Amazon.com, Inc. v. Michele Dinoia c/o
SZK.com
Claim Number: FA0508000536549
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 Michele Dinoia c/o SZK.com (“Respondent”), represented by Valerio Donnini, 4, Via Venezia 65121
Pescara PE, Italy.
REGISTRARS AND DISPUTED DOMAIN NAMES
The
domain names at issue are <amazonappliances.com> and <amazoncommunity.com>, registered with Dotster; <amazongamer.com>, registered with Newdentity; <amazonltd.com>, <amazonmanufacturing.com>, <amazzone.com>, <amzaon.com>, <hotelamazon.com>, <superamazon.com>, <wwwamason.com> and <wwwamazom.com>, registered with Onlinenic, Inc.; and <jobamazon.com>, registered with Namesdirect.
Each of
the undersigned certifies that he has acted independently and impartially, and,
to the best of his knowledge, has no known conflict of interests in serving as
a Panelist in this proceeding.
Paul
M. DeCicco, Hon. Paul A. Dorf (Ret.) and Terry F. Peppard, chair, as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on
August 10, 2005; the National Arbitration Forum received a hard copy of the
Complaint on August 12, 2005.
On
August 10, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the <amazonappliances.com> and <amazoncommunity.com> domain
names are registered with Dotster and that the Respondent is the current
registrant of the names. Dotster has
verified that Respondent is bound by the Dotster 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
August 10, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the <amazonltd.com>, <amazonmanufacturing.com>, <amazzone.com>, <amzaon.com>, <hotelamazon.com>, <superamazon.com>,
<wwwamason.com> and <wwwamazom.com> domain names are
registered with Onlinenic, Inc. and that the Respondent is the current
registrant of the names. Onlinenic,
Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Policy.
On
August 10, 2005, Namesdirect confirmed by e-mail to the National Arbitration
Forum that the <jobamazon.com>
domain name is registered with Namesdirect and that the Respondent is the
current registrant of the name.
Namesdirect has verified that Respondent is bound by the Namesdirect
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Policy.
On
August 10, 2005, Newdentity confirmed by e-mail to the National Arbitration
Forum that the <amazongamer.com> domain
name is registered with Newdentity and that the Respondent is the current
registrant of the name. Newdentity has
verified that Respondent is bound by the Newdentity registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s 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@amazonappliances.com, postmaster@amazoncommunity.com,
postmaster@amazongamer.com, postmaster@amazonltd.com,
postmaster@amazonmanufacturing.com, postmaster@amazzone.com,
postmaster@amzaon.com, postmaster@hotelamazon.com, postmaster@jobamazon.com,
postmaster@superamazon.com, postmaster@wwwamason.com and
postmaster@wwwamazom.com by e-mail.
A
timely Response was received and determined to be complete on September 6,
2005.
On
September 9, 2005, Complainant timely filed an Additional Submission, to which
Respondent did not respond.
On September 12, 2005, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco, Hon. Paul A. Dorf (Ret.) and Terry F.
Peppard, 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,
Amazon.com, is one of the world’s best-known Internet retailers and the world’s
largest on-line bookseller.
Complainant
offers for sale goods ranging from computer products and electronics to toys,
apparel and household goods, as well as services such as movie listings.
Tens
of millions of customers from over 220 countries have purchased goods through
Complainant’s web site at <amazon.com>.
In
2004, Complainant had sales revenues in excess of USD 6.9 million, 40% of which
came from international sales.
Since
1996, Complainant has spent more than USD 240 million on advertising to promote
its AMAZON brand.
Complainant
has registered its AMAZON.COM mark with the relevant authorities in more than
forty countries and the European Union.
As
a result of Complainant’s years-long efforts and very substantial expenditure of
resources in support of its AMAZON.COM mark, that mark is famous worldwide.
All
of the disputed domain names are confusingly similar to Complainant’s
AMAZON.COM mark because they contain either a direct translation or deliberate
misspellings of Complainant’s mark or combinations of Complainant’s mark with a
generic word.
Each
of the subject domain names forwards Internet users to a search engine page,
which is apparently provided by a “parked domain provider” which operates by
paying referral fees based upon the number of users thus redirected to
commercial web sites from Respondent’s sites.
Respondent’s
web sites have links to sites of competitors of Complainant, including
<barnesandnoble.com> and <booksamillion.com>.
Respondent
has never been commonly known by any of the disputed domain names.
Complainant
has not licensed Respondent’s use of any of the disputed domain names.
Complainant
first filed for registration of its AMAZON.COM mark more than six years before
Respondent first registered any of the subject domain names.
Respondent
is a “recidivist cybersquatter” with more than twenty reported decisions issued
against it for conduct like that reflected in the Complaint in this
proceeding.
B.
