inc. v. Gaga Gift. Co., Ltd
Claim
Number: FA0401000234370
Complainant is Amazon.com, Inc., Seattle, WA
(“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 Gaga Gift. Co., Ltd,
#314-12 Yang ai-Dong, Sucho-Gu, Seoul 137-896, Korea (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amazonegift.com>, registered with Network
Solutions, Inc.
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Honorable
Paul A. Dorf, Honorable Tyrus R. Atkinson, Jr., and Honorable Richard B.
Wickersham, Chairman, as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on January 29, 2004; the
Forum received a hard copy of the
Complaint on February 2, 2004.
On
February 4, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <amazonegift.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has
verified that Respondent is bound by the Network Solutions,
Inc. 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
February 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of February 25, 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@amazonegift.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
March 12, 2004, pursuant to Complainant's request to have the dispute decided
by a three-member Panel, the Forum appointed Honorable
Paul A. Dorf, Honorable
Tyrus R. Atkinson, Jr., and Honorable Richard B. Wickersham, as Panelists.
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following
assertions:
1.
Respondent’s <amazonegift.com> domain name is confusingly
similar to Complainant’s
AMAZON.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <amazonegift.com> domain name.
3. Respondent registered and used the <amazonegift.com>
domain name in bad faith.
4.
Complainant
Information
[a.] Name: Amazon.com, Inc.
[b.] 1200 12th Avenue South,
Suite 1200
Seattle, WA 98144-2734
5. Disputed Domain Name
[a.] The
following domain name is the subject of this Complaint
[ICANN Rule 3(b)(vi)]:
AMAZONEGIFT.COM
6. Factual And Legal Grounds
Respondent registered the disputed domain
name less than a year ago, on June 25, 2003.
On Information and belief, Respondent had no prior use of “AmazonEgift”
and has both actual and constructive notice of the fame of
Complainant,
Amazon.com’s famous name and AMAZON marks.
On information and belief, Respondent chose with all deliberate intent
to register a domain name confusingly similar to Complainant’s
name and marks
by registering the confusingly similar <AmazonEgift.com>
domain. Amazon.com therefore brings
this Complaint based on the following factual and legal grounds. [ICANN Rule 3(b)(ix); NAF Supp. Rule 4(a)].
7.
Complainant has not licensed the right to use <AmazonEgift.com>
to Respondent. Further, Respondent
registered the disputed domain less than a year ago, on June 25, 2003. Thus, Respondent registered the disputed
domain name long after Complainant’s marks had become famous across much of the
world for
consumer goods, such as those offered on the website to which the
disputed domain name resolves. “Where a
Complainant’s trademark is well known – as it is in this case – registration of
a confusingly similar domain name without
a good faith business justification
cannot be legitimate.” See Las Vegas Sands, Inc. v. Sands of the Caribbean,
D2001-1157 (WIPO Apr. 25, 2001).
8. The Disputed Domain Name Was Registered
and Is Being Used in
Bad Faith
Given the late creation date of the <AmazonEgift.com>
domain name, there can be no question that Respondent’s attempt to ride the
coat tails of Complainant’s famous name and marks is
taken in bad faith, in
violation of both the Policy and U.S. state and federal law. [ICANN Rule 3(b)(ix)(3); ICANN Policy
¶4(a)(iii)].
9.
Remedy
Sought
The Complainant requests that the Panel
issue a decision that the domain name registration be transferred to
Complainant. [ICANN Rule
3(b)(x); ICANN Policy ¶4(i)].
10.
Other
Legal Proceedings
To Complainant’s knowledge, no other
legal proceedings have been commenced or terminated in connection with or
relating to the domain
name that is the subject of this complaint. [ICANN Rule 3(b)(xi)].
B. Respondent failed to submit a Response in
this proceeding.
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.
Complainant
alleges rights in the AMAZON.COM mark through multiple registrations with the
United States Patent and Trademark Office,
including registration numbers
2078496 (July 15, 1997), 2167345 (June 23, 1998), 2696140 (Mar. 11, 2003),
2684128 (Feb. 4, 2003),
2559936 (Apr. 9, 2002), and 2633281 (Oct. 8, 2002).
Complainant
states that its AMAZON.COM mark was initially used to sell mainly books but is
now used in connection with “a full line
of goods ranging from computer
products and electronics to toys, apparel, household goods, office products and
services such as movie
listings.”
The Panel may
find that Respondent lacks rights to and legitimate interests in the disputed
domain name because Respondent has implicitly
admitted that it lacks such
rights and interests by failing to contest Complainant’s assertions to this
point. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 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”).
The Panel may
find that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) because
the disputed domain name’s attached
website offers goods in competition with Complainant’s business; thus, by
appropriating the entire
mark of a famous competitor, Respondent likely
registered the name primarily to disrupt the business of a competitor, namely
Complainant. See EBAY, Inc. v. MEOdesigns &
MattOettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered
and used the domain name <eebay.com> in bad faith where Respondent
has
used the domain name to promote competing auction sites); see also, Surface Protection Indus., Inc. v. Webposters, D2000-1613
(WIPO Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent likely
registered the contested domain
name with the intent to disrupt Complainant’s business).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <amazonegift.com> domain name be TRANSFERRED
from Respondent to Complainant.
_____________________________________
Honorable Richard B. Wickersham, (Ret.
Judge), Chairman for the Panel, Honorable Paul A. Dorf, and Honorable Tyrus R.
Atkinson, Jr
Dated: March 25, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/271.html