Amazon.com, Inc. v. .. c/o Jason Banks
Claim Number: FA0608000785586
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 .. c/o Jason Banks (“Respondent”), 12765 SW 112TH TER, Miami, FL 33186.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amazoj.com>, registered with Wild West Domains, Inc.
The undersigned certify 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.
The Honourable Neil Anthony Brown QC, Honorable Irving H. Perluss and Professor Jeffrey M. Samuels, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2006.
On August 29, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <amazoj.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 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@amazoj.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 27, 2006, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC, Honorable Irving H. Perluss and Professor Jeffrey M. Samuels 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
The Complainant alleges that the contentious domain name <amazoj.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of Policy ¶ 4, the domain name <amazoj.com> is identical or confusingly similar to the Complainant’s registered trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on several registered AMAZON trademarks, evidence of which is provided in the Complaint. It then says that it is self-evident that the domain name <amazoj.com> is confusingly similar to the AMAZON mark, because the letter ‘n’ in the trademark has been replaced by the letter ‘j’ in the domain name, but that otherwise the two words are exactly the same.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name <amazoj.com> because the facts show an obvious intention by the Respondent to benefit from the reputation of the renowned AMAZON mark, the Respondent is not named “amazoj” and it has not been authorized to use the AMAZON name or mark. Nor, it is argued, could the Respondent bring itself within any of the provisions of Policy ¶ 4(c).
Finally,
the Complainant contends that the domain name <amazoj.com> was registered and is being used in bad faith. It
contends that this is so because the Respondent must have been aware of the
existence of the famous AMAZON mark and could only have chosen the domain name
to attract visitors to its website by targeting users of the internet who
mistype or ignore the correct spelling of AMAZON. Moreover, it is argued, this must have been done for commercial
purposes, for the website associated with <amazoj.com> domain name provides links to websites which promote
the sale of products that are in competition with the Complainant as well as
goods and services which have no connection with the Complainant.
B. Respondent failed to submit a Response in this proceeding.
The Complainant is one of the world’s best-known
retailers of books and also of a wide range of other goods and services.
Millions of customers use its website <amazon.com> and its sales run into
billions of dollars each year. Amazon is thus a very famous brand name.
The Complainant has registered AMAZON, AMAZON.COM and
other names in the AMAZON family as trademarks with the United States Patent
and Trademark Office and also in more than 40 other countries around the world.
Amongst its registered trademarks are Registered
Service Mark No. 2.078,496 for AMAZON.COM, registered with the United States
Patent and Trademark Office (USPTO) on July 15, 1997 and many other trade and
service marks throughout the
world, details of which are set out in the Complaint.
Respondent registered the domain name <amazoj.com> on
September 27, 2003. The domain name resolves to a website that carries links to
businesses providing shopping channels, hotel booking agencies, movie
downloads, mortgage services and a wide range of other blandishments.
The Panel finds that the allegations contained in Complainant have been established. Thus, the Panel finds that the domain name in dispute <amazoj.com> is confusingly similar to Complainant’s trademark AMAZON, that Respondent has no rights or legitimate interests in the domain name and that Respondent’s registration and use of the domain name were in bad faith.
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.
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 the 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) .
The Panel will therefore deal with each of the above three elements in turn.
The Panel finds that the domain name <amazoj.com> is confusingly similar to the Complainant’s trademarks
AMAZON, AMAZON.COM and all of the other AMAZON-family trademarks of which the
Complainant has given evidence and details of which are set out in the
Complaint. That is so for the following reasons. First, the domain name is
clearly similar to the trademark, as only the letter ‘n’ has been omitted from
the AMAZON trademark and been substituted in the domain name by the letter ‘j’.
Apart from that minor change, the two words are identical.
Secondly, the similarity is
confusing, because the substance of the trademark constitutes the domain name
and the objective bystander would naturally assume that the domain name was
referring to the famous AMAZON trademark and that this was intended to be so.
Moreover, as the Complainant points out, the close proximity on the computer
keyboard of the letter ’j’ to the letter ‘n’ makes it virtually certain that at
least some Internet users who arrive at the website to which <amazoj.com> resolves, will have
done so because they have made a
mistake in typing the Complainant’s name and URL.
The situation is therefore
virtually identical to that in Amazon.com,
Inc. v. Jeonggon, FA 306578 (Nat. Arb. Forum Sept. 21, 2004), cited by the
Complainant, where the domain name at issue was <amazob.com>.
The Panel’s observation in that case is equally applicable to the present
case and, in the interests of consistency, the Panel will quote it here:
The
Panel is convinced from the evidence that the <amazob.com> domain name
registered by Respondent is confusingly similar to Complainant’s AMAZON marks
because the domain name merely substitutes the letter “n” with the letter “b.”
The misspelling of Complainant’s mark will take advantage of a common
typographical error made by Internet users on keyboards where the two letters
are adjacent. The substitution of the
letter “n” with the letter “b” does not negate the confusing similarity of
Respondent’s domain name. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); 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).
Moreover, the generic Top Level Domain suffix ‘. com’ in the domain name must be disregarded, for it has long been held that this addition in a domain name cannot avoid the conclusion of identicality or confusing similarity. See Foundation Le Corbusier v. Mercado M, D2004-0723 (WIPO Nov. 11, 2004).
