Amazon.com, Inc. v. Kiansu Thoi
Claim
Number: FA0401000231669
Complainant is Amazon.com, Inc. (“Complainant”),
represented by James E. Geringer, of Klarquist Sparkman LLP,
One World Trade Center, Suite 1600, 121 SW Salmon Street, Porland, OR 97204. Respondent is Kiansu Thoi (“Respondent”), 1A Hoang Dieu Street, Hanoi, 84-4,
Vietnam.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amzon.com>, registered with iHoldings.com,
Inc. d/b/a Dotregistrar.Com.
The
undersigned certify 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 Panel consists of Honorable Irving H. Perluss
(Ret.), Honorable Ralph Yachnin (Ret.) and Honorable Carolyn Marks Johnson
(Ret.). Former Judge Johnson prepared
the Decision of the Panel.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically January 26, 2004; the Forum received a hard copy of the
Complaint January 26, 2004.
On
January 27, 2004, iHoldings.com, Inc. d/b/a Dotregistrar.Com confirmed by
e-mail to the Forum that the domain name <amzon.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
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
February 3, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 23, 2004, 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@amzon.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
March 8, 2004, pursuant to Complainant's request to have the dispute decided by
a three-member Panel, the Forum appointed the above-named former judges as
Panelists.
Having
reviewed the communications records, the Administrative Panel (the "Panel")
finds that the Forum 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. The domain name registered by Respondent,
<amzon.com>, is confusingly similar to Complainant’s AMAZON.COM
mark.
2. Respondent has no rights to or legitimate
interests in the <amzon.com> domain name.
3. Respondent registered and used the <amzon.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Panel finds
that Complainant established that the disputed domain name <amzon.com>
is confusingly similar to Complainant’s protected Amazon.com mark. Further,
Complainant established that the Respondent has no rights to or legitimate
interests in the mark or domain name.
The Panel finds that Respondent registered the domain name in bad faith
and that Complainant should prevail in this proceeding.
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
will draw such inferences as the Panel 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.
Complainant is
Amazon.com, Inc. Complainant registered
the AMAZON.COM mark June 15, 1997 (Reg. No. 2,078,496). The AMAZON.COM mark is also the company’s
domain name, <amazon.com>, housing the entire retail business on-line.
Complainant established with extrinsic proof that its mark is distinctive. 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).
The Panel finds
that Respondent’s <amzon.com> domain name is confusingly similar
to Complainant’s AMAZON.COM mark because the only difference is the omission of
the letter “a,” which does not distinguish the domain name from the mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see
also Hewlett-Packard Co. v. Zuccarini,
FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
Complainant met the requirements of ICANN Policy ¶ 4(a)(i), showing
“confusing similarity.”
Complainant
established with extrinsic proof in this proceeding that the disputed domain
name is confusingly similar to a mark in which Complainant has exclusive
rights. Respondent did not file a Response and in such circumstances, the Panel
may accept all reasonable inferences in the Complaint to be true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In
the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true).
Complainant
alleges that Respondent’s website refers to Complainant’s business (by opening
a “zero-sided” AMAZON.COM window).
Additionally, Complainant alleges that Respondent is attempting to earn
“credit” under Complainant’s affiliate program. The Panel finds that Respondent’s use of the disputed domain name
is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i),
and it is not a fair use of the domain name, pursuant to Policy ¶
4(c)(iii). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum
Apr. 10, 2002) (finding Respondent had no rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii) where it
used the domain name <deluxeform.com> to redirect users to Complainant’s
<deluxeforms.com> domain name and to receive a commission from
Complainant through its affiliate program); see
also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services).
Respondent’s
WHOIS information establishes that Respondent is not commonly known by the
AMAZON.COM mark or by the disputed domain name, <amzon.com>, pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel notes
that Respondent’s failure to file a Response in this action does not
automatically imply that Respondent lacks rights in the disputed domain name. See
VeriSign
Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not
automatically lead to a ruling for Complainant). However, taking into consideration the full circumstances of the
proof offered in this case, the Panel finds that the overwhelming weight of the
evidence supports Complainant’s allegations.
Complainant met the requirements of ICANN Policy ¶ 4(a)(ii), showing that
Respondent had “no rights or legitimate interests.”
Complainant
alleges that Respondent’s registration and use of the disputed domain name is
typosquatting and that it preys on Complainant’s customers who mistype
Complainant’s mark and domain name in search of Complainant’s goods. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”); see also Sports Auth. Mich., Inc. v.
Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (stating that,
“Redirecting Internet users attempting to reach a complainant’s website in
order to gain a profit off of a complainant is one example of bad faith use and
registration under the Policy”). The
Panel finds that such conduct disrupts the business of a competitor and
supports findings of bad faith pursuant to Policy ¶ 4(b)(iii). See Sports Auth. Mich., Inc. v. Elias
Skander d/b/a Web Registration Service, FA 135598 (Nat. Arb. Forum Jan. 7,
2002) (stating that “[b]y registering the “typosquatted” domain name in
[Complainant’s] affiliate program, Respondent profits on the goodwill of
[Complainant’s] protected marks and primary Internet domain names,” evidence of
bad faith registration and use); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(transferring the <fossilwatch.com> domain name from Respondent, a watch
dealer not otherwise authorized to sell Complainant’s goods, to Complainant).
Complainant met the requirements of Policy ¶ 4(a)(iii), showing “bad
faith registration and use.”
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amzon.com> domain
name be TRANSFERRED from Respondent to Complainant.
Hon. Irving H. Perluss (Ret.), Hon. Ralph
Yachnin (Ret.),
and Hon. Carolyn Marks Johnson (Ret.),
Panelists
Dated: March 19, 2004.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page