National Arbitration Forum

DECISION

Amazon.com, Inc. v. Frank Joachim

Claim Number: FA0608000786711

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, USA. Respondent is Frank Joachim (“Respondent”), represented by Dr. Sasha von Stahl, 3229 E. Atlantic Blvd., Ste. 1000, Pompano Beach, FL 33062.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amazonws.com>, registered with Schlund+Partner Ag.

PANEL

Each of the undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Tyrus R. Atkinson, Jr., Dennis A. Foster, Esq., and Terry F. Peppard, Esq., chair, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2006.

On August 31, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <amazonws.com> domain name is registered with Schlund+Partner Ag and that the Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2006 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 by e-mail to postmaster@amazonws.com.

A timely Response was received and determined to be complete on September 19, 2006.

Complainant timely filed an Additional Submission under date of September 26, 2006.

On September 28, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Tyrus R. Atkinson, Jr., Dennis A. Foster, Esq., and Terry F. Peppard, Esq., chair, as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends, among other things, that:

Complainant is one of the world’s best known Internet retailers, and the world’s largest online seller of books.

Complainant also offers on its website goods ranging from computer products and electronics to toys, apparel and household goods, in addition to other services such as movie listings.

Complainant has spent over $240,000,000 on advertising using its mark worldwide since 1996, as a result of which the mark has become famous, generating customers in more than 220 countries.

Complainant has registered its famous trademark, AMAZON.COM, in many countries worldwide; in particular, Complainant’s registration of its trademark with the United States Patent and Trademark Office (“USPTO”), registry number 2,078,496, dates from July 15, 1997.

The letters “WS” added to Complainant’s mark in Respondent’s domain name form an acronym for “web services,” a program operated by Complainant since July of 2002, which is sometimes identified as “AWS.”

Users of Complainant’s web services program sometimes refer to it as “AmazonWS.”

The disputed domain name is therefore confusingly similar to Complainant’s famous registered trademark.

Complainant has not licensed Respondent to use its mark in a domain name.

Respondent is not commonly known by the contested domain name.

Respondent, whose address is reported to be 1126 South Federal Highway, Suite 313, Ft. Lauderdale, Florida 33316, registered the contested domain name on January 7, 2004.

Respondent makes no current active use of the domain name.

Respondent has no rights to or legitimate interests in the domain name.

Respondent is not associated with any legitimate use of Complainant’s mark.

Respondent has registered and uses the domain name in bad faith.

B. Respondent

Respondent contends, among other things, that:

This proceeding is defective because Complainant failed to serve its Complaint upon Respondent’s “authorized representative.”

Complainant has no rights in its marks because the word “Amazon” is a common term rather than a unique trademark.

The disputed domain name is used by Respondent to mean “Amazon Water Sports.”

For a brief time, the contested domain name resolved to a commercial web site at <okario.com>, but that site is no longer functional.

Respondent uses the domain name now solely to facilitate its personal e-mail service.

Respondent has never used the subject domain name for commercial gain or to dilute Complainant’s trademark.

Respondent has never attempted to sell its domain name to Complainant.

C. Additional Submissions

Complainant’s Additional Submission alleges, among other things, that:

Respondent does not deny that its domain name is confusingly similar to Complainant’s famous registered trademark.

The website at <okario.com>, to which Respondent alludes, was owned by Okario, LLC, a distributor and retailer of consumer goods.

Respondent at one time directed its domain name to Complainant’s website at <amazon.com> as part of a scheme to collect unearned fees from Complainant’s Associates Program, which compensates Internet website operators for referring Internet users from the operators’ websites to Complainant’s website should such users subsequently purchase goods from Complainant.

The Complaint herein is valid because Respondent timely received actual notice of this proceeding in accordance with ICANN rules.

Respondent has failed to submit any proof in support of its allegations either that its domain name is intended to refer merely to “Amazon Water Sports” or that the domain is used exclusively to facilitate its personal e-mail service.

Respondent’s Additional Submission alleges, among other things, that:

The disputed domain name for a very brief time resolved to an “about us” announcement with no linking to other websites or content, and such “parking” should not be considered “use” of the domain.

Respondent’s brief participation in Complainant’s Associates Program, with associated linkage of the subject domain name to Complainant’s website, was done solely at Complainant’s urging, and this linkage was terminated as soon as Respondent became aware that Complainant no longer wished to have the benefit of the association.

FINDINGS

(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the same domain name was registered and is being used by Respondent 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:

i. the domain name registered by the Respondent is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the domain name;

and

iii. the domain name has been registered and is being used in bad faith.

Preliminary Procedural Issue: Validity of Service of the Complaint

Before turning to the allegations of the Complaint, we must first address a procedural question raised by the Response. Respondent argues that this proceeding is defective because Complainant failed to serve its Complaint upon Respondent’s “authorized representative.” The record before us shows this assertion to be without merit. Rule 2 of the Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”) applicable to this proceeding makes clear that the objective of the provisions for service of a complaint upon a respondent is “to achieve actual notice to Respondent.” Apropos of this objective, the procedural history of this proceeding, set out elsewhere in this decision, recites as follows:

On August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 2006 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@amazonws.com by e-mail.

This mode of service was in keeping with the provisions of Rule 2(a)(ii).

Had Respondent wished its “authorized representative” to receive direct notice of the commencement of this proceeding, it would only have been necessary for it to list its “authorized representative” as a technical, administrative or billing contact in its registrar’s Whois database for the domain name. Respondent failed to do so.

