Amazon.com, Inc. v. Object
Publishing Software, Inc. c/o Tim Hennings
Claim Number: FA0710001103565
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 Object Publishing Software, Inc. c/o Tim
Hennings (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-on-demand.com>, registered
with Godaddy.com,
Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and that to the best of their knowledge they have no known conflicts
in serving as Panelists in this proceeding. The Hon. Tyrus R. Atkinson, Jr., Ms. Anne M.
Wallace, Esq., and the Hon. Carolyn Marks Johnson sit as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically October 25, 2007; the National
Arbitration Forum received a hard copy of the Complaint October 26, 2007.
On October 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amazon-on-demand.com> domain name is
registered with Godaddy.com, Inc. and
that Respondent is the current registrant of the name. Godaddy.com,
Inc. verified that Respondent is bound by the Godaddy.com, Inc. 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 October 29, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 19, 2007, 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@amazon-on-demand.com by
e-mail.
The Forum received a Response November
20, 2007, which was deficient under ICANN Rule 5 as it was late and not
received in hard copy.
On November 26, 2007, Complainant submitted a timely Additional
Submission that was determined to be complete.
On November 27, 2007, Respondent submitted a timely Additional
Submission that was determined to be complete.
On November 28, 2007, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed the Hon. Tyrus R. Atkinson, Jr., Ms. Anne M.
Wallace, Esq., and the Hon. Carolyn Marks Johnson as Panelists.
Preliminary Issue:
Respondent filed a deficient
Response because the hard copy of the Response was not received by the Response
deadline and did not comply with ICANN Rule 5.
Within its discretion, the Panel reviewed the Response as shown below in
the Decision; but has determined that the Response does not change the outcome.
See
Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any
weight to be given to the lateness of the response is solely in the discretion
of the panelist); see also Bank of Am. Corp. v. NW Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(refusing to accept the Respondent’s deficient response that was only submitted
in electronic form because it would not have affected the outcome had the Panel
considered it). But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat.
Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal
deficiencies would be an extreme remedy not consistent with the basic
principles of due process. . ."); see
also J.W. Spear & Sons PLC
v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003)
(finding that where the respondent submitted a timely response electronically,
but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent registered a domain name that is
identical to or confusingly similar to a mark in which Complainant has
protected rights.
2. Respondent has no rights to or legitimate
interests in the mark or the disputed domain name.
3. Respondent registered and used the disputed
domain name in bad faith.
B.
Respondent
makes the following points in response:
1.
Respondent
seems to concede that the domain name was intended to contain what it knew was
Complainant’s protected mark.
2.
Respondent
seems to believe that it has rights and interests in using the mark within the
disputed domain name. Respondent does
not however set out that rights were granted to it by Amazon to use the mark
other than the fact that Amazon “opened up their product database to the whole
world.”
3.
Respondent
concedes that it knew of Amazon’s international reputation and provision of
sales and services.
4.
Respondent
stated intent to gain financially from the domain name by attracting “the
attention of other companies who might be interested in purchasing our
service.”
C.
Complainant
adds the following points in its Additional Submission.
1.
Complainant
notes that Respondent concedes Amazon’s rights to its mark.
2.
Complainant
notes that Respondent concedes he knew about Amazon’s international business.
3.
Complainant
notes that Respondent concedes he acted for his own personal financial gain.
FINDINGS:
Complainant established that it has rights in
the AMAZON mark by virtue of its registration with the United States Patent and
Trademark Office since 1997 and by virtue of first use in commerce in 1995.
Complainant holds numerous registrations of
the mark from countries throughout the world.
Complainant operates its business under the
AMAZON mark internationally.
Respondent knew of Complainant’s
international operations and its interest in its AMAZON mark and purposely
registered the disputed domain name to attract business from Complainant and
others.
Respondent registered the disputed domain
name in February 2005 for the express purpose of exploiting opportunistically
the goodwill associated with AMAZON for its own commercial gain.
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 relative to the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant asserts that it has
registered the AMAZON mark in numerous jurisdictions worldwide, including with
the United States Patent and Trademark Office (“USPTO”). The Panel finds that registration of the
AMAZON mark with the USPTO sufficiently establishes Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("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."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
Complainant contends that
Respondent’s <amazon-on-demand.com> domain name is confusingly similar to
Complainant’s AMAZON mark. The Panel
finds that addition of the generic top-level domain (“gTLD”) “.com,” and
inclusion of the generic terms “on demand,” separated by hyphens, do not
distinguish the disputed domain name.
Accordingly the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); 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 the
complainant combined with a generic word or term); see also Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark").
