DECISION

Amazon.com, Inc. v. Hermann Huber

Claim Number: FA0404000253014

PARTIES

Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin M. Hayes of Klarquist Sparkman, LLP, One World Trade Center, Suite 600, 121 S.W. Salmon Street, Portland, OR 97204.  Respondent is Hermann Huber (“Respondent”). 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amayon.com>, registered with Ascio Technologies, Inc.

PANEL

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.

John J. Upchurch, Paul M. DeCicco and Edward C. Chiasson as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 12, 2004; the Forum received a hard copy of the Complaint on May 17, 2004.  The Complaint was submitted in both German and English.

On May 17, 2004, Ascio Technologies, Inc. confirmed by e-mail to the Forum that the domain name <amayon.com> is registered with Ascio Technologies, Inc. and that Respondent is the current registrant of the name.  Ascio Technologies, Inc. has verified that Respondent is bound by the Ascio Technologies, 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 May 25, 2004, a German language Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 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@amayon.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 June 29, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed John J. Upchurch, Paul M. DeCicco and Edward C. Chiasson 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. 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

   1.  The disputed domain name <amayon.com> is identical or confusingly similar to    

        Complainant’s AMAZON and AMAZON.COM marks.

(a) The fame, consumer recognition, and Complainant’s ownership of its name and its AMAZON marks, including AMAZON.COM® and AMAZON, are beyond dispute.

(b) Amazon.com’s innovative and broadly successful use of the Internet as a medium of commerce has made it one of the world’s best-known Internet retailers.

(c) Complainant’s AMAZON marks are inherently distinctive.

(d) Amazon.com’s rights in AMAZON.COM® also are evidenced by trademark registrations in over 40 nations, as well as the European Union.

(e) The disputed <amayon.com> domain name is confusingly similar to Complainant’s registrations, marks, and trade name.

   2.  Respondent lacks rights or legitimate interests in the disputed domain name.

(a)            Complainant has not licensed the right to use <amayon.com> (or any right) to Respondent.

(b) Respondent is not using the disputed domain name in connection with a

bona fide offering of goods or services.

                        (c)            Respondent has not been commonly known by <amayon.com>.

 

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

(a) The typo of Complainant’s name and mark registered by Respondent is

Complainant’s famous mark as a German/Austrian keyboard user would

type <amazon.com> on a standard keyboard.

(b) Respondent has requested more than his out-of-pocket expenses to transfer the domain name (specifically requesting $3,800 in May 2003).

            (c)            Respondent knew or should have known of Complainant’s world famous

name and marks when he registered the domain name in dispute, particularly given that Complainant owns a registration for its AMAZON.DE mark in Austria, where Respondent appears to be located.

B. Respondent

   1.  Respondent filed no Response

FINDINGS

Material facts that the Panel is taking as true and upon which the Panel bases its decision:

1. Complainant has established rights in the AMAZON and AMAZON.COM marks through numerous registrations with the United States Patent and Trademark Office.

2. Complainant’s rights also are evidenced by trademark registrations in over 40 nations, as well as the European Union, most notably its trademark registration in Austria, Respondent’s purported residence.

3. The disputed domain name is confusingly similar to Complainant’s AMAZON.COM mark because the domain name fully incorporates the mark and merely substitutes the letter “z” with “y”.  The substitution of these letters is highly likely because the letter “z” on the German/Austrian keyboard is in the same location as the letter “y” on the Qwerty keyboard.

4. Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark.

5. Respondent is not commonly known by the domain name.

6. Respondent has not used the domain name in connection with a bona fide offering of goods or services.

7. Respondent requested $3,800 to transfer the disputed domain name to Complainant in May of 2003.  This demand was far in excess of any of Respondent’s reasonable out-of-pocket expenses.

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; and

(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

Complainant has established rights in the AMAZON and AMAZON.COM marks through numerous registrations with the United States Patent and Trademark Office (Reg. No. 2,078,496 issued July 15, 1997, Reg. No. 2,167,345 issued June 23, 1998, Reg. No. 2,696,140 issued March 11, 2003, Reg. No. 2,684,128 issued February 4, 2003, Reg. No. 2,559,936 issued April 2, 2002 and Reg. No. 2,633,281 issued October 8, 2002).  Complainant’s rights also are evidenced by trademark registrations in over 40 nations, as well as the European Union, most notably its trademark registration in Austria, Respondent’s purported residence, for AMAZON.DE (Reg. No. 186,921 issued February 25, 2002).  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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction.).

 Complainant avers that the disputed domain name is confusingly similar to

Complainant’s AMAZON.COM mark because the domain name fully incorporates the mark and merely substitutes the letter“z” with “y.”  Complainant further asserts that the substitution of these letters is highly likely because the letter “z” on the German/Austrian keyboard is in the same location as the letter “y” on the Qwerty keyboard.  Complainant adds that this substitution of letters in Complainant’s AMAZON.COM mark might lead Internet users to believe that the domain name is sponsored by Complainant for the use of its German/Austrian customers.

Under these circumstances the Panel finds that the mere substitution of one letter to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  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 Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar).

Rights or Legitimate Interests

Complainant avers that Respondent is not authorized or licensed to register or use a domain name that incorporates Complainant’s mark.  Moreover, Complainant contends that Respondent is not commonly known by the domain name.  Upon the evidence presented, the Panel determines that Respondent is not commonly known by the domain name, and 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 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).

Finally, since Respondent has not used the domain name to resolve to an active website, Respondent has not used the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Registration and Use in Bad Faith

Complainant established that its marks are famous worldwide and registered in Respondent’s purported country of residence.  Registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse");  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).

Complainant contends that Respondent is using a domain name that is confusingly similar to Complainant’s mark to misdirect Internet users looking for Complainant’s well-known goods and services.  The Panel finds that Respondent is creating a likelihood of confusion for commercial gain 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)). 

Complainant demonstrated that Respondent has used Complainant’s misspelled mark to sell competing products.  The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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 and create user confusion); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant); 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)).

Additionally, Complainant states that Respondent requested $3,800 to transfer the disputed domain name to Complainant.  Such amount was said to be far in excess of Respondent’s out-of-pocket expenses.  Under the Policy, such conduct alone indicates a bad faith use of the at-issue domain name.

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 <amayon.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panel Chair

Paul M. DeCicco & Edward C. Chiasson, Panelists

Dated: July 20, 2004

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