Amazon.com, Inc. v. J J Domains
Claim
Number: FA0507000514939
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 J J Domains ("Respondent"), East
Bay, 44150 Wasau, Wisconsin.
The domain name at issue is <www-amazon.com>,
registered with Gandi.
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.
Mark McCormick,
Robert T. Pfeuffer, and Edward C. Chiasson as Panelists.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 14, 2005.
On
July 18, 2005, Gandi confirmed by e-mail to the National Arbitration Forum that
the domain name <www-amazon.com> is registered with Gandi and that
Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi
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 July
18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 8, 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@www-amazon.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 19, 2005, pursuant to Complainant's request to have the dispute decided
by a three-member Panel, the National Arbitration Forum appointed Mark
McCormick, Robert T. Pfeuffer and Edward C. Chiasson as Panelists.
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 name be transferred from Respondent to Complainant.
A. Complainant
makes the following assertions:
1.
Respondent's
<www-amazon.com> domain name is confusingly similar to
Complainant's AMAZON.COM mark.
2.
Respondent
does not have any rights or legitimate interests in the <www-amazon.com>
domain name.
3.
Respondent
registered and used the <www-amazon.com> domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
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 further
offers goods ranging from computer products and electronics to toys, apparel,
and household goods, and services such as movie listings.
Tens of millions of customers from over
220 countries have purchased goods through Amazon.com's <amazon.com>
website. In 2004, Amazon.com had sales
of more than US $6.9 billion. This was
in addition to sales of $5.2 billion in 2003 and $3.9 billion in 2002. Further,
Amazon.com has spent over US $240 million on advertising featuring its AMAZON
trademarks since 1996. This shows the
high degree of fame of the AMAZON.COM brand.
Amazon.com's rights in its AMAZON
trademarks also are evidenced by trademark registrations in over forty nations,
as well as the European Union.
In addition to these and other AMAZON
registrations in the United States, Complainant has registered its AMAZON.COM
and other AMAZON-family marks in over forty other countries and political
communities around the globe, including the European Union, Australia, Canada,
the People's Republic of China, Indonesia, Israel, Japan, Kenya, Malaysia,
Mexico, Panama, Peru, Saudi Arabia, Singapore, South Korea, Sweden,
Switzerland, Taiwan, and Turkey.
1.
Confusing
similarity. Respondent has merely added the
"www-" prefix to Complainant's famous mark. The domain name registered by Respondent is very similar to
Complainant's mark.
Adding to the confusion is the fact that
on the German keyboard the "-" is adjacent the "." as shown
in Exhibit I. This shows that not only
is the domain name registered by Respondent a common misspelling, but also a
common typo for German Internet users. Complainant's registration for its
AMAZON mark in Germany (though its subsidiary, Amazon.de GmbH), is noted in
Exhibit F.
2.
Respondent's
lack of rights or legitimate interests. Complainant has not
licensed or authorized Respondent's use of <www-amazon.com>. Further, Respondent registered the disputed
domain name December 18, 2001, years after Amazon.com began offering books and
related goods under its AMAZON marks, after Complainant's name and mark had
become well-known, and after Complainant's application for and the issuance of
U.S. Reg. No. 2,078,496 for AMAZON.COM.
Respondent
is not using the disputed domain names in connection with a bona fide
offering of goods or services. The
domain simply redirects Internet users to the www.clickabove.com website that
has links to the websites of others, rather than offering any goods or services
by Respondent.
Neither does it appear that Respondent
has been commonly known by <www-amazon.com>. The information given in Respondent's WHOIS
records shows that Respondent is known as J J Domains rather than the disputed
domain name. Exhibit H (WHOIS record).
Additionally, given the fame of Complainant's marks, Respondent should
not be considered to have been commonly known by the disputed domain name. Most consumers would associate domain names
that are confusingly similar to Complainant's trade name and marks with
Complainant.
3. Bad
faith use. The fact that Respondent
deliberately chose Complainant's famous AMAZON.COM mark for use in the typo <www-amazon.com>
domain name is sufficient evidence of Respondent's bad faith.
Moreover, Respondent knew (or should have
known) of Complainant's world famous name and marks when he registered the
disputed domain name.
In also appears that Respondent is
attempting to profit from its cybersquatting.
The domain for the www.clickabove.com website, to which the
disputed domain resolve,s lists Carloe Natiche as the "person" in the
WHOIS record, just as in the WHOIS record for the disputed domain. The Panel finds that the true domain owners
for these domains are the same or related.
