Amazon.com, Inc. v. Seo Jeonggon
Claim Number: FA0407000306578
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 Seo Jeonggon (“Respondent”), 1475-3youngchunri, changsungeub,
changsunggun chnnam NA 515800, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <amazob.com>,
registered with Domain Monkeys Llc.
PANEL
The undersigned certifies that they have
acted independently and impartially and to the best of their knowledge has no
known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District
Judge, Chairman, Anne M. Wallace, Q.C. and Edward C. Chiasson, Q.C., as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 29, 2004; the Forum received a hard copy of the
Complaint on August 2, 2004.
On
July 30, 2004, Domain Monkeys Llc confirmed by e-mail to the Forum that the
domain name <amazob.com> is
registered with Domain Monkeys Llc and that the Respondent is the current
registrant of the name. Domain Monkeys
Llc has verified that Respondent is bound by the Domain Monkeys Llc 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
August 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 24,
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@amazob.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 31, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Robert T.
Pfeuffer, Senior District Judge, Anne M. Wallace, Q.C., and Edward C. Chiasson,
Q.C., 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 name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
From
a reading of the Complaint it appears that the main issues are under ICANN
Policy ¶4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate
interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.” The Complaint points out and is supported by
many exhibits that the Complainant has used the name AMAZON.COM and other
AMAZON marks, both registered and at common law, for providing goods and
services for many years. It states that
in the year 2003 AMAZON.COM recorded revenues under this name in excess of $2.5
billion U.S. dollars, $3.9 billion dollars in 2002 and $3.1 billion in
2001. Complainant has attached exhibits
indicating that Complainant has rights in AMAZON.COM as evidenced by trademark
registrations in over 40 countries as well as the European Union. Complainant points out that on numerous
occasions cybersquatters from all over the world have attempted to infringe on
the AMAZON-type domain name and trade off of Complainant’s fame and
goodwill. It sets out in its Complaint
numerous decisions by other panels in cases of this nature.
Complainant
contends that the disputed domain name is confusingly similar to Complainant’s
AMAZON marks because it is merely a typo of Complainant’s marks. It points out that the disputed domain name
simply substitutes a “b” for the “n” in Complainant’s AMAZON marks. It is further stated that the substitution
forms a domain name that looks and sounds highly similar to Complainant’s marks
and that it is extremely likely that Internet users will mistakenly arrive at a
website corresponding to Respondent’s domain name by mistyping Complainant’s
intuitive URL into a web browser.
Complainant states that, as a result, confusion to the consuming public
is highly likely.
Complainant states that Respondent has no rights or
legitimate interests in the disputed domain name. It points out that Complainant has not licensed Respondent to use
the <amazob.com> domain name and that Respondent is not using the
disputed domain name in connection with a bone fide offering of goods or
services. Complainant alleges that the
website to which the disputed domain name resolves is simply a generic search
page, but contains a banner for Complainant’s website. Complainant further states that Respondent
must have been aware of Complainant’s famous name and marks at the time he
registered the disputed domain name because it has included a banner on its
website referring to Complainant’s website.
Complainant alleges that Respondent has never been commonly known by the
name <amazob.com> citing the WHOIS records showing that Respondent is
known as “seo jeonggon,” rather than “amazob.com” and that because of the fame
of Complainant’s marks, Respondent should not be considered commonly known by
the disputed domain name. Further, most
consumers would associate a domain name that is confusingly similar to
Complainant’s tradename and marks with the Complainant AMAZON.com.
Complainant further states that the
disputed domain name was registered and is being used in bad faith. It alleges that Respondent has a long
history of cybersquatting and its typosquatting on Complainant’s famous marks
leave little question that Respondent’s attempt to ride the coattails of
Complainant’s famous name and marks is clearly in bad faith, in violation of
ICANN policies and U.S. federal law.
Complainant alleges that the registering of the disputed domain name is
a typo-ploy which has been recognized as demonstrating bad faith on numerous
prior occasions when similar issues have been decided by other panels. It also points out that Respondent appears
to be a recidivist cybersquatter and that several panels have transferred
domain names from Respondent in UDRP proceedings.