While
Respondent contends that the <amazon-on-demand.com> domain name is comprised of common, descriptive terms and implies that as such the
disputed domain name cannot be found to be confusingly similar to Complainant’s
mark, the Panel finds that such a determination is not necessary under Policy ¶
4(a)(i) as this portion of the Policy considers only whether Complainant has
rights in the mark and whether the disputed domain name is identical or
confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
Respondent does not explicitly address whether Complainant satisfied the
requirements of Policy ¶ 4(a)(i). However, Respondent contends that the disputed
domain name incorporates the name of Respondent’s business
“Catalogue-on-demand” and is a reflection of Respondent’s business and not an
infringement on Complainant’s mark. The Panel
is not persuaded that Respondent has shown rights in the use of Complainant’s
mark in a domain name that is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i).
Once Complainant makes a prima
facie case that Respondent lacks rights to and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), the
burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant urges that Respondent is not
commonly known by the disputed domain name and that nowhere in Respondent’s
WHOIS information is there any suggestion that Respondent is commonly known by
Complainant’s protected mark. Moreover,
Complainant asserts that given Complainant’s extensive use of its famous mark, it
is extremely unlikely that Respondent would be able to show that it is commonly
known by a disputed domain name that incorporates Complainant’s famous
mark. The Panel finds that Respondent
failed to establish rights to or legitimate interests in the <amazon-on-demand.com> domain name, which contains in its entirety
Complainant’s protected mark, pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee 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
In addition, Complainant asserts that Respondent
is not using the disputed domain name in connection with a bona fide
offering of goods or services or in a legitimate noncommercial or fair way
because Respondent’s disputed domain name contains Complainant’s mark and
diverts Internet users to a commercial website offering unauthorized services
related to Complainant’s business.
Complainant argues further that Respondent is attempting to offer services
by opportunistically trading off of Complainant’s goodwill in the AMAZON
mark. The Panel finds that Respondent is
not making a bona fide offering of goods or services at the disputed
domain name pursuant to Policy ¶ 4(c)(i) and is not
making a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Microsoft
Corp. v. OzGrid Bus. Applications, FA 314308 (Nat. Arb.
Forum Oct. 6, 2004) (“Respondent’s use of a domain name confusingly similar to
Complainant’s MICROSOFT mark to redirect Internet users interested in
Complainant’s services and products to a commercial website that offers unauthorized
MICROSOFT EXCEL training services and products as well as offers to sell
software, software templates, consulting services and publications is not a use
in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii).”); see also Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii).”).
Further, Complainant
has shown from its correspondence with Respondent that Respondent offered to
sell the disputed domain name to Complainant.
The Panel finds this offer to support further findings that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
See Am. Nat’l Red Cross v. Domains,
FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”); see also
Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name).
Respondent asserts a willingness to place a
disclaimer on the disputed website emphasizing that it is not associated with Complainant’s
AMAZON mark. The Panel finds this offer
to be of no effect because it does not negate an Internet user’s initial
impression that the disputed domain name is associated with Complainant’s
mark. See AltaVista Co. v. AltaVista, FA 95480
(Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does
not, and could not, accompany the domain name, then the “domain name attracts
the consumer’s initial interest and the consumer is misdirected long before
he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that
addition of a disclaimer, when the domain name consists of the complainant’s
well-known trademark, does not counter the expectation of Internet users that
the domain name is sponsored by the complainant).
Respondent contends
that it is using the disputed domain name to offer its online business
“Catalog-on-Demand,” an automated service to produce brochures and catalogs for
product-based companies, manufacturers, and distributors. Respondent argues that it is using the
disputed domain name to offer these services for Complainant’s products. The Panel finds that Respondent offered no
evidence to establish that Complainant gave permission for Respondent to use
its protected mark in this manner.
Respondent
also contends that the terms of the <amazon-on-demand.com> domain name are generic and of common use as their business is named
“Catalog-on-Demand.” The Panel is not
persuaded that Complainant’s protected AMAZON mark is generic.
The Panel
finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Additionally, Complainant urges
that Respondent registered the disputed domain name in an effort to
commercially benefit from its confusing similarity with the goodwill associated
with Complainant’s internationally known mark.
Respondent admits to having done so in an effort to sell its services to
Complainant and others. As a result, the
Panel finds that this attempt to commercially benefit from a disputed domain
name that creates a confusion with Complainant’s mark is further evidence to
support findings of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see
also Associated Newspapers Ltd. v. Domain
Manager, FA 201976 (Nat. Arb. Forum Nov.
19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name
provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name”).
Finally, Respondent has offered to place a clearer disclaimer on the website that resolves from the disputed domain name. The Panel finds that this offer is not sufficient to avoid a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(iii).
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 <amazon-on-demand.com> domain name be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson
Hon. Tyrus R. Atkinson, Jr. Ms. Anne M. Wallace, Esq.
Panelists
Dated: December 11, 2007.
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