There is also no doubt that the Complainant has rights in
the trademarks relied on, for it is apparent from the exhibits that it is the
registered owner of them.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
Under Policy ¶ 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of Policy ¶ 4(c), it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The
Panel’s task in deciding if a registrant has any rights or legitimate interests
in a domain name is made more difficult when, as in the present case, the
registrant is in default. In such a case, however, paragraph 14(b) of the
Rules enables the Panel to draw appropriate inferences from that default.
Moreover,
it is now well–established that if a Complainant can make out a prima facie case
in support of the allegation that the Respondent has no rights or legitimate
interests in the domain name, the burden of proof will shift to Respondent to
show that it does have such rights or interests. In Amazon.com, Inc. v. ECC, FA 699632 (Nat. Arb. Forum
June 19, 2006), the observations of the Panel are directly apposite to the
present case:
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 names. 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 the 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 is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests exist); further see 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
Moreover, as in Amazon.com, Inc. v. ECC, Complainant has alleged and Respondent has not denied that Respondent has not been commonly known by the disputed domain names: Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where the respondent is not known by the mark).
Accordingly, as the Respondent is in default and has not responded to the Complainant’s assertions in the Complaint, the Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, draws the inference that the Respondent has no rights or legitimate interests in the domain name <amazoj.com>. It is appropriate to draw that inference not only because of Respondent’s default but because, first, if the Respondent had any such rights or interests, it was a simple matter to say what they were. Moreover, because of the similarity between the domain name and the trademark, it is apparent that the Respondent has appropriated and slightly altered the spelling of the Complainant’s trademark without permission, giving rise to the prima facie assumption that he did so for an illegitimate purpose, namely registering the domain name with the intention of misleading consumers. If there were a more innocent or legitimate explanation for doing this, the Respondent could have given it, but this he has failed to do.
In the absence of such an explanation the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in his favour.’ See Pharmacia & Upjohn AB v. Dario H. Romero, D2000-1273 (WIPO Nov. 13, 2000).
Furthermore, the Respondent had the opportunity to bring itself within Policy ¶ 4(c) which sets out the criteria mentioned above, any one of which, if proved, ‘is to be taken to demonstrate’ the registrant’s rights or legitimate interests in the domain name. However, the Respondent has not endeavoured to establish even one of the criteria set out in Policy ¶ 4(c), giving rise to the inevitable inference that it could not do so by credible evidence.
All of these facts support the conclusion that the Respondent has no rights or legitimate interests in the domain name and that conclusion is re-enforced by the evidence that the Complainant has not licensed the Respondent to use its well-known trademark nor to register a domain name incorporating that mark.
For all of these reasons the Complainant has shown that the Respondent has no rights or legitimate interests in the domain name and the Complainant has therefore made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further guidance on how to implement this requirement is to be found in Policy ¶ 4(b), which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The starting point in this inquiry must surely be that the Respondent, like virtually everyone else, must have known of the Complainant’s famous AMAZON mark at the time he registered the domain name and at all other times whilst he has been using it. That being so, he could not have chosen or subsequently used the word “amazoj” in his domain name for any reason other than to confuse internet users and by that means to attract them to a website with a name virtually the same as that of the famous mark and to make money from doing so.
That is, in itself, evidence of bad faith, both generally and specifically within the meaning of Policy ¶¶ 4(b)(iii) and (iv). In this regard the Panel follows several previous UDRP decisions to the same effect. See Amazon.com, Inc. v. The data in Bulkregister.com's WHOIS database is p, et al, FA 293737 (Nat. Arb. Forum Sept. 2, 2004) (transferred the domain names <aamazon.com>, <amaazon.com> and <amazzon.com> and found bad faith as, “[t]he act of typosquatting itself evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Amazon.com, Inc. v. Kiansu Thoi, FA 231669 (Nat. Arb. Forum Mar. 19, 2004) (transferred the domain name <amzon.com> and finding that typosquatting “disrupts the business of a competitor and supports findings of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also KnightRidder.com/Knight Publ’g Co. v. Baltic Consultants Ltd., FA 96944 (Nat. Arb. Forum Apr. 30, 2001).
The Complainant also contends that the facts of the case bring it within Policy ¶ 4(b)(i) as the Respondent’s conduct amounts to a proposal to rent the domain name to the Complainant. This is so, the Complainant contends, because the Respondent, in what is a clear admission evidenced in the Complaint, has demanded protection money which he euphemistically calls ‘affiliate commission’, in return for pointing the domain name to the Complainant’s site.
The Panel agrees with this submission, for the conduct just described is a demand for rent and it puts the Respondent within the provisions of Policy ¶ 4(b)(i) so far as the registration of the domain name is concerned and also, by necessary inference, its use. Moreover, the Complaint evidences a clear admission that the Respondent registered the domain name ‘primarily’ to implement its scheme of demanding rent, thus putting it even more squarely within the provisions of Policy ¶ 4(b)(i).
As the facts of the case come within at least three of the provisions of Policy ¶ 4(b), the Complainant has therefore established the third of the three elements that it must prove.
Accordingly, it is Ordered that the <amazoj.com> domain name be TRANSFERRED from Respondent to Complainant.
The
Honourable Neil Anthony Brown QC, Chair
Honorable Irving H. Perluss, Panelist
Professor Jeffrey M. Samuels, Panelist.
Dated: October 11, 2006
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