Amazon.com, Inc. v. Dynamic
Ventures c/o Yitzchak (Itzak) Ehrlich
Claim Number: FA0711001112201
PARTIES
Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin
M. Hayes, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazondeveloper.org>, registered
with GoDaddy.com,
Inc.
PANEL
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.
Hon. Paul A. Dorf, (Ret.), David E. Sorkin,
and Joel M. Grossman, Chair, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 20, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 21, 2007.
On November 21, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <amazondeveloper.org> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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 28, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 18, 2007 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@amazondeveloper.org by
e-mail.
On December 17, 2007, Respondent requested, with Complainant’s consent,
an extension of time by which to file a Response to the Complaint. The National Arbitration Forum subsequently
granted Respondent’s request, extending the date by which a timely Response
could be filed to January 7, 2008.
A timely Response was received and determined to be complete on January 7, 2008.
An Additional Submission from Complainant was timely received on
January 14, 2008, and an Additional Response from Respondent was received on
January 20, 2008.
On January 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Paul A. Dorf, (Ret.), David E. Sorkin, and
Joel M. Grossman, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends first that Respondent’s domain name is identical
to or confusingly similar to Complainant’s well-established mark. Complainant points to the length and strength
of its mark, as well as its worldwide trademark registrations. Complainant asserts that the domain name fully
incorporates its mark, and that the domain name is confusingly similar to the
mark because Internet users will be confused as to whether Respondent is
sponsored by or associated with Complainant. Second, Complainant asserts that Respondent
has no rights or legitimate interests in the domain name. Complainant asserts that Respondent is not known
by the domain name, but instead is known by the name Dynamic Ventures. Additionally, Complainant asserts that
Respondent is not using the name in connection with a bona fide offering of goods or services, because it is trading on
the fame of Complainant’s mark. Complainant
also contends that Respondent is not using the name for legitimate
noncommercial purposes. Finally,
Complainant contends that the name was registered and is being used in bad
faith. Complainant points out that the
name was registered with full knowledge of the mark, and that the name was
registered, and is being used, in order to attract Internet users, for
commercial gain, through creating a likelihood of confusion as to the source or
affiliation with Complainant. In short,
Internet users would be confused as to whether a website known as <amazondeveloper.org> might be a
site owned or endorsed by Amazon.com.
B. Respondent
Respondent does not dispute the fame of Complainant’s mark, but does
contend that there is no likelihood of confusion. Respondent asserts that it is engaged in a bona fide offering of goods and
services, and therefore has legitimate rights and interests in the name. Respondent finally contends that it did not
register, and is not using the name, in bad faith. Respondent contends that the only way it could
be found to have acted in bad faith under the Policy would be if it
intentionally attempted to attract Internet users, for commercial gain, to its
website by creating a likelihood of confusion as to an affiliation with
Amazon.com. No likelihood of confusion,
no bad faith. Respondent contends that
there is no likelihood of confusion because its website is so different from
Complainant’s website. The websites have
different color schemes, fonts and layouts. There are no products for sale on Respondent’s
website, and no indication that it is related to Amazon.com. Because there could be no confusion,
Respondent contends that there can be no finding of bad faith registration or
use.
C. Additional Submissions
In the parties’ Additional Submissions each reiterates what had been
contended in the initial filings, and need not be discussed further.
FINDINGS
The Panel unanimously finds that:
1)
the
domain name is identical to, or confusingly similar to, Complainant’s
established mark;
2)
Respondent
has no rights or legitimate interests in the name; and
3)
Respondent
registered and is using the name 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:
(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.
Complainant’s very famous mark and its worldwide
trademark registrations easily establish its rights in the mark. Respondent’s domain name is confusingly
similar to the Complainant’s mark for two reasons. First, it wholly appropriates the mark, adding
only the generic term “developer.” Many panels
have determined that there is confusing similarity when a generic term is added
to a famous mark. See DIRECTV, Inc. v. Satellite Use LLC (Nat.