Respondent
Respondent
contends, among other things, that:
The
<amazonappliances.com>, <amazoncommunity.com>, <amazongamer.com>, <amazonmanufacturing.com>, <hotelamazon.com>, <superamazon.com>, <amazonltd.com>
and <jobamazon.com> domain
names, while they incorporate
Complainant’s AMAZON.COM mark, also include a generic term that has no relation
to the business of Complainant and so cannot be said to be confusingly similar
to its mark.
There
is no confusing similarity between Complainant’s AMAZON.COM mark and Respondent’s <amazzone.com> domain name, and, in any event, “ammazzone” is
a generic Italian term, the equivalent of the generic English word “amazon.”
Respondent’s
business model involves registering numerous domain names, including variations
on the generic word “amazon,” and either selling them or developing web sites
using those names.
Complainant
has not proven that any of Respondent’s domain names which are the subject of
this proceeding has actually caused confusion among Internet users.
The
fact that Complainant has made its AMAZON.COM mark world-famous in connection
with the marketing of many goods and services does not give Complainant the
exclusive right to all domain names employing its generic mark.
C.
Additional Submissions
Complainant’s
Additional Submission alleges, inter alia, that:
The
mere addition of a generic term to the mark of another is not enough to create
a domain name capable of overcoming a claim of confusing similarity.
Respondent’s
<amzaon.com>,
<wwwamason.com> and <wwwamazom.com> domain names contain deliberate mis-typings of
Complainant’s mark, and the web sites to which these names resolve contain
links to on-line retail stores and booksellers competitive with Complainant’s
business.
Respondent’s
<amazzone.com> domain name
likewise resolves to a web site which contains a link to on-line booksellers
competitive with Complainant’s business.
As
to Respondent’s contested domain name, <amazonltd.com>, the addition of a corporate
designation to a competing mark does not distinguish the resulting domain name
from that mark.
Respondent
admits in its submission that it uses the disputed domain names for commercial
gain.
FINDINGS
a.
Each of the
domain names registered by Respondent is confusingly similar to a mark in which
Complainant has rights;
b.
Respondent
has no rights or legitimate interests in respect of any of the disputed domain
names; and
c.
Each of the
subject domain names has been registered and is being used 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.
Before considering whether any of the domain names at issue
in this proceeding is either identical or confusingly similar to Complainant’s
claimed AMAZON.COM service mark, we must first determine if Complainant has protectible
rights in that mark.
On this
threshold question, it is asserted by Complainant, and not denied by
Respondent, that Complainant has registered its mark with the relevant
authorities in more than forty individual countries and the European Union. Such registrations, without more, establish
in Complainant rights sufficient for purposes of Policy ¶ 4(a)(i). See,
e.g., Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003).
Complainant’s
mark registrations also preclude acceptance of Respondent’s assertion to the
effect that Complainant has no rights under the Policy because, Respondent
alleges, Complainant’s mark is merely a generic term. The Panel has no power to disturb a determination by the relevant
authorities that Complainant’s mark has sufficient distinctiveness to be
eligible for registration. Office of
Pers. Mgmt. v. MS Tech., Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003).
Moreover,
even if Complainant were not possessed of rights in its mark by reason of its
registrations with the pertinent authorities, we would be constrained to
conclude that Complainant has rights sufficient for purposes of Policy ¶ 4(a)(i) by
reason of its long-standing and substantial use of the mark in its worldwide
marketing efforts. Sydney Mkts. Ltd. v. Shell Info. Sys., D2001-0932 (WIPO Oct. 8,
2001). In the same event, we would
likewise conclude, on the basis of the record before us, that Complainant’s
mark, viewed in the light of the relevant market, is not generic but rather arbitrary,
and therefore inherently distinctive.
We
turn then to Complainant’s allegation that Respondent’s cited domain names are
either identical or confusingly similar to Complainant mark. In this regard, we first note that none of
the challenged domain names is identical to Complainant’s mark. We therefore consider only whether any of
the names in question is confusingly similar to that mark within the meaning of
Policy ¶
4(a)(i).
On
this question, Respondent argues that Complainant’s claim should fail because
Complainant has not proven the existence of any actual confusion among Internet
users traceable to Respondent’s use of its domain names. Respondent’s contention misapprehends the
intent of Policy ¶ 4(a)(i).
The phrase “confusingly similar” in that provision does not require proof of
actual confusion. Rather, as has been
noted by another panel, a contested domain name is “confusingly similar” within
the meaning of the Policy where “it is likely to lead people to believe that
the domain name … [in question]… is connected with the complainant.” Celebration Shoes Ltd. v. Bridal Shoe Path,
D2001-1123 (WIPO Nov. 8, 2001).
Thus
the Policy does not wait until actual harm results from impermissible use of an
offending domain name, and neither should this Panel.
