Amazon.com, Inc. v. ECC
Claim Number: FA0605000699632
PARTIES
Complainant is Amazon.com, Inc. (“Complainant”), represented by Jonathan M. Ward, of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204, USA. Respondent is ECC (“Respondent”), 1 Mapp St., Belize City, Belize.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xxxamazon.com>
and <3xamazon.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
PANEL
Each of 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 of interests in
serving as a Panelist in this proceeding.
Sandra Jo Franklin, Esq., Honorable Irving H. Perluss (Ret.) and Terry
F. Peppard, Esq., chair, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 2, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 4, 2006.
On May 3, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <xxxamazon.com> and <3xamazon.com> domain names are registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current
registrant of the name. Intercosmos
Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by
the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 May 8, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 30, 2006 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@xxxamazon.com and postmaster@3xamazon.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Sandra Jo Franklin, Esq., Honorable Irving
H. Perluss (Ret.) and Terry F. Peppard, Esq., chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is one of the world’s best known Internet retailers and the
world’s largest on-line bookseller.
Complainant is the owner of the trademark AMAZON.COM, which has been
registered, beginning in October of 1995 (filing) and July of 1997 (issuance),
in more than forty countries worldwide, including Belize, Respondent’s putative
place of residence.
Complainant has spent over $240 million on advertising using its mark
since 1996, and the mark has, as a result, become famous worldwide.
The disputed domain names were first registered by Respondent’s
predecessor in interest in 1999, long after Complainant’s mark had become
famous for its association with Complainant’s business.
Respondent, the current registrant, came into possession of both domain
names in 2001.
Both of the disputed domain names are confusingly similar to
Complainant’s mark.
Respondent has never been commonly known by either of the contested
domain names.
Respondent is not associated with any legitimate use of Complainant’s
mark.
The subject domain names resolve to offensive pornographic web sites.
Respondent is using Complainant’s mark in the manner described in order
to benefit from Complainant’s commercial fame and good will.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
(1)
the domain
names registered by Respondent are confusingly similar to a trademark in which
Complainant has rights;
(2)
Respondent has
no rights or legitimate interests in respect of the domain names; and
(3)
the domain
names were registered, and are being used by Respondent, in bad faith.
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:
i. the domain name registered by the
Respondent is identical or confusingly similar to a
trademark or service mark in which the
Complainant has rights;
ii. the Respondent has no rights or legitimate
interests in respect of the domain name;
and
iii. the
domain name has been registered and is being used in bad faith.
Preliminary
Consideration: The Effect of
Respondent’s Default
In view of Respondent's failure to submit a response to the Complaint herein, the Panel may 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 may draw such inferences as 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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.”
Complainant has rights in the AMAZON.COM mark through its trademark registrations with the pertinent national authorities. See 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.” Moreover, Complainant’s rights in the mark date from the filing of its first trademark application in October of 1995. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effectiveness of Complainant’s trademark rights date back to the application’s filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003): “As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”
Complainant’s rights in its mark thus having been established, we next examine the question of identity-confusing similarity as between Complainant’s mark and Respondent’s domain names. In this regard, it is undisputed that Respondent’s domain names are confusingly similar to the competing mark as alleged in the Complaint. Indeed both domain names incorporate the mark in its entirety, and merely add the characters “xxx” in one instance and “3x” in the other. These additions are insufficient to distinguish the domain names from the mark within the meaning of Policy ¶ 4(a)(i). See, for example, L.F.P., Inc. v. Yarbrough, FA 114420 (NAF Jul. 9, 2002):
The
subject domain name differs from the complainant’s mark only by the addition of
“xxx.” This is not a distinguishing
addition.
To the same effect, see Victoria’s Secret, at al. v. Tri X Group, Ltd., FA 96540 (NAF Mar. 9, 2001):
The
domain name <victoriasxxxsecrets.com> is confusingly similar to
Complainant’s mark because the only difference is the insertion of the letters
“xxx” within Complainants’ mark.
The same can be said of the addition to
the mark here under consideration, in the case of the second domain name, of
the characters “3x,” which are no more than a variant form of “xxx.”
The Panel therefore finds that the
requirements of Policy ¶ 4(a)(i) have been satisfied by the evidence of record.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case in support of such allegations, the burden shifts to Respondent to show that it has protectable rights or interests in the domain names in question. Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does infer that Respondent has no rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests exist); further see Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain name.
In this connection, we also note that Complainant alleges, and
Respondent does not deny, that Respondent has not been commonly known by the
disputed domain names. See, for example, Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have
rights in a domain name where the respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003): “Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied by Complainant’s proofs.
Our discussion under this heading may begin with the observation that linking to a blatantly pornographic web site a domain name which is confusingly similar to a famous registered mark is sufficient evidence of bad faith for purposes of Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO Jun. 27, 2000); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (NAF Mar. 18, 2003).
In addition, however, it appears
that Respondent registered the contested domain names with either actual or
constructive knowledge of Complainant’s rights in the mark AMAZON.COM by virtue of Complainant’s
prior registration of that mark with the pertinent national authorities worldwide. Registration and use of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <xxxamazon.com>
and < 3xamazon.com> domain names be TRANSFERRED forthwith from Respondent to
Complainant.
Terry F. Peppard, Panel Chair
Dated: June 19, 2006
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