Arb. Forum Dec. 10, 2007) (adding the generic word “order” to the
Directv mark held to be confusing similarity). See also
Dow Jones & Co., Inc. v. Dow Jones Update, D2000-0495 (WIPO Aug. 14, 2000) (adding the term “online” to the
Dow Jones mark held confusingly similar). In this case, the generic term actually adds
to the confusion, since Internet users might assume that an “Amazon developer,”
like a Maytag repairman, is someone authorized by a famous company to provide
services in connection with its products.
Just as the domain name <orderdirectv.com>, supra, was held to be confusing, because users might think that was
the place to order satellite television from Directv, so too here users might
think that the Respondent’s website was the place to engage an
Amazon-authorized developer to develop software compatible with Amazon. For these reasons the Panel determines that
the domain name is identical to or confusingly similar to a mark in which the
Complainant has rights.
The Panel notes that once a complainant makes
a prima facie case in support of its
contentions, the burden shifts to the respondent to show that it does have
rights or legitimate interests in the name. See Do
the Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000). Respondent cannot
meet this burden. Respondent is not
known by the domain name, it is known by the name Dynamic Ventures. Respondent is not using the name in connection
with a bona fide offering of goods
and services, because it is trading on Complainant’s famous mark. See
Madonna Ciccone v. Dan Parisi, D2000-0847 (WIPO Oct. 16, 2000) (“…use which
intentionally trades on the fame of another cannot constitute a ‘bona fide’
offering of goods or services….To conclude otherwise would mean that a
Respondent could rely on intentional infringement to demonstrate a legitimate
interest, an interpretation which is obviously contrary to the intent of the
Policy.”). See also Las Vegas Sands, Inc. v. Sands of the Caribbean, D2001-1157 (WIPO Apr. 25, 2001) (“Where
a Complainant’s trademark is well-known – as it is in this case – registration
of a confusingly similar domain name without a good faith business
justification cannot be legitimate.”) Moreover, while Respondent might be asserting
a nominative fair use argument based on its need to inform users that it is
developing software for Amazon.com, it is clear from Respondent’s website that
it is providing general software development, and does not limit its business
to developing software solely in connection with Complainant. See
Porsche AG v. Limex LLC, D2003-0649
(WIPO Nov. 27, 2003) (rejecting respondent’s nominative fair use claim, largely
on the basis that its use of the domain name was not limited to products
properly described by the corresponding trademark). Finally, Respondent does not contend, nor
could it, that the name is being used for a non-commercial purpose. For all of the above reasons, the Panel
concludes that Respondent has no rights or legitimate interests in the name.
Respondent does not dispute that it was aware
of the Complainant’s mark at the time of registration. Indeed, Respondent’s principal was in
Complainant’s Associates program prior to registering the name. Respondent freely admits that the purpose of
registering and using the name is to offer development services to businesses
wishing to do business with Complainant. Respondent recognizes, as it must, that under
the Policy bad faith registration and use includes “intentionally attempting to
attract, for commercial gain, Internet users to its web site …by creating a
likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of its web site.” (Policy ¶ 4(b)(iv)). The Panel determines that this is precisely
what Respondent has done. Respondent,
very well aware of the Complainant’s mark, has intentionally attempted to
attract users to its site by creating confusion over whether it is sponsored
by, or affiliated with Complainant. See AOL LLC v. iTech Ent,
LLC FA 123933 (Nat. Arb. Forum July 21, 2006). Respondent’s sole defense is that there is no
likelihood of confusion because the color scheme, font and layout of its
website is completely different from Amazon.com. This misses the point, which is whether
Internet users, perhaps with the aide of search engines, have come upon Respondent’s
domain name and might believe that Respondent is affiliated with Complainant in
some manner. The Panel, which has
already determined that there is confusing similarity in this case, rejects
Respondent’s contention that there is none. Because Respondent is using the
domain name to attract Internet users to its website by creating a likelihood
of confusion as to its affiliation with Complainant, the Panel determines that
the name was registered in, and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazondeveloper.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Paul A. Dorf (Ret.), David E. Sorkin,
and Joel M. Grossman, Chair, Panelists
Dated: January 25, 2008
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