DECISION

Amazon.com, Inc. v. RC Group

Claim Number: FA0405000270286

PARTIES

Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin M. Hayes of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, Portland, OR 97204.  Respondent is RC Group (“Respondent”), Av 18 Los Haticos # 122-110, Al Lado De La Iglesia La Asuncion S, Maracaibo 4004, Venezuela.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <amazonenespanol.com>, <amazonenespanol.net>, <amazonhispano.com>, <amazonhispano.net>, <amazonlatinoamerica.com> and <amazonlatinoamerica.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding. Hon. Tyrus R. Atkinson, Jr., M. Kelly Tillery, Esq., and Hon. Carolyn Marks Johnson sit as Panelists with Panelist Johnson writing for the Panel.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically May 7, 2004; the Forum received a hard copy of the Complaint May 10, 2004.

On May 11, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain names <amazonenespanol.com>, <amazonenespanol.net>, <amazonhispano.com>, <amazonhispano.net>, <amazonlatinoamerica.com> and <amazonlatinoamerica.net> are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the names.  Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 14, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 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@amazonenespanol.com, postmaster@amazonenespanol.net, postmaster@amazonhispano.com, postmaster@amazonhispano.net, postmaster@amazonlatinoamerica.com, and postmaster@amazonlatinoamerica.net 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 June 16, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Tyrus R. Atkinson, Jr., M. Kelly Tillery, Esq. and Hon. Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. The domain names registered by Respondent, <amazonenespanol.com>, <amazonenespanol.net>, <amazonhispano.com>, <amazonhispano.net>, <amazonlatinoamerica.com> and <amazonlatinoamerica.net> are identical to and/or confusingly similar to Complainant’s protected AMAZON mark.

2. Respondent has no rights to or legitimate interests in Complainant’s marks and the domain names containing Complainant’s protected marks.

3. Respondent acted in bad faith in registering and using Complainant’s protected marks in a domain name.

B. Respondent did not file a Response in this proceeding.

FINDINGS

Complainant Amazon.com, Inc., is an internationally known online provider of services and goods.  Complainant is the world’s largest online book retailer and its goods and services include a full line of products from books and software to other computer and electronic products, toys, apparel, and household goods and services such as movie listings.

Complainant owns legal rights in the United States, 40 foreign nations and the European Union in the AMAZON and AMAZON.COM marks, including the following registrations from the United States Patent and Trademark Office along with their general areas of commerce: 2,078,494 (computerized on-line ordering service for books); 2,078,496 (wholesale and retail distribution of books); 2,167,345 (search and order service for books, music, motion pictures, multimedia products and computer software among other things); 2,696,140 (computer services for resources); 2,684,128 (interactive chat rooms); 2,559,936 (retail stores); and 2,633,281 (on-line chat rooms and bulletin boards for messages among computer users about general merchandise).

Respondent’s home territory, Venezuela, is one of the nations in which Complainant holds registrations.  These registrations continue to be in good standing.

Customers numbering in the tens of millions from some 220 countries access Complainant’s Internet sites, resulting in revenue from sales of some $5.2 billion in 2003 and in excess of $3. billion for the two prior years.  Nearly one third of these earnings came from international commerce.

To extend its goodwill Amazon.com has spent some $240 million on advertising and development.

Respondent knowingly registered multiple versions of Complainant’s protected marks with generic terms for geographic locations and cultural designations in 2003.  Respondent then contacted Complainant to inform Complainant that Respondent had “take [sic] a text from your [Complainant’s] website.”  Respondent used counterfeit copies of the logo at the site and, according to Complainant, then tried to “force” Complainant into a partnership.  Complainant insists that Respondent has no rights to make use of Complainant’s marks.

Respondent made no appearance and filed no response in this case.

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 Complainant to 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) 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 to and/or Confusingly Similar

Complainant established with extrinsic proof in this proceeding that it 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).  This showing satisfies the requirements of  ICANN 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 presumption that may be rebutted that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant has alleged that the domain names registered by Respondent are confusingly similar to Complainant’s AMAZON and AMAZON.COM marks because the domain names incorporate Complainant’s marks, adding only the geographic and cultural terms “Latino America” or the descriptive or generic terms “en Espanol” or “Hispano.” 

Complainant further asserts that the use of these terms, along with Complainant’s AMAZON mark, might lead Internet users to believe that Complainant sponsored the domain names for use by its Spanish-speaking customers.  The Panel finds that the mere addition of a geographic, generic, or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"[T]he combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark); see also 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).

