Amazon.com, Inc. v. Ou Sadaharu c/o Sadaharu Ou
Claim Number: FA0607000743830
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 Ou Sadaharu c/o Sadaharu Ou (“Respondent”), 1-1, Tokyo Japan.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amazonxx.com>, registered with GMO INTERNET, INC. d/b/a ONAMAE.COM AND DISCOUNT-DOMAIN.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Tyrus R. Atkinson, Jr., Esq., Sandra J. Franklin, Esq., and Terry F. Peppard, Esq., chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2006. The Complaint was submitted in both Japanese and English.
On August 1, 2006, GMO INTERNET, INC. d/b/a ONAMAE.COM AND DISCOUNT-DOMAIN.COM confirmed by e-mail to the National Arbitration Forum that the <amazonxx.com> domain name is registered with GMO INTERNET, INC. d/b/a ONAMAE.COM AND DISCOUNT-DOMAIN.COM and that Respondent is the current registrant of the name. GMO INTERNET, INC. d/b/a ONAMAE.COM AND DISCOUNT-DOMAIN.COM has verified that Respondent is bound by the GMO INTERNET, INC. d/b/a ONAMAE.COM AND DISCOUNT-DOMAIN.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 August 3, 2006, a Japanese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 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@amazonxx.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2006, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Tyrus R. Atkinson, Jr., Esq., Sandra J. Franklin, Esq., and Terry F. Peppard, Esq., chair, as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is one of the world’s best known Internet retailers and the world’s largest on-line bookseller.
Complainant has for many years marketed its goods and services under its AMAZON and AMAZON.COM service marks, which have become famous worldwide.
Complainant’s service marks have been registered with the pertinent national authorities in the United States and forty other countries, including Japan, Respondent’s putative country of residence.
Respondent registered the disputed domain name in February of 2005, long after Complainant’s service marks had become famous and been registered worldwide.
The contested domain name redirects Internet users to a pornographic website having nothing to do with Complainant or its business.
Respondent has never been commonly known by the subject domain name.
Respondent is not associated with any legitimate use of Complainant’s marks.
Respondent’s domain name is confusingly similar to Complainant’s AMAZON and AMAZON.COM marks.
Respondent does not have any rights or legitimate interests in the <amazonxx.com> domain name.
Respondent uses Complainant’s registered marks in its domain name in order to benefit from Complainant’s fame and good will.
Respondent registered and uses the <amazonxx.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to service marks in which Complainant has rights; and
(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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has rights in the AMAZON and AMAZON.COM marks through its mark registrations with the pertinent national authorities, which pre-date Respondent’s domain name registration. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant established rights in the GOOGLE mark through its holding of numerous trademark registrations worldwide).
Complainant’s rights in its mark thus having been established, we confront the question of identicality-confusing similarity as between Complainant’s marks and Respondent’s domain name. In this regard, it is undisputed that Respondent’s domain name is confusingly similar to the competing marks as alleged in the Complaint. Indeed the domain name incorporates the marks in their entirety, and merely adds the characters “xx”. This addition is insufficient to distinguish the domain name from the marks within the meaning of Policy ¶ 4(a)(i). See, e.g., L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum Jul. 9, 2002) (“The subject domain name differs from the complainant’s mark only by the addition of “xxx.” This is not a distinguishing addition.”).
To the same effect, see Victoria’s Secret, et al. v. Tri X Group, Ltd., FA 96540 (Nat. Arb. Forum Mar. 9, 2001):
The domain name <victoriasxxxsecrets.com> is
confusingly similar to Complainant’s mark because the only difference is the
insertion of the letters “xxx” within Complainants’ mark.
The same can be said of Respondent’s addition, to the marks here in question, of the suffix “xx,” a truncated variant of “xxx.”
The Panel therefore finds that the requirements of Policy ¶
4(a)(i) have been satisfied by the evidence of record.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of such an allegation, the burden shifts to Respondent to show that it has protectable rights or interests in the domain name in question. Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does infer that Respondent has no rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent upon that 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests in its domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such rights or legitimate interests exist); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s failure to respond to the Complaint
functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name.
In this connection, we also note that Complainant alleges,
and Respondent does not deny, that Respondent has not been commonly known by
the disputed domain name. See, e.g, Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent
did not have rights in a domain name where, among other things, that respondent
was not commonly known by the challenged domain name).
Finally,
we conclude from the undisputed evidence before us that Respondent’s use of
Complainant’s AMAZON and AMAZON.COM mark in a domain name that redirects
Internet users to an adult-oriented website demonstrates that Respondent is not
using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v.
Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that a
respondent’s use of the <targetstore.net> domain name to redirect Internet users to a pornographic website
did not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name
under Policy ¶ 4(c)(iii)); see also Paws, Inc. v. Zuccarini, FA
125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name
that is confusingly similar to an established mark to divert Internet users to
an adult-oriented website “tarnishes Complainant’s mark and does not evidence
noncommercial or fair use of the domain name by a respondent”).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied by Complainant’s proofs.
We may begin our discussion under this heading with the observation that Respondent’s linking of the contested domain name, which is confusingly similar to Complainant’s famous registered mark, to a blatantly pornographic web site is itself sufficient evidence of bad faith for purposes of Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO Jun. 27, 2000); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003).
To this may be added the fact that it appears from the
record that Respondent registered the contested domain name with either actual
or constructive knowledge of Complainant’s rights in the marks AMAZON and
AMAZON.COM by virtue of Complainant’s prior registrations of those marks with
the pertinent national authorities worldwide.
Registration and use of a confusingly similar domain name despite such
actual or constructive knowledge, without more, evidences bad faith within the
meaning of Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000); see also Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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 <amazonxx.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Esq., Chair
Hon. Tyrus R. Atkinson, Jr., Esq. and Sandra J. Franklin, Esq., Panelists
Dated: September 14, 2006
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