Amazon.com, Inc. v. Hosting Provider
Service
Claim Number: FA0307000167927
Complainant is Amazon.com, Inc., Seattle, WA
(“Complainant”) represented by James E.
Geringer of Klarquist Sparkman LLP. Respondent is Hosting Provider Service, Tocumen,
Panama (“Respondent”).
The
domain name at issue is <amazonpills.com> registered with Go
Daddy Software, Inc.
The
undersigned certifies that he has acted
independently and impartially and to the best of his knowledge has no known
conflict in serving as Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 7, 2003; the Forum received a hard copy of the Complaint
on July 8, 2003.
On
July 8, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <amazonpills.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
July 10, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 30, 2003 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@amazonpills.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
August 6, 2003, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
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 <amazonpills.com>
domain name is confusingly similar to Complainant’s AMAZON.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <amazonpills.com> domain name.
3. Respondent registered and used the <amazonpills.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
a number of trademark registrations for the AMAZON.COM mark in the United
States and internationally. For example, Complainant holds a trademark
registration with the U.S. Patent and Trademark Office (“USPTO”) for the
AMAZON.COM mark (Reg. No. 2,078,496 registered on July 15, 1997) related to
computerized on-line ordering services, featuring the wholesale and retail
distribution of books. From its early focus on books and other media materials,
Complainant has expanded its operations to include a full line of goods ranging
from computer products and electronics to toys, apparel, household goods and
other consumer products. Complainant also sells a wide variety of health care
products in partnership with Drugstore.com.
Respondent
registered the <amazonpills.com> domain name on August 22, 2002.
Respondent is using the disputed domain name to divert Internet traffic to a
website at the <pharmapills.com> domain name, which sells pharmaceutical
products over the Internet.
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 has
established its rights in the AMAZON.COM mark through registration with the
USPTO. See 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 rebuttable presumption that the
mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also 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”).
Respondent’s <amazonpills.com>
domain name is confusingly similar to Complainant’s AMAZON.COM mark because the
disputed domain name appropriates Complainant’s entire mark and simply adds the
generic term “pills” to the mark. The addition of this generic term does not
sufficiently distinguish Respondent’s domain name from Complainant’s mark
because the mark remains the dominant element of the domain name. Therefore,
the Panel finds that the <amazonpills.com> domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See 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); see also AXA China
Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that
common geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent has
not answered the allegations of the Complaint. Therefore, the Panel accepts all
of Complainant’s reasonable allegations and inferences to be true. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response,
it is appropriate to accept as true all allegations of the Complaint”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that Complainant’s allegations are true unless clearly
contradicted by the evidence).
Furthermore,
based on Respondent’s failure to reply to the Complaint, the Panel presumes
that Respondent lacks any rights to or legitimate interests in the disputed
domain name in accordance with Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
Respondent is
using the <amazonpills.com> domain name to divert Internet users
to <pharmapills.com>, which sells pharmaceuticals over the Internet in
competition with Complainant. The use of a domain name confusingly similar to
Complainant’s mark to sell goods that compete with Complainant’s business does
not demonstrate a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374
(WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business”); see also
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Moreover,
Respondent has proffered no proof and there is no evidence in the record that
indicates Respondent is commonly known by AMAZON PILLS or <amazonpills.com>.
Thus, Respondent has failed to establish its rights to or legitimate interests
in the disputed domain name for purposes of Policy ¶ 4(c)(ii). See RMO, Inc.
v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy
¶ 4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s
registration and use of the <amazonpills.com> domain name, a
domain name confusingly similar to Complainant’s registered trademark, to
compete with Complainant’s business illustrates Respondent’s bad faith
registration and use of the disputed domain name. The Panel finds that
Respondent intentionally attempted to attract Internet users to Respondent’s
website for commercial gain by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
Respondent’s website, which evidences bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See
MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked
<drmath.com>, which contains Complainant’s Dr. Math mark, to a website
run by Respondent, creating confusion for Internet users regarding the
endorsement, sponsorship, of affiliation of the website); 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).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <amazonpills.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated:
August 20, 2003
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