Amazon.com, Inc. v. Vladimir Federov
Claim
Number: FA0311000211935
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, USA
97204. Respondent is Vladimir Federov
(“Respondent”), P.O. Box 257, Moscow, Russia 111546.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain names at issue are <wwwamazon.com> and <amozon.com>,
registered with Tucows, Inc.
The
undersigned certify 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.
Honorable
Paul A. Dorf, (Ret.), Chair, Hugues G. Richard and Honorable Tyrus R. Atkinson,
Jr. as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 13, 2003; the Forum received a hard copy of the
Complaint on November 17, 2003.
On
November 14, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain names <wwwamazon.com> and <amozon.com> are
registered with Tucows, Inc. and that Respondent is the current registrant of
the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 18, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 8, 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@wwwamazon.com and postmaster@amozon.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
December 18, 2003, pursuant to Complainant's request to have the dispute
decided by a three-member Administrative Panel, Honorable Paul A. Dorf, (Ret.),
Chair, Hugues G. Richard and Honorable Tyrus R. Atkinson, Jr. were appointed 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwamazon.com> and
<amozon.com> domain names are confusingly similar to Complainant’s
AMAZON and AMAZON.COM marks.
2. Respondent does not have any rights or
legitimate interests in the <wwwamazon.com> and <amozon.com>
domain names.
3. Respondent registered and used the <wwwamazon.com>
and <amozon.com> domain names in bad faiths.
B. Respondent failed to submit a Response in this
proceeding.
Complainant is a
Fortune 500 Company which opened for business in July 1995 as the “Earth’s
Biggest Bookstore.” Complainant now
operates six global websites, offering a variety of products and services to
consumers all over the world.
Complainant also operates programs which allow virtually any business or
individual the opportunity to sell just about anything to Complainant’s wide
customer base.
Complainant
incorporated in 1994 in the State of Washington and reincorporated in 1996 in
the State of Delaware. Its principal
corporate offices are located in Seattle, Washington. In May 1997, Complainant made its initial public offering, and
its common stock is listed on the NASDAQ National Market under the symbol
“AMZN.”
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.
Respondent has
not filed a Response to this Complaint;
therefore, it is unknown what type of commerce, if any, Respondent is
engaged in.
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 AMAZON.COM mark through registration 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 names at
issue are confusingly similar to Complainaint’s famous mark. The addition of the “www” prefix in the
<wwwamazon.com> does not make it a distinctive, stand-alone mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Marie Claire Album v. Geoffrey
Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark).
Also, the <amozon.com> domain name at issue is confusingly
similar to Complainant’s famous mark.
The substitution of the “o” for the second “a” in Complainant’s famous
mark makes the domain name at issue look and sound almost identical to
Complainant’s mark. Therefore confusion
among internet users would be likely. See Hewlett-Packard Co. v.
Cupcake City, FA 93562
(Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the
Policy); see also 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)
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The domain names at issue currently resolve back to Complainant’s
website. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6,
2003) (finding no rights or legitimate interests where Respondent merely
redirected the <wwwmedline.com> domain name to Complainant’s own website
at <medline.com>).
Further, the
domain names at issue were constructed from the addition of a prefix to
Complainant’s famous mark, and also misspelling of the mark. See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant).
No evidence has been presented indicating
that Respondent had been licensed or authorized to use Complainant’s famous
mark. As Respondent has not been
licensed or authorized to operate under that mark, the Panel concludes that
Respondent is not “commonly known by” the domain names at issue. 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
of Complainant’s famous mark, coupled with Respondent’s use of the domain names
at issue to redirect Internet users to Complainant’s website, it appears that
Respondent was aware of Complainant’s famous marks. See Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent
had actual and constructive knowledge of Complainant’s EXXON mark given the
worldwide prominence of the mark and thus Respondent registered the domain name
in bad faith); see also Ty Inc. v.
Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s
registration and use of an identical and/or confusingly similar domain name was
in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent
should have been aware of it).
In addition,
Respondent’s typosquatting is evidence that the domain names at issue were
registered and used in bad faith. See Canadian Tire Corp., Ltd. v. domain
adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(holding that “[t] absence of a dot between the “www” and “canadiantire.com”
[in the <wwwcanadiantire.com> domain name is] likely to confuse Internet
users, encourage them to access Respondent’s site” and evidenced bad faith
registration and use of the domain name); see also Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”).
Finally,
Respondent’s use of the domain names at issue to redirect Internet users to
Complainant’s website creates a false association between Respondent and
Complainant, placing Respondent in a position to allow Respondent in the future
to exploit the goodwill Complainant has built in connection with its famous
mark, to the detriment of Complainant. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Harrods Ltd. v. Harrod’s Closet D2001-1027
(WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with
well-known products, its very use by someone with no connection to these
products can evidence opportunistic bad faith).
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 <wwwamazon.com> and <amozon.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Chair
Hugues G. Richard, Panelist
Honorable Tyrus R. Atkinson, Jr.,
Panelist
Dated:
January 2, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page