Amazon.com, Inc. v. Rayaneh Net
Claim
Number: FA0309000196217
Complainant is Amazon.com, Inc., Seattle, WA
(“Complainant”) represented by Kevin M.
Hayes, Esq. of Klarquist Sparkman, LLP. Respondent is Rayaneh Net, Tehran, Iran (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amazoniran.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 18, 2003; the Forum received a hard copy of the
Complaint on September 22, 2003.
On
September 22, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain name <amazoniran.com> is
registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent
is the current registrant of the name. Iholdings.Com, Inc. d/b/a
Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com,
Inc. d/b/a Dotregistrar.Com 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
September 23, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 13, 2003 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@amazoniran.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
October 21, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has 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 Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amazoniran.com>
domain name is confusingly similar to Complainant’s AMAZON.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <amazoniran.com> domain name.
3. Respondent registered and used the <amazoniran.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Amazon.com, is the holder of numerous registrations for the AMAZON.COM mark in
over 40 countries, as well as the European Union. For example, Complainant holds multiple registrations for the
AMAZON.COM mark on the Principal Register with the United States Patent and
Trademark Office (“USPTO”) including Registration No. 2,078,494 (registered on
July 15, 1997), 2,167,345 (registered on June 23, 1998) and 2,633,281
(registered on October 8, 2002).
Initially,
Complainant sold books through its <amazon.com> website and has
subsequently grown to become the world’s largest online bookseller. Additionally, Complainant’s operations have
expanded to now include a full line of goods ranging from computer products and
electronic toys to apparel and household goods, and services such as movie
listings.
Complainant’s
innovative and successful use of the Internet as a medium of commerce has made
it one of the world’s best known Internet retailers. Tens of millions of customers from over 220 countries have
purchased goods and services through Complainant’s <amazon.com>
website. In 2002, complainant recorded
revenue in excess of $3.9 billion.
Nearly one-third of Complainant’s revenue is derived from international
sales, with international sales topping $1 billion in 2002.
Respondent, who
is not a licensee of Complainant, registered the <amazoniran.com>
domain name on April 29, 2003.
Respondent is selling books from its website located at the <amazoniran.com>
domain name. In addition, Respondent
duplicated Complainant’s AMAZON.COM logo and used it at its website.
Paragraph 15(a)
of 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
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which Complainant
has rights; and
(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.
The Panel finds
that Complainant has established rights in the AMAZON.COM mark through
registration of its mark with the USPTO.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.
Respondent has the burden of refuting this assumption).
Respondent’s
domain name, <amazoniran.com>, is confusingly similar to
Complainant’s mark. Respondent has
merely added the geographic term “Iran” to Complainant’s famous AMAZON.COM
mark. Due to the similarity of the
domain name and Complainant’s mark and the fact that both Complainant and
Respondent operate within the same industry, consumers may mistakenly believe
that Respondent’s domain name is Complainant’s domain name for its services in
Iran. Thus, the Panel concludes that
the domain name is confusingly similar to Complainant’s mark. See 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 Complainant combined with a generic word or term); see also VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN
mark and the <verisignindia.com> and <verisignindia.net> domain
names where Respondent added the word “India” to Complainant’s mark); see
also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14,
2002) (finding that any distinctiveness resulting from Respondent’s addition of
a generic word to Complainant’s mark in a domain name is less significant
because Respondent and Complainant operate in the same industry).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In this
proceeding, Respondent failed to submit a Response to the Panel. Once Complainant has alleged that Respondent
does not have rights and legitimate interests in the domain name, the burden
shifts to Respondent to provide evidence that it does have rights and
legitimate interests in the domain name.
However, since Respondent has not met its burden, the Panel finds that
Respondent does not have any rights or legitimate interests in the <amazoniran.com>
domain name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (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
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a Response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Complainant
has not granted Respondent a license to the use its famous AMAZON.COM
mark. Moreover, there is no evidence
before the Panel showing that Respondent is known by the <amazoniran.com>
domain name. Consequently, the Panel
concludes that Respondent is not commonly known by the domain name pursuant to
Policy ¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark).
Respondent
is using the <amazoniran.com> domain name to sell books on the
Internet, a service that directly competes with services offered by Complainant
under its AMAZON.COM mark. Furthermore,
Respondent not only uses Complainant’s entire mark in its domain name, it even
duplicated Complainant’s logo and posted it on its website. By using Complainant’s mark, copying its
logo and offering the same services as Complainant on its website, the Panel is
led to believe that Respondent is trying to pass itself off as
Complainant. Accordingly, the Panel
finds that Respondent’s infringing use of the <amazoniran.com>
domain name is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant
online, through wholesale copying of Complainant’s website, Respondent had no
rights or legitimate interests in the disputed domain name); see also Avery
Dennison Corp. v. Ray Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003)
(finding that Respondent had no rights or legitimate interests in the disputed
domain name where it used Complainant’s mark, without authorization, to attract
Internet users to its business, which competed with Complainant).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <amazoniran.com> domain name to intentionally attract,
for commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s AMAZON.COM mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website. In addition to using Complainant’s entire AMAZON.COM mark in its
domain name, Respondent offers services that compete with Complainant and
displays a duplicated version of Complainant’s logo at its website. Clearly, Respondent went to great lengths to
make it appear that it was affiliated with or endorsed by Complainant and it is
likely that Internet users will believe that Respondent’s website is somehow
associated with Complainant.
Accordingly, the Panel finds that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also Busy Body, Inc. v. Fitness
Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where
Respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as Complainant).
Furthermore,
using another’s mark to pass oneself off as another is bad faith in
itself. At its website, Respondent gave
Internet users the impression that it was affiliated or associated with
Complainant’s business. Respondent’s
attempt to pass itself off as Complainant is likely to result in consumers
erroneously believing that the <amazoniran.com> domain name is
simply Complainant’s domain name for Iran.
Thus, the Panel finds that Respondent’s attempt to pass itself off as
Complainant is evidence that Respondent registered and used the <amazoniran.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
Respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also
DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding
that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave
consumers the impression that Complainant endorsed and sponsored Respondent’s
website).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <amazoniran.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
October 28, 2003
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