Amazon.com, Inc. v. Object Publishing Software, Inc. c/o Tim Hennings
Claim Number: FA0710001103565
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 Object Publishing Software, Inc. c/o Tim
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-on-demand.com>, registered with Godaddy.com, Inc.
The undersigned certifies that they have acted independently and impartially and that to the best of their knowledge they have no known conflicts in serving as Panelists in this proceeding. The Hon. Tyrus R. Atkinson, Jr., Ms. Anne M. Wallace, Esq., and the Hon. Carolyn Marks Johnson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 25, 2007; the National Arbitration Forum received a hard copy of the Complaint October 26, 2007.
On October 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amazon-on-demand.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, 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 October 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2007, 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 email@example.com by e-mail.
The Forum received a Response November 20, 2007, which was deficient under ICANN Rule 5 as it was late and not received in hard copy.
On November 26, 2007, Complainant submitted a timely Additional Submission that was determined to be complete.
On November 27, 2007, Respondent submitted a timely Additional Submission that was determined to be complete.
On November 28, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Tyrus R. Atkinson, Jr., Ms. Anne M. Wallace, Esq., and the Hon. Carolyn Marks Johnson as Panelists.
Respondent filed a deficient Response because the hard copy of the Response was not received by the Response deadline and did not comply with ICANN Rule 5. Within its discretion, the Panel reviewed the Response as shown below in the Decision; but has determined that the Response does not change the outcome. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept the Respondent’s deficient response that was only submitted in electronic form because it would not have affected the outcome had the Panel considered it). But see Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Respondent registered a domain name that is identical to or confusingly similar to a mark in which Complainant has protected rights.
2. Respondent has no rights to or legitimate interests in the mark or the disputed domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent makes the following points in response:
1. Respondent seems to concede that the domain name was intended to contain what it knew was Complainant’s protected mark.
2. Respondent seems to believe that it has rights and interests in using the mark within the disputed domain name. Respondent does not however set out that rights were granted to it by Amazon to use the mark other than the fact that Amazon “opened up their product database to the whole world.”
3. Respondent concedes that it knew of Amazon’s international reputation and provision of sales and services.
4. Respondent stated intent to gain financially from the domain name by attracting “the attention of other companies who might be interested in purchasing our service.”
C. Complainant adds the following points in its Additional Submission.
1. Complainant notes that Respondent concedes Amazon’s rights to its mark.
2. Complainant notes that Respondent concedes he knew about Amazon’s international business.
3. Complainant notes that Respondent concedes he acted for his own personal financial gain.
Complainant established that it has rights in the AMAZON mark by virtue of its registration with the United States Patent and Trademark Office since 1997 and by virtue of first use in commerce in 1995.
Complainant holds numerous registrations of the mark from countries throughout the world.
Complainant operates its business under the AMAZON mark internationally.
Respondent knew of Complainant’s international operations and its interest in its AMAZON mark and purposely registered the disputed domain name to attract business from Complainant and others.
Respondent registered the disputed domain name in February 2005 for the express purpose of exploiting opportunistically the goodwill associated with AMAZON for its own commercial gain.
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 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 relative to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts that it has registered the AMAZON mark in numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”). The Panel finds that registration of the AMAZON mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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.”).
Complainant contends that Respondent’s <amazon-on-demand.com> domain name is confusingly similar to Complainant’s AMAZON mark. The Panel finds that addition of the generic top-level domain (“gTLD”) “.com,” and inclusion of the generic terms “on demand,” separated by hyphens, do not distinguish the disputed domain name. Accordingly the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
While Respondent contends that the <amazon-on-demand.com> domain name is comprised of common, descriptive terms and implies that as such the disputed domain name cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Respondent does not explicitly address whether Complainant satisfied the requirements of Policy ¶ 4(a)(i). However, Respondent contends that the disputed domain name incorporates the name of Respondent’s business “Catalogue-on-demand” and is a reflection of Respondent’s business and not an infringement on Complainant’s mark. The Panel is not persuaded that Respondent has shown rights in the use of Complainant’s mark in a domain name that is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant urges that Respondent is not
commonly known by the disputed domain name and that nowhere in Respondent’s
WHOIS information is there any suggestion that Respondent is commonly known by
Complainant’s protected mark. Moreover,
Complainant asserts that given Complainant’s extensive use of its famous mark, it
is extremely unlikely that Respondent would be able to show that it is commonly
known by a disputed domain name that incorporates Complainant’s famous
mark. The Panel finds that Respondent
failed to establish rights to or legitimate interests in the <amazon-on-demand.com> domain name, which contains in its entirety
Complainant’s protected mark, pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also
In addition, Complainant asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair way because Respondent’s disputed domain name contains Complainant’s mark and diverts Internet users to a commercial website offering unauthorized services related to Complainant’s business. Complainant argues further that Respondent is attempting to offer services by opportunistically trading off of Complainant’s goodwill in the AMAZON mark. The Panel finds that Respondent is not making a bona fide offering of goods or services at the disputed domain name pursuant to Policy ¶ 4(c)(i) and is not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Microsoft Corp. v. OzGrid Bus. Applications, FA 314308 (Nat. Arb. Forum Oct. 6, 2004) (“Respondent’s use of a domain name confusingly similar to Complainant’s MICROSOFT mark to redirect Internet users interested in Complainant’s services and products to a commercial website that offers unauthorized MICROSOFT EXCEL training services and products as well as offers to sell software, software templates, consulting services and publications is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); 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).”).
Further, Complainant has shown from its correspondence with Respondent that Respondent offered to sell the disputed domain name to Complainant. The Panel finds this offer to support further findings that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent asserts a willingness to place a disclaimer on the disputed website emphasizing that it is not associated with Complainant’s AMAZON mark. The Panel finds this offer to be of no effect because it does not negate an Internet user’s initial impression that the disputed domain name is associated with Complainant’s mark. See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Respondent contends that it is using the disputed domain name to offer its online business “Catalog-on-Demand,” an automated service to produce brochures and catalogs for product-based companies, manufacturers, and distributors. Respondent argues that it is using the disputed domain name to offer these services for Complainant’s products. The Panel finds that Respondent offered no evidence to establish that Complainant gave permission for Respondent to use its protected mark in this manner.
Respondent also contends that the terms of the <amazon-on-demand.com> domain name are generic and of common use as their business is named “Catalog-on-Demand.” The Panel is not persuaded that Complainant’s protected AMAZON mark is generic.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Additionally, Complainant urges that Respondent registered the disputed domain name in an effort to commercially benefit from its confusing similarity with the goodwill associated with Complainant’s internationally known mark. Respondent admits to having done so in an effort to sell its services to Complainant and others. As a result, the Panel finds that this attempt to commercially benefit from a disputed domain name that creates a confusion with Complainant’s mark is further evidence to support findings of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name”).
Finally, Respondent has offered to place a clearer disclaimer on the website that resolves from the disputed domain name. The Panel finds that this offer is not sufficient to avoid a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
The Panel finds that Complainant satisfied ICANN 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 <amazon-on-demand.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson
Hon. Tyrus R. Atkinson, Jr. Ms. Anne M. Wallace, Esq.
Dated: December 11, 2007.
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