Respondent
also argues that the various generic words attached to Complainant’s AMAZON.COM
mark in several of the contested domain names have no necessary connection to
Complainant’s business and so cannot be said to create confusing similarity
between the mark and the domain names within the understanding of the
Policy. Respondent’s argument on this
point is undone by its own submission, which concedes that Complainant has made
its mark world-famous in connection with the marketing of a wide variety of
goods and services. The opportunity for
confusion of Internet users is therefore present from Respondent’s illegitimate
introduction to the Internet marketplace of apparently new aspects of
Complainant’s business.
Finally,
Respondent contends that, merely because Complainant has made its AMAZON.COM
mark world-famous in connection with the marketing of many goods and services,
that fact does not give Complainant the exclusive right to all domain names
employing its mark. It is of course true that possession of a famous mark,
standing alone, does not entitle the mark holder to exclusive rights in all
domain names containing the mark. If,
however, a mark holder, in addition to showing that it possesses rights in a
mark, also proves to the satisfaction of an administrative panel all of the
three distinct elements of Policy ¶ 4(a), it will be entitled to relief under the
Policy.
Therefore,
Respondent’s efforts to avoid reaching the merits of Complainant’s claim under
Policy ¶
4(a)(i) are unavailing.
In
order to analyze this claim, we must first divide the twelve challenged domain
names into four distinct groups and treat each group separately. This is necessary in order to take account
of the material differences among the several groups, which are as follows:
Group One: <amazonappliances.com>,
<amazoncommunity.com>, <amazongamer.com>, <amazonmanufacturing.com>, <hotelamazon.com>, <superamazon.com>
and <jobamazon.com>;
Group Two: <amzaon.com>, <wwwamason.com> and <wwwamazom.com>;
Group Three: <amazonltd.com>;
and
Group Four: <amazzone.com>.
The Group One names may be considered
together for the reason that they share the essential characteristic of
consisting of Complainant’s entire mark plus a generic word.
As to such combinations, it has been
found by many panels that the addition of a generic term to an established mark
does not distinguish the resulting domain name from the mark. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001); Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Accordingly, each of the Group One names
is confusingly similar to Complainant’s registered mark.
The Group Two names are distinguishable
from their Group One counterparts in that each appears to contain a misspelling
of Complainant’s mark. Two of the three
names in this group also have added to them the World Wide Web designator
“www,” but without the usual punctuation.
The Group Two names are merely examples
of the offense of “typosquatting,” a distinct form of the evil of
cybersquatting against which the Policy is directed. See, e.g., Nieman
Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum Jul.
23, 2002). The addition of the letters
“www” to two members of this group carries with it no distinction under the
Policy and so does not change the result that each of the Group Two names is
confusingly similar to Complainant’s mark.
See, e.g., Marie Claire
Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002).
The single domain name in Group Three,
like those of Group One, contains Complainant’s mark in its entirety, but with
the addition of the abbreviated form-of-business designation “ltd.” The abbreviation “ltd,” like its cousins
“corp” and “gmbh,” is so common a form of corporate designation that it cannot
save Respondent’s mark from a finding of confusing similarity. See Wellness Int’l Network, LTD v. Webfrogs, FA 96191 (Nat. Arb. Forum
Jan. 16, 2001).
This leaves for consideration only Group
Four, which contains the single domain name <amazzone.com>. As to
this name, Respondent argues that “amazzone” is a generic term in Italian not
to be confused with Complainant’s English language mark.
We disagree with Respondent’s contention,
and hold with those panels that have found that the translation of a mark into
another language, which translation produces what may be called a near cognate
of a mark, does not defeat a claim of confusing similarity. Societe
des Bains de Mer et du Cercle des Etrangers de Monaco ltd. v. Int’l Lotteries,
D2000-1326 (WIPO Jan. 8, 2001); Banque
Transatlantique S.A. v. DOTSCOPE, D2004-1100 (WIPO Feb. 23, 2005).
For these reasons, we conclude that,
although not identical, each of the challenged domain names is confusingly
similar to Complainant’s registered mark under Policy ¶ 4(a)(i).
Complainant
has established, prima facie,
that Respondent has no rights to or interests in the subject domain names.
In particular, Complainant claims, and Respondent does not deny, that
Respondent has never been commonly known by any of the disputed domain names
and that Complainant has never licensed Respondent’s use of the AMAZON.COM mark
for any of those names.
Because
the evidence of its rights and interests in the challenged domain names, if
any, is uniquely within the knowledge of Respondent, it falls to Respondent to
show that, despite Complainant’s prima
facie showing to the contrary, it nonetheless has rights to or legitimate
interests in the disputed domain names sufficient to satisfy Policy ¶ 4(a)(ii). See
Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000); G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).