That Respondent received actual notice of the Complaint, as called for in the Rules, is best evidenced by the fact of its timely-filed Response. Moreover, Respondent does not deny timely receipt of actual notice of the Complaint. Having timely received actual notice of the Complaint by the prescribed means indicated, and having failed to list its “authorized representative” as a contact in its registrar’s Whois database, Respondent cannot demonstrate any prejudice to it arising from the fact that the notice it actually received might have been achieved, or reinforced, by still other means.

Accordingly, Respondent has received all of the notice to which it is entitled, and there is no procedural invalidity in this proceeding owing to the alleged failure of Complainant to make service of the Complaint upon Respondent’s “authorized representative” in addition to the means properly employed by Complainant to achieve actual notice to Respondent.

Identical and/or Confusingly Similar

Before considering whether the domain name at issue in this proceeding is confusingly similar to Complainant’s AMAZON.COM mark, we will first determine whether Complainant has protectible rights in that mark.

On this question, it is asserted by Complainant, and not denied by Respondent, that Complainant has registered its mark with the relevant authorities in many countries worldwide, including the United States, Respondent’s country of residence. 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 “common” (i.e.: 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. See 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 proven 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. See Sydney Mkts. Ltd. v. Shell Info. Sys., D2001-0932 (WIPO Oct. 8, 2001). 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 inherently distinctive.

We turn then to Complainant’s allegation that Respondent’s domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i). The phrase “confusingly similar” does not of course 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.” See Celebration Shoes Ltd. v. Bridal Shoe Path, D2001-1123 (WIPO Nov. 8, 2001).

In this connection, Complainant alleges that the letters “WS” added to Complainant’s mark in Respondent’s domain name form an acronym for “web services,” a program of its business operated by Complainant since July of 2002, and which is sometimes identified as “AWS.” Complainant further alleges that users of Complainant’s web services program at times refer to it as “AmazonWS.” Respondent counters that the disputed domain name is instead used by it to mean “Amazon Water Sports.”

Complainant’s explanation for the meaning of the suffix “WS” in Respondent’s domain name is both rational and credible, and it is well supported in the record of this proceeding. Respondent’s counter-explanation, by contrast, is not.

On these facts, we conclude that, where, as here, a domain name consists of a famous registered trademark in its entirety, together with a suffix or prefix closely associated with the trademark holder’s business, that domain name must be judged confusingly similar to the trademark within the meaning of Policy ¶ 4(a)(i). This is because the appended prefix or suffix “does nothing to dispel and serves only to reinforce the connection in the public mind between the …[trademark]…and the Complainants, and therefore increases the risk of confusion [between the mark and the domain].” See Aventis Pharma SA v. Valicenti, D2005-0037 (WIPO Mar. 9, 2005). To the same effect, and specific to the computer industry, see Dell Computer Corp. v. Ewaldsson, D2000-1087 (WIPO Nov. 17, 2000).

Respondent also contends that, merely because Complainant has made its mark famous in connection with the marketing of its goods and services, that fact does not give Complainant exclusive rights to all domain names employing its mark. It is of course true that possession of a famous registered mark, standing alone, does not entitle the mark holder to exclusive rights in all domain names containing the mark. If, however, the mark holder, in addition to showing that it possesses rights in its 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.

For these reasons, we conclude that Complainant has met its burden of proof under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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 the disputed domain name (see Policy ¶ 4(c)(i)) and that Complainant has never authorized Respondent’s use of the AMAZON.COM mark for a domain name.

Because the evidence of its rights and interests in the challenged domain name, 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 name sufficient to satisfy Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).

In its defense, Respondent alleges that it has never used the subject domain name for commercial gain and that it uses the contested domain name solely to facilitate its personal e-mail service. In short, Respondent concedes that the domain name is being held passively, or, as is sometimes said, “parked.”

It has frequently been held by other panels that a respondent’s lengthy passive holding of a disputed domain name demonstrates that the domain is not being used for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum Jul. 12, 2006); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001). This rule has been specifically applied in a case involving a claimed use of a domain name in connection with an e-mail application. See ROHO, Inc. v. Duane, D2001-1168 (WIPO Dec. 14, 2001).

Taken in light of a record revealing, by Respondent’s admission, more than two and one-half years of passive holding, we concur with the assessment of those panels.

We find, therefore, that the proof requirements of Policy ¶ 4(a)(ii) have been met by Complainant’s submissions.

Registration and Use in Bad Faith

The final question before this Panel is whether Respondent has both registered and is using the disputed domain name 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, including in Respondent’s country of residence, so that Respondent’s recent registration of a domain name confusingly similar to Complainant’s famous registered mark is, without more, evidence of Respondent’s bad faith registration and use of the disputed domain name. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Miller Brewing Co. v. km, FA 158252 (Nat. Arb. Forum Jul. 3, 2003).

In addition, in Twentieth Century Fox Film Corp. v. Risser, FA 93,761 (Nat. Arb. Forum May 18, 2000), a panel observed that:

The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.

With this in mind, we take note both of Respondent’s admitted years-long passive holding of the disputed domain and of its patently incredible claim that the reason for its choice of the “WS” suffix in the creation of the domain here in question was in association with the phrase “Amazon Water Sports.”

The Panel thus finds that Complainant has satisfied its evidentiary obligations under Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

Accordingly, it is Ordered that the <amazonws.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.

Terry F. Peppard, Chair

Tyrus R. Atkinson and Dennis A. Foster, Panelists
Dated: October 9, 2006

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