Amazon.com, Inc. v. Dynamic Ventures c/o Yitzchak (Itzak) Ehrlich
Claim Number: FA0711001112201
Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin
M. Hayes, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazondeveloper.org>, registered with GoDaddy.com, Inc.
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.
Hon. Paul A. Dorf, (Ret.), David E. Sorkin, and Joel M. Grossman, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 21, 2007.
On November 21, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amazondeveloper.org> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 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 firstname.lastname@example.org by e-mail.
On December 17, 2007, Respondent requested, with Complainant’s consent, an extension of time by which to file a Response to the Complaint. The National Arbitration Forum subsequently granted Respondent’s request, extending the date by which a timely Response could be filed to January 7, 2008.
A timely Response was received and determined to be complete on January 7, 2008.
An Additional Submission from Complainant was timely received on January 14, 2008, and an Additional Response from Respondent was received on January 20, 2008.
On January 17, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Paul A. Dorf, (Ret.), David E. Sorkin, and Joel M. Grossman, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends first that Respondent’s domain name is identical to or confusingly similar to Complainant’s well-established mark. Complainant points to the length and strength of its mark, as well as its worldwide trademark registrations. Complainant asserts that the domain name fully incorporates its mark, and that the domain name is confusingly similar to the mark because Internet users will be confused as to whether Respondent is sponsored by or associated with Complainant. Second, Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant asserts that Respondent is not known by the domain name, but instead is known by the name Dynamic Ventures. Additionally, Complainant asserts that Respondent is not using the name in connection with a bona fide offering of goods or services, because it is trading on the fame of Complainant’s mark. Complainant also contends that Respondent is not using the name for legitimate noncommercial purposes. Finally, Complainant contends that the name was registered and is being used in bad faith. Complainant points out that the name was registered with full knowledge of the mark, and that the name was registered, and is being used, in order to attract Internet users, for commercial gain, through creating a likelihood of confusion as to the source or affiliation with Complainant. In short, Internet users would be confused as to whether a website known as <amazondeveloper.org> might be a site owned or endorsed by Amazon.com.
Respondent does not dispute the fame of Complainant’s mark, but does contend that there is no likelihood of confusion. Respondent asserts that it is engaged in a bona fide offering of goods and services, and therefore has legitimate rights and interests in the name. Respondent finally contends that it did not register, and is not using the name, in bad faith. Respondent contends that the only way it could be found to have acted in bad faith under the Policy would be if it intentionally attempted to attract Internet users, for commercial gain, to its website by creating a likelihood of confusion as to an affiliation with Amazon.com. No likelihood of confusion, no bad faith. Respondent contends that there is no likelihood of confusion because its website is so different from Complainant’s website. The websites have different color schemes, fonts and layouts. There are no products for sale on Respondent’s website, and no indication that it is related to Amazon.com. Because there could be no confusion, Respondent contends that there can be no finding of bad faith registration or use.
C. Additional Submissions
In the parties’ Additional Submissions each reiterates what had been contended in the initial filings, and need not be discussed further.
The Panel unanimously finds that:
1) the domain name is identical to, or confusingly similar to, Complainant’s established mark;
2) Respondent has no rights or legitimate interests in the name; and
3) Respondent registered and is using the name in bad faith.
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.
Complainant’s very famous mark and its worldwide trademark registrations easily establish its rights in the mark. Respondent’s domain name is confusingly similar to the Complainant’s mark for two reasons. First, it wholly appropriates the mark, adding only the generic term “developer.” Many panels have determined that there is confusing similarity when a generic term is added to a famous mark. See DIRECTV, Inc. v. Satellite Use LLC (Nat. Arb. Forum Dec. 10, 2007) (adding the generic word “order” to the Directv mark held to be confusing similarity). See also Dow Jones & Co., Inc. v. Dow Jones Update, D2000-0495 (WIPO Aug. 14, 2000) (adding the term “online” to the Dow Jones mark held confusingly similar). In this case, the generic term actually adds to the confusion, since Internet users might assume that an “Amazon developer,” like a Maytag repairman, is someone authorized by a famous company to provide services in connection with its products. Just as the domain name <orderdirectv.com>, supra, was held to be confusing, because users might think that was the place to order satellite television from Directv, so too here users might think that the Respondent’s website was the place to engage an Amazon-authorized developer to develop software compatible with Amazon. For these reasons the Panel determines that the domain name is identical to or confusingly similar to a mark in which the Complainant has rights.
The Panel notes that once a complainant makes a prima facie case in support of its contentions, the burden shifts to the respondent to show that it does have rights or legitimate interests in the name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent cannot meet this burden. Respondent is not known by the domain name, it is known by the name Dynamic Ventures. Respondent is not using the name in connection with a bona fide offering of goods and services, because it is trading on Complainant’s famous mark. See Madonna Ciccone v. Dan Parisi, D2000-0847 (WIPO Oct. 16, 2000) (“…use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services….To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”). See also Las Vegas Sands, Inc. v. Sands of the Caribbean, D2001-1157 (WIPO Apr. 25, 2001) (“Where a Complainant’s trademark is well-known – as it is in this case – registration of a confusingly similar domain name without a good faith business justification cannot be legitimate.”) Moreover, while Respondent might be asserting a nominative fair use argument based on its need to inform users that it is developing software for Amazon.com, it is clear from Respondent’s website that it is providing general software development, and does not limit its business to developing software solely in connection with Complainant. See Porsche AG v. Limex LLC, D2003-0649 (WIPO Nov. 27, 2003) (rejecting respondent’s nominative fair use claim, largely on the basis that its use of the domain name was not limited to products properly described by the corresponding trademark). Finally, Respondent does not contend, nor could it, that the name is being used for a non-commercial purpose. For all of the above reasons, the Panel concludes that Respondent has no rights or legitimate interests in the name.
Respondent does not dispute that it was aware of the Complainant’s mark at the time of registration. Indeed, Respondent’s principal was in Complainant’s Associates program prior to registering the name. Respondent freely admits that the purpose of registering and using the name is to offer development services to businesses wishing to do business with Complainant. Respondent recognizes, as it must, that under the Policy bad faith registration and use includes “intentionally attempting to attract, for commercial gain, Internet users to its web site …by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site.” (Policy ¶ 4(b)(iv)). The Panel determines that this is precisely what Respondent has done. Respondent, very well aware of the Complainant’s mark, has intentionally attempted to attract users to its site by creating confusion over whether it is sponsored by, or affiliated with Complainant. See AOL LLC v. iTech Ent, LLC FA 123933 (Nat. Arb. Forum July 21, 2006). Respondent’s sole defense is that there is no likelihood of confusion because the color scheme, font and layout of its website is completely different from Amazon.com. This misses the point, which is whether Internet users, perhaps with the aide of search engines, have come upon Respondent’s domain name and might believe that Respondent is affiliated with Complainant in some manner. The Panel, which has already determined that there is confusing similarity in this case, rejects Respondent’s contention that there is none. Because Respondent is using the domain name to attract Internet users to its website by creating a likelihood of confusion as to its affiliation with Complainant, the Panel determines that the name was registered in, and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazondeveloper.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Paul A. Dorf (Ret.), David E. Sorkin,
and Joel M. Grossman, Chair, Panelists
Dated: January 25, 2008
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