Just as Respondent does not deny that it
has not been commonly known by any of the contested domain names, Respondent
does not contend that it is making a legitimate non-commercial or fair use of
any of the same names. These
concessions effectively dispense with two of the provisions of Policy ¶ 4(c),
specifically subparagraphs (ii) and (iii) thereof, which offer to respondents
possible non-exclusive avenues by which to demonstrate their rights to or
interests in a disputed domain name. Instead Respondent relies on the remaining
subpart of Policy ¶ 4(c), denominated 4(c)(i), which permits a domain name
holder to escape responsibility for alleged cybersquatting by showing that it
is using a domain name “in connection with a bona fide offering of goods or services . . . .”
Respondent’s essential argument in this
regard is that its use of Complainant’s mark to create and operate web sites
which forward Internet users
to other commercial sites, for which referrals Respondent is evidently paid
referral fees based on the number of users thus redirected, is a “bona fide offering of goods or services.”
We
disagree. Respondent’s “business model”
is in no sense bona fide. Rather, it is precisely the kind of
electronic piracy that the Policy is intended to redress. See Disney Enter., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar.
17, 2003); DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002).
Accordingly,
Respondent has no rights or legitimate interests in respect of any of the
domain names which are the subject of this proceeding.
The final question before this Panel is
whether Respondent has both registered and is using the disputed domain names
in bad faith within the compass of Policy ¶ 4(a)(iii).
Our analysis of
this question begins with the observation that Respondent is charged with at
least constructive knowledge of Complainant’s rights in the AMAZON.COM mark
owing to its long-standing registrations worldwide, so that Respondent’s
comparatively recent registrations of a lengthy list of domain names, each
confusingly similar to Complainant’s famous registered mark, is itself evidence
of Respondent’s bad faith registration and use of those domain names. Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002).
Moreover,
Respondent’s behavior in using the subject domain names to divert Internet
traffic to web sites competing with that of Complainant is expressly identified
in Policy ¶ 4(b)(iv) as emblematic of bad faith
registration and use of the same names.
G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002).
Likewise
persuasive under this heading is the typosquatting evident in the plainly
deliberate misspellings of three of the subject domain names. Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sep. 22, 2003); K.R. USA, Inc. v. So So Domains, FA
180624 (Nat. Arb. Forum Sep. 18, 2003).
To this list might be added the fact that
Respondent’s long history of abusive cybersquatting can leave no doubt as to
whether his behavior in this instance was the product of mere
inadvertence. See, e.g., Venator Group v. Dinoia, FA
001506 (Nat. Arb. Forum Dec.10, 2001); Anheuser-Busch, Inc. v. Dinoia,
FA 114465 (Nat. Arb. Forum July 15, 2002); Circuit City Stores, Inc. v.
Dinoia, FA 128792 (Nat. Arb. Forum Dec. 12, 2002); Am. Online, Inc. v.
Dinoia, FA 137098 (Nat. Arb. Forum Jan. 20, 2003); Carlson Cos. Inc. v.
Szk.com, FA 161568 (Nat. Arb. Forum July 23, 2003); Lowermybills.com,
Inc. v. Dinoia, FA 183728 (Nat. Arb. Forum Oct. 2, 2003); Alcoa Inc. v.
Dinoia, FA 227654 (Nat. Arb. Forum Mar. 3, 2004); Choice
Hotels Int’l, Inc. v. Dinoia, FA 282792 (Nat. Arb. Forum July 28, 2004); Time Warner,
Inc. v. Dinoia, FA 341272 (Nat. Arb. Forum Dec. 3, 2004); Don Best
Sports v. SZK.com, FA 362036 (Nat. Arb. Forum Dec. 22, 2004); Wells
Fargo & Co. v. Dinoia, FA 366278 (Nat. Arb. Forum Dec. 30, 2004); Bank
of Am. Corp. v. Dinoia, FA 390945 (Nat. Arb. Forum Feb. 10, 2005); Legg
Mason, Inc. v. Dinoia, FA 397104 (Nat. Arb. Forum Feb. 21, 2005); Am.
Type Culture Collection v. Dinoia, FA 414641 (Nat. Arb. Forum Mar. 18,
2005); Lastar, Inc. v. Dinoia, FA 430793 (Nat. Arb. Forum Apr. 13,
2005).
We therefore
conclude that Respondent has both registered and is using the challenged domain
names in bad faith.
DECISION
Complainant
having established all three elements required under the ICANN Policy, the Panel
concludes that the relief requested should be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the
domain names <amazonappliances.com>, <amazoncommunity.com>,
<amazongamer.com>, <amazonltd.com>, <amazonmanufacturing.com>,
<amazzone.com>, <amzaon.com>, <hotelamazon.com>,
<jobamazon.com>, <superamazon.com>, <wwwamason.com>
and <wwwamazom.com> be TRANSFERRED from Respondent to
Complainant.
Terry F. Peppard, Chair
Paul M. DeCicco
Honorable Paul A. Dorf
Dated: September 26, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page