Amazon.com, Inc. v. The Krablin Group
Claim Number: FA0511000593326
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 The Krablin Group (“Respondent”), 1017 N. Lakewind, Wichita, KS 67212.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <amazonautos.com> and <amazonjobs.com>, registered with Go Daddy Software, Inc.
The undersigned certifies 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.
The Honorable Judge Irving H. Perluss (Ret);
Dennis A. Foster; and
Clive L. Elliott (Chair).
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 14, 2005.
On November 9, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <amazonautos.com> and <amazonjobs.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 November 16, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2005 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@amazonautos.com and postmaster@amazonjobs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2005, the National Arbitration Forum appointed the Honorable Irving H. Perluss (Ret), Dennis A. Foster, and Clive L. Elliott (Chair) as the Panel.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amazonautos.com> and <amazonjobs.com> domain names are confusingly similar to Complainant’s AMAZON mark.
2. Respondent does not have any rights or legitimate interests in the <amazonautos.com> and <amazonjobs.com> domain names.
3. Respondent registered and used the <amazonautos.com> and <amazonjobs.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has established to the satisfaction of the Panel that:
a. Respondent’s <amazonautos.com> and <amazonjobs.com> domain names are confusingly similar to Complainant’s AMAZON mark.
b. Respondent does not have any rights or legitimate interests in the <amazonautos.com> and <amazonjobs.com> domain names.
c. Respondent registered and used the <amazonautos.com> and <amazonjobs.com> domain names in bad faith;
Accordingly that the disputed domain names should be transferred to Complainant as moved.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 states that Amazon.com is one of the world’s best known Internet retailers. Amazon.com sells books through its Amazon.com Internet website under its AMAZON trademarks and has become the world’s largest online bookseller. Amazon.com offers a wide range of goods. It also supplies services such as movie listings. It asserts that customers from over 220 countries have purchased goods through Amazon.com’s www.amazon.com website. As an illustration of this it states that in 2004 Amazon.com had sales of more than US $6.9 billion. The company has spent over US $240 million on advertising using its AMAZON trademarks since 1996. Complainant has obtained trademark registrations in over 40 nations and registered its AMAZON.COM® and other AMAZON-family marks in over forty other countries and political communities around the globe.
Complainant notes that its rights are further evidenced by a significant number of UDRP decisions against cybersquatters from around the world, including Amazon.com, Inc. v. Kiansu Thoi, FA 231669 (Nat. Arb. Forum Mar. 19, 2004) (transferring the <amzon.com> domain name from a registrant located in Vietnam); Amazon.com, Inc. v. Federov, FA 211935 (Nat. Arb. Forum Jan. 2, 2004) (transferring the <wwwamazon.com. domain name from a registrant located in Russia); Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (transferring the <zamazon.com> domain name from a registrant located in the United States), Amazon.com, Inc. v. Registrate Co., D2002-0985 (WIPO Dec. 16, 2002) (transferring the <amaon.com> domain name from a registrant located in Korea), and Amazon.com, Inc. v. Victor Korotkov, D2002-0516 (WIPO Aug. 13, 2002) (transferring the <ammazon.com> domain name from a registrant located in Russia).
It submits that this shows that that Complainant has strong rights in its AMAZON marks both in the United States and abroad. The Panel finds that the proffered trademark registrations establish Complainant’s rights pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant argues that Respondent has merely added the generic words “autos” and “jobs” to its famous and distinctive AMAZON.COM® mark, that this is improper and it is certainly insufficient to create a distinct and separate domain name. That is, on the basis that consumers are likely to mistakenly believe that the <amazonjobs.com> domain name is Complainant’s domain name for either job search services or for jobs with Complainant, and that the <amazonautos.com> domain name is Complainant’s domain name for automobile related products.
The Panel finds that the <amazonautos.com> and <amazonjobs.com> domain names are confusingly similar to Complainant’s AMAZON mark because they merely add the words “autos” and “jobs,” which do not significantly distinguish the domain names from the AMAZON mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
On this basis the ground is made out.
Complainant notes that the disputed domain names were created in November 2002, which was nearly seven years after Complainant’s application for its federal registration for AMAZON.COM® and two years after Complainant was recognized as the world’s largest bookstore by the Guinness Book of World Records.
Complainant asserts that Respondent is not using the disputed domain
names in connection with a bona fide offering of goods or services. Rather, it says that it is making no current
use of the domains, as they currently resolve to "parking" pages
created by the Registrar. The Panel finds that appropriating another’s
mark in domain names that are merely parked is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat.
Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is
blank but for links to other websites, is not a legitimate use of the domain
names); State Farm Mut. Auto. Ins. Co. v.
LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services.”).
It also asserts that Respondent previously caused <amazonautos.com> to redirect to
<unitedstatesautofinder.com> and <amazonjobs.com> to
redirect to <localcareers.com>. It
submits that this prior use was not legitimate. Further, it says that given the commercial websites to which
Respondent previously redirected the domains, Respondent cannot now argue that
he is making some legitimate noncommercial or fair use of the domain
names.
In summary of its position, Complainant submits, that Respondent is not
associated with any legitimate use of AMAZON (or a similar term) as a mark or
trade name. Instead it argues that this
is a garden-variety case of trademark infringement, in which Respondent is
using Complainant’s famous name and mark in their entirety to benefit from
Complainant’s fame and good will. There
is merit in the submission.
Further, the Panel finds that there is nothing in the record, including
the WHOIS registration information, which demonstrates that Respondent is
commonly known by the disputed domain names 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); Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
The ground is thus made out.
Given the 2002 creation date of the disputed domains (that, it is clear, incorporate Complainant’s AMAZON.COM® mark in its entirety), Complainant asserts that there can be no question that Respondent’s attempt to ride the coattails of Complainant’s famous name and marks is taken in bad faith and that Respondent knew or should have known of Complainant’s world famous name and marks when he registered the disputed domain names. The Panel finds that Complainant’s AMAZON mark is famous; it infers that Respondent had constructive notice of Complainant’s rights in the mark. Therefore, the Panel finds that Respondent’s registration of the confusingly similar domain names, where Respondent knew of Complainant’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
Complainant again
points to Respondent’s use of the domains to redirect Internet traffic to
commercial websites as alleged above.
On this basis it submits that Respondent has intentionally attempted to
attract, for commercial gain, Internet users to websites associated with the disputed
domain names. That is, by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of the products
and services of the websites to which Respondent caused the disputed domains to
redirect.
The Panel may find that Respondent is commercially benefiting from the links at the websites associated with the disputed domain names. The Panel may find that appropriating another’s mark in confusingly similar domain names for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 by receiving ‘click-through-fees.’”); 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).
Again, the ground is made out.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonautos.com> and <amazonjobs.com> domain names be TRANSFERRED from Respondent to Complainant.
Clive L. Elliott (Chair) Panelist.
Dated: December 29, 2005
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