Respondent
has defaulted and failed to respond to Complainant’s allegations in all things.
No
additional submissions have been received by the panel from the Complainant.
FINDINGS
The
panel finds from a review of the evidence that the allegations contained in
Complainant’s pleadings are proved by a preponderance of the evidence
submitted. The panel therefore finds
that the domain name in dispute <amazob.com>
is confusingly similar to Complainant’s trademark and its AMAZON.com use at
common law, that Respondent has no rights or legitimate interests in the
disputed name and that Respondent’s registration of the disputed domain name <amazob.com> was in bad faith and
use.
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;
(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.
The
Panel finds that Complainant 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). The
Panel finds that Complainant has established rights in the mark under 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 rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The
Panel is convinced from the evidence that the <amazob.com> domain name registered by Respondent is
confusingly similar to Complainant’s AMAZON marks because the domain name
merely subsitututes the letter “n” with the letter “b.” The misspelling of
Complainant’s mark will take advantage of a common typographical error made by
Internet users on keyboards where the two letters are adjacent. The substitution of the letter “n” with the
letter “b” does not negate the confusing similarity of Respondent’s domain
name.
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 Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30,
2000) (finding the domain name <hewlitpackard.com> to be identical or
confusingly similar to Complainant’s HEWLETT-PACKARD mark).
The Panel finds that the Respondent is
not commonly known by the <amazob.com>
domain name and that he is not a licensed user of the AMAZON marks. Therefore, the Panel 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 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).
The Panel finds and agrees with
Complainant’s contention that the <amazob.com>
domain name will divert Internet users to a website that features a generic
search engine and hyperlinks for various topics, as well as a banner for
Complainant’s website. Respondent’s use
of a domain name confusingly similar to Complainant’s AMAZON trademark will
divert Internet users to a website featuring advertisments and a generic search
engine which is not a use in connection with a bona fide offering of goods or
services. Policy ¶ 4(c)(i). Nor is it a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA
145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary
use of Complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed
domain name, a simple misspelling of Complainant’s mark, to divert Internet
users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s
use of the disputed domain name to host a series of hyperlinks and a banner
advertisement was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name).
The Panel notes that Complainant has
established a prima facie case in
support of its allegations. Respondent
has defaulted and failed to answer.
Complainant has therefore produced sufficient evidence to lead to the
inference that Respondent does not have a legitimate interest. The Panel therefore so concludes in the
absence of any information to the contrary from the Respondent.
The
Panel finds that Respondent is using the <amazob.com>
domain name to redirect Internet users seeking Complainant’s products and
services to Respondent’s commercial website.
The Panel further finds that Respondent’s practice of diversion,
motivated by commercial gain, constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent); see
also Philip Morris Inc. v. r9.net,
D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an
infringing domain name to redirect Internet users to banner advertisements
constituted bad faith use of the domain name).
The
Panel notes and so finds from the evidence that Respondent had actual or
constructive knowledge of Complainant’s marks because Respondent is also
displaying a banner advertisement for Complainant’s website on the website at
the <amazob.com> domain
name. The Panel is therefore convinced
that the Respondent’s registration of a domain name confusingly similar to
Compalinant’s AMAZON marks, despite knowledge of Complainant’s rights in its
marks, is evidence of bad faith registration and use. 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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
DECISION
The Panel therefore finds that all requirements of ¶4(a) of
the Policy and each element thereof has been proved to its satisfaction to wit:
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.
the
Respondent has no rights or legitimate interests in respect to the domain name;
and
3.
the domain
name has been registered and is being used in bad faith.
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazob.com> domain name be TRANSFERRED from Respondent to
Complainant.
ROBERT T.
PFEUFFER, Senior District Judge, Chair
ANNE M. WALLACE,
Q.C., Panelist
EDWARD C.
CHIASSON, Q.C., Panelist
Dated: September 21, 2004
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