Because Respondent had knowledge of Complainant's name and marks (either
actual or constructive), the only plausible reason for his registration of the
disputed domain name was to try to divert traffic from Complainant's
website. The Panel finds that this
diversion is for commercial gain, most likely through referral fees for the
redirection to the www.clickabove.com website and the links provided on
that site.
By using the disputed domain name,
Respondent has intentionally attempted to attract, for commercial gain,
Internet users to a website other than Complainant's by creating a likelihood
of confusion with Complainant's mark as to the source, sponsorship,
affiliation, or endorsement of that other website and products.
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. webnetmarketing,
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
has established rights in the AMAZON.COM mark through registration with the
United States Patent and Trademark Office ("USPTO") (Reg. No.
2,078,496 issued July 15, 1997). 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."); see also 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,
Respondent's <www-amazon.com> domain name is confusingly similar
to Complainant's AMAZON.COM mark, as the domain name merely adds the prefix
"www-" to Complainant's AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar
aspects of Respondent's domain name pursuant to Policy ¶ 4(a)(i). See Neiman
Marcus Group, Inc. v. SJA, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing
similarity has been established because the prefix "www" does not
sufficiently differentiate the <wwwneimanmarcus.com> domain name from the
complainant's NEIMAN-MARCUS mark); see also Marie Claire Album v. Blakely, D2002-1015
(WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct
in the "Internet world" and thus the respondent's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark).
Rights or Legitimate Interests
Respondent
is not commonly known by the <www-amazon.com> domain name.
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com,
Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has
no rights or legitimate interests in domain names because it is not commonly
known by complainant's marks and respondent has not used the domain names in
connection with a bona
fide offering of goods
and services or for a legitimate noncommercial or fair use).
In
addition, Respondent lacks rights and legitimate interests in the <www-amazon.com>
domain name because Respondent's addition of the prefix "www-" to
Complainant's AMAZON.COM mark constitutes typosquatting. 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-à-vis complainant); see also Black &
Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no
rights or legitimate interests where the respondent used the typosquatted
<wwwdewalt.com> domain name to divert Internet users to a search engine
webpage, and failed to respond to the complaint).
Furthermore,
Respondent is using the <www-amazon.com> domain name to operate a
website featuring general commercial links. Respondent's use of a domain name
confusingly similar to Complainant's mark to divert Internet users to websites
for the purpose of Respondent's own commercial gain does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See TM Acquisition Corp.
v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that
respondent's diversionary use of complainant's marks to send Internet users to
a website which displayed a series of links, some of which linked to
competitors of complainant, was not a bona fide offering
of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent's use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona fide offering of goods
or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose
in selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
Registration and Use in Bad Faith
Respondent
receives click-through fees for diverting Internet users to commercial websites
unrelated to Complainant's business.
Respondent registered and used the disputed domain name in bad faith
under Policy ¶ 4(b)(iv), as Respondent is using the <www-amazon.com> domain
name to intentionally attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affiliation or endorsement of its website. See H-D
Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent's registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant's famous marks and
likeness); see also 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).
Moreover,
Respondent's <www-amazon.com> domain name is likely to cause
Internet users to mistakenly believe that the disputed domain name is
affiliated with Complainant. This shows
Respondent registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Sony
Kabushiki Kaisha v. Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding bad faith registration and use where it is
"inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant"); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000)
(finding bad faith where the domain name in question is obviously connected
with complainant's well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Furthermore,
Respondent registered and used the disputed domain name in bad faith because
Respondent's <www-amazon.com> domain name illustrates
"typosquatting." Respondent's
addition of the prefix "www-" to Complainant's famous mark will cause
Internet users seeking Complainant's AMAZON.COM mark to become confused. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003)
("Respondent's registration and use of [the <zonelarm.com> domain name]
that capitalizes on the typographical error of an Internet user is considered
typosquatting. Typosquatting, itself is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii)."); 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"); see also Marriott Intl, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003)
(finding that the respondent's <marrriott.com> domain name was
confusingly similar to the complainant's MARRIOTT mark because
"Respondent's typosquatting, by its definition, renders the domain name
confusingly similar to Complainant's mark").
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <www-amazon.com> domain name be TRANSFERRED
from Respondent to Complainant.
Mark McCormick, Chair
Robert T. Pfeuffer and Edward C. Chiasson, Panelists
Dated: September 2, 2005
NATIONAL ARBITRATION FORUM
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