Amazon.com, Inc. v. Ed Shafir
Claim
Number: FA0309000196119
Complainant is Amazon.com, Inc., Seattle, WA
(“Complainant”) represented by Kevin
Hayes, of Klarquist Sparkman, LLP., One World
Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204.
Respondent is Ed Shafir, 2070
East 18th Street, Brooklyn, NY 11229 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amazonfurniture.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelists in this proceeding.
Honorable
Paul A. Dorf (Ret.), Chair, Honorable Irving H. Perluss (Ret.), and Honorable
Richard B. Wickersham (Ret.) as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 15, 2003; the Forum received a hard copy of the
Complaint on September 17, 2003.
On
September 22, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <amazonfurniture.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
September 23, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 13, 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@amazonfurniture.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
October 22, 2003, pursuant to Complainant's request to have the dispute decided
by a three-member Panel, the Forum appointed
Honorable Paul A. Dorf (Ret.), Honorable Irving H. Perluss (Ret.), and
Honorable Richard B. Wickersham (Ret.) 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 <amazonfurniture.com>
domain name is confusingly similar to Complainant’s AMAZON mark.
2. Respondent does not have any rights or
legitimate interests in the <amazonfurniture.com> domain name.
3. Respondent registered and used the <amazonfurniture.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is
Fortune 500 company engaged in the business of
on-line retailing offering general merchandise and general consumer
goods, an on-line commercial information directory, on-line advertising guide
featuring the goods and services of other on-line vendors, among other
services. Complainant incorporated its
business in 1994 in the State of Washington and began operating its website in
July, 1995. Complainant then
reincorporated in 1996 in the State of Delaware. Complainant operates several global websites to offer their goods
and services.
Complainant owns
a number of trademark registrations for the AMAZON.COM mark in the United
States and internationally. Complainant registered its first trademark with the
U.S. Patent and Trademark Office (“USPTO”) for the AMAZON.COM mark (Reg. No.
2,078,496) on July 15, 1997 related to computerized on-line ordering services,
featuring the wholesale and retail distribution of books.
In April, 2000,
Complainant launched a new Lawn & Patio store, which featured patio
furniture. In May, 2000 Complainant
added the “Home Living” store, which feature furniture and other household
accessories.
The Respondent
appears to also be engaged in the on-line retail business, featuring furniture
and household accessories on its website.
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 domain name at issue through registration of its
mark 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”).
The domain name at issue confusingly similar to
Complainant’s famous mark. The dominant feature of the disputed domain name is
Complainant’s famous AMAZON mark, and the addition of the word “furniture,”
which describes a product supplied by Complainant under its mark, does not
dispell any confusing similarity between the domain name and the mark. See Nikon,
Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that
confusing similarity under the Policy is decided upon the inclusion of a
trademark in the domain name rather than upon the likelihood of confusion test
under U.S. trademark law).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
A review of the evidence presented
reveals that Respondent is operating an online furniture shop under the name
“Amazon Furniture”. This places
Respondent in direct competition with Complainant, who also sells furniture
under its famous mark, and misappropriates the goodwill Complainant has built
up around the mark. Respondent’s activities at the disputed domain name are
neither a bona fide offering of goods or services as contemplated by Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See 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 Avery
Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
Further, Respondent, despite claiming to
be known as “Amazon Furniture” when registering the domain name at issue used
“Ed Shafir” in its WHOIS contact information. No evidence has been presented
indicating that the Respondent had been licensed or authorized to use
Complainant’s famous mark. As the
Respondent has not been licensed or authorized to operate under that mark, the
Panel concludes that Respondent is not “commonly known by” the disputed domain
name for the purposes of Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S
SECRET mark because of Complainant’s well-established use of the mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been established.
Given the fame
and goodwill surrounding Complainant’s famous mark, coupled with Complainant’s
registration of the mark on the Principal Register of the U.S. Patent and
Trademark Office, Respondent’s registration of the disputed domain name was
done in bad faith. As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names
are so obviously connected with the Complainants that the use or registration
by anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <amazonfurniture.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Chair
Honorable Richard B. Wickersham (Ret.),
Panelist
Honorable Irving H. Perluss (Ret.),
Panelist
Dated:
November 10, 2003
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