Amazon.com, Inc. v. Amazon4u.com c/o
Muhammad Yassir
Claim Number: FA0508000535524
PARTIES
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 Amazon4u.com c/o Muhammad Yassir (“Respondent”), Ahmed
Mansion, Suite #1, Peshawar, NWFP 25000, PK.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <amazon4u.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certify that we have acted independently and impartially and that
to the best of our knowledge we have no known conflict in serving as Panelists
in this proceeding. G. Gervaise Davis,
III, Esq., Edward C. Chiasson, Q.C. and Hon. Carolyn Marks Johnson sit as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically August
8, 2005; the National Arbitration Forum received a hard copy of the Complaint August
10, 2005.
On
August 11, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <amazon4u.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and thereby has agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
August 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
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@amazon4u.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 September 26, 2005, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed G. Gervaise Davis, III, Esq.; Edward C. Chiasson, Esq., and Hon.
Carolyn Marks Johnson as Panelists.
Having
reviewed the communications records, the Administrative Panelists (the
"Panel") find that the National Arbitration Forum 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this proceeding:
1. Respondent registered a domain name that
is confusingly similar to Complainant’s AMAZON.COM mark.
2. Respondent has no rights to or legitimate
interests in the domain name that contains in its entirety Complainant’s
protected AMAZON.COM mark.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent failed to file a Response in
this proceeding.
FINDINGS
Complainant
established rights in the AMAZON.COM mark through registration of the mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,078,496
issued July 15, 1997) and with various trademark authorities throughout the
world. Complainant also registered its
mark in forty other nations and the European Union.
Complainant sells books through it
Amazon.com Internet website, along with electronics, toys, apparel, household
items and services such as movie listings.
In 2004, Complainant had sales in excess
of $6.9 billion, including international sales of $3 billion.
Complainant has spent some $240 million
on advertising the AMAZON trademarks since 1996.
Respondent registered the disputed domain
name on April 4, 2004, and is using it to compete in the same area of commerce
in which Complainant is active.
Respondent has no license or permission
to use Complainant’s protected mark.
Given the fame that attaches to
Complainant’s mark, it is a reasonable inference that Respondent, known to the
panel through its agent Muhammad Yassir, knew of Complainant’s rights in the
AMAZON trademark and Respondent has done nothing to preclude such an
inference. In addition, nothing in the
record would support an inference that Respondent was commonly known by that
mark.
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.”
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
will draw such inferences as the Panelists consider appropriate pursuant to
paragraph 14(b) of the Rules. The Panel
accepts all reasonable factual allegations set forth by Complainant as true and
may draw inferences that flow from them unless the information 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 statements of fact in 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 factual assertions of the Complaint.”).
Paragraph
4(a) of the Policy requires Complainant to 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)
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 established with extrinsic
proof in this proceeding that it established rights in the AMAZON.COM mark
through registration of the mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,078,496 issued July 15, 1997) and with various
trademark authorities throughout the world.
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also U.S.
Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”).
Respondent’s addition of the numeral “4”
and the letter “u” to Complainant’s AMAZON.COM mark is not enough to avoid a
finding of confusing similarity between the <amazon4u.com> domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808
(WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain
name <4icq.com> does nothing to deflect the impact on the viewer of the
mark ICQ and is therefore confusingly similar).
The
Panel finds that Complainant satisfied the requirements of ICANN Policy ¶ 4(a)(i).
Complainant
alleged and submitted extrinsic evidence in this proceeding that permitted the
Panel to find that it has rights to and legitimate interests in the AMAZON.COM
mark that is contained in its entirety in the domain name that Respondent
registered. Complainant asserted as
fact that Respondent has no such rights to or legitimate interests in the mark
contained within the domain name. Once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to show that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). We rely on the following cases, but note that
this Respondent chose not to come forward with proof. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where Complainant has asserted that Respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent.”).
Respondent’s failure to respond to the
Complaint evidences that Respondent has chosen not to challenge Complainant’s
contentions and factual assertions that Respondent lacks rights to and
legitimate interests in the <amazon4u.com> domain name. Such refusal to come forward leaves the fact
undisputed and permits an inference that Respondent lacks rights to and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names).
Complainant contends that Respondent is
using the disputed domain name to operate a website that purports to sell
various consumer electronic goods. Such
commercial use of a confusingly similar domain name is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See G.D. Searle &
Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that
because Respondent is using the infringing domain name to sell prescription
drugs, the panel could infer that Respondent is using the complainant’s mark to
attract Internet users to its website for commercial benefit); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, Complainant
asserted that, despite being listed in the WHOIS information as “Amazon4u.com,”
Respondent is not commonly known by the <amazon4u.com> domain name
and is not licensed or authorized to register domain names featuring
Complainant’s mark, and Respondent has not provided proof that would establish
that Respondent has such rights to or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Yoga
Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17, 2003)
(finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact
information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also Nature’s Path Foods Inc. v. Natures
Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact
information, Respondent lists its name and its administrative contact as
‘Natures Path, Inc.’ However, since
Respondent failed to respond to the Complaint, no affirmative evidence has been
provided to the Panel showing that Respondent was commonly known by the
disputed domain name.”).
Complainant has met
its burden under Policy ¶ 4(a)(ii). See
Lush LTD v. Lush
Environs, FA 96217 (Nat.
Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a
response, the complainant must allege facts, which if true, would establish
that the respondent does not have any rights or legitimate interests in the
disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus.
Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a
showing of any facts by the complainant that establish the respondent lacks
rights or legitimate interests in the disputed domain name, the panel may
decline to transfer the disputed domain name).
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(ii).
The
Panel finds that Complainant satisfied the requirements of ICANN Policy ¶ 4(a)(iii).
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 <amazon4u.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panel Chair
G. Gervaise Davis, III, Esq. & Edward
C. Chiasson, Q.C., Panelists
Dated: October 10, 2005
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