Furthermore, the Panel finds that the likelihood of confusion between the disputed domain names and Complainant’s marks is furthered by the fact that Respondent and Complainant both compete in the same general area of commerce, providing a variety of products for purchase using the Internet.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating: “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); 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). 

Even where the Respondent does not appear, Complainant does not automatically prevail.  The Panel looks to the circumstances to determine if the Complainant made the necessary showing.  Complainant concedes that some of the terms that Respondent attached to its marks in the domain names can be described as generic: “en Espanol,” “Hispano,” and “Latino America.”  Here, however, Respondent would not be able to avoid the fact that without any right to do so, it ordered the words in the domain name to begin with Complainant’s marks rather than the generic terms.  The ordering of the words in the domain name suggests that Respondent intended to capture for its own purposes users seeking “AMAZON” and “AMAZON.COM.  By adding generic language indicators to suggest to those seeking Complainant’s services that they may contact Complainant in their own language, Respondent suggests an association with Complainant that did not exist here. This is not a case in which the Respondent has attempted to use a similar mark, Respondent expropriated Complainant’s mark to its own purposes.  See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter"); but see also Prudential Ins. Co. of Am. v. QuickNet Communications, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to Complainant or the insurance and financial industry and was thus not confusingly similar to Complainant’s mark).

Complainant satisfied ICANN Policy ¶ 4(a)(i), requiring a showing of “confusing similarity.”

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the marks contained in their entirety in the disputed domain names.  Respondent made no showing of such rights or legitimate interests. 

Further, Complainant urges that Respondent cannot show that it is commonly known by the disputed domain names because AMAZON and AMAZON.COM and the Respondent, RC GROUP, are in no way similar.  Therefore, Complainant argues, Respondent would not be able to show rights to and legitimate interests in the domain names, pursuant to Policy ¶ 4(c)(ii), because Respondent is not commonly known by the Complainant’s marks.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding: Respondent has no 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).

Further, Complainant asserts that Respondent is not making a bona fide or legitimate use of the domain names because Respondent has made knowing use of Complainant’s marks without permission to redirect Internet users seeking Complainant to a website that offers goods similar to Complainant’s goods.  In fact, Respondent is using domain names that are confusingly similar to Complainant’s AMAZON and AMAZON.COM marks to redirect Internet users who seek Complainant’s products and services to Respondent’s commercial website that offers goods and services similar to those offered by Complainant.  This is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Once Complainant makes a prima facie case to support all of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has made no showing to counter Complainant’s allegations and proof in support.  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).

Despite the fact that Respondent’s domain names are offering a variety of items to the Spanish-speaking Internet community, Respondent’s offer in this case is not a bona fide offering of goods or services because Respondent is providing such services under Complainant’s protected marks.  Respondent may provide the services, but not in Complainant’s name.  See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); see also SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). 

Complainant satisfied ICANN Policy ¶ 4(a)(ii), requiring a showing of “no rights or legitimate interests.”

Registration and Use in Bad Faith

Complainant alleges that Respondent intentionally, knowingly, and wrongfully registered domain names that contain Complainant’s well-known marks for Respondent’s commercial gain.  Complainant further asserts that Respondent’s domain names divert the Internet user who seeks Complainant’s AMAZON or AMAZON.COM marks to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s marks.  Furthermore, Complainant claims that Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s AMAZON and AMAZON.COM marks and is displaying counterfeit Spanish versions of Complainant’s logo on Respondent’s websites.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(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 Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Complainant also contends that Respondent registered the disputed domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s websites in order to compete with Complainant.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii).

Further, the likelihood of confusion is great between the disputed domain names and Complainant’s mark. On this issue, Respondent could prevail only if it were able to show that it is a licensed representative of Complainant or that the activity at the site is a bona fide business activity that does not confuse Internet users as to the source of sponsorship of the services.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).   Here, Respondent has knowingly and opportunistically used the marks of an internationally known provider of goods and services over the Internet in a manner that seems knowingly calculated to cause confusion among those who access the Internet looking for AMAZON and AMAZON.COM without any contract, license or other legal permission to do so. This constitutes bad faith registration and use.

Complainant satisfied ICANN Policy ¶ 4(a)(iii), requiring a showing of “bad faith registration and use.”

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 <amazonenespanol.com>, <amazonenespanol.net>, <amazonhispano.com>, <amazonhispano.net>, <amazonlatinoamerica.com> and <amazonlatinoamerica.net> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson

Writing for the Panel

Hon. Tyrus R. Atkinson, Jr. and  M. Kelly Tillery, Panelists

Dated: June 30, 2004

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