Amazon.com, Inc. v. Digital
Systems c/o John Daniels
Claim Number: FA0612000871120
PARTIES
Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin
M. Hayes, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazon-dvd.com>, <amazon-music.com> and <amazon-movies.com>,
registered with Tucows Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
Hon. Tyrus R. Atkinson, Jr,, Hon. Nelson A.
Diaz, and Joel M. Grossman, Esq.,
Chairman, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 15, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 18, 2006.
On December 18, 2006, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <amazon-dvd.com>, <amazon-music.com> and <amazon-movies.com>
domain names are registered with Tucows Inc.
and that the Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 December 19, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 8, 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
postmaster@amazon-dvd.com, postmaster@amazon-music.com
and postmaster@amazon-movies.com by e-mail.
A timely Response was received and determined to be complete on January 5, 2007.
An Additional Submission from Complainant was timely received on
January 9, 2007.
On January 12, 2007 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., Hon. Nelson A. Diaz,
and Joel M. Grossman, Esq., Chairman, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it owns a very famous mark, AMAZON.COM, which
it has owned since 1996. It asserts that
each of Respondent’s domain names, <amazon-dvd.com>, <amazon-music.com> and <amazon-movies.com>
are identical to and confusingly similar to its mark, in that these
domain names fully incorporate Complainant’s mark. The domain names are further confusing in
that Amazon.com offers movies, DVDs and music for sale on its website. Complainant next contends that Respondent has
no rights or legitimate interests in the domain names. Complainant notes that Respondent’s WHOIS
records show that Respondent has never been commonly known by any of these
names. Moreover, Respondent owned the
domain names in 2004 during which time it used the domain names for business,
namely in connection with an online DVD store.
Finally, Complainant contends that the domain names were registered and
are being used in bad faith. Complainant
notes that Respondent concedes that at the time of the registration of the
domain names, Respondent was aware of the AMAZON.COM mark, and, at least for a
period of time in 2004, used the mark to compete with Complainant by selling
DVDs through an online store.
B. Respondent
Respondent contends that the term “amazon” is a common term, and cannot
be monopolized by Complainant.
Respondent further contends that it is not making any commercial use of
its domain names, and therefore it has a legitimate use of the name. Finally, Respondent contends that it did not
register the names in bad faith as the term “amazon” is generic. Respondent notes that while it was aware of
the AMAZON.COM mark when it registered its domain names, and aware of potential
confusion, it solved the problem by placing a disclaimer on its sites, alerting
the public that the sites had no connection to Amazon.com. Respondent also contends that Complainant
waited four years before instituting the current complaint. While not using this term, Respondent is
apparently arguing that under the equitable doctrine of laches, it is now too
late for Complainant to assert its rights.
C. Additional Submissions
In its Additional Submission, Complainant points out that Respondent
acknowledges its ownership of the domain names for four years, a period of time
that clearly includes the year 2004.
Complainant points out that even though Respondent claims that it has
made no commercial use of its domain names, in 2004 the domain names resolved
to an online DVD store. Thus, the domain
names were being used to divert business from Complainant’s online DVD sales to
another vendor. Complainant attaches to
its Additional Submission a letter from the proprietor of that online store,
acknowledging that the domain names were being used to direct traffic to the
online store, and noting that upon notification from Complainant, the online
store proprietor disabled this connection.
On the issue of bad faith registration, Complainant notes that in its
Response Respondent admits that when registering the domain names, it was aware
of the Complainant’s mark. In the words
of the Respondent: “And yes, someone here thought about amazon.com …” when registering
the mark. Complainant notes that
knowledge of the existence of Complainant’s mark is evidence of bad faith. As noted above, Respondent contends that
because of the potential confusion, it placed a disclaimer on its websites. Complainant contends, however, that the
disclaimer does not avoid a finding of confusion.
FINDINGS
By unanimous decision, the Panel finds as
follows:
1.
the
domain names <amazon-dvd.com>, <amazon-music.com> and <amazon-movies.com>
are confusingly similar to, or identical to Complainant’s AMAZON.COM
mark;
2.
Respondent
has no rights or legitimate interests in the domain names; and
3.
the domain names
were registered and are being used in bad faith.
DISCUSSION
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.
There is no doubt that AMAZON.COM is a very
famous mark, and has been a registered trademark since 1996. The domain names at issue here each fully
incorporate the mark, and then add a generic term such as “movies” or
“music.” Under these circumstances, the
Panel finds that the domain names are confusingly similar to Complainant’s
mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
complainant’s business.). In this case,
since Amazon.com sells movies, DVDs and music on its website, the public could
easily be confused and believe that the domain names are part of the larger
Amazon.com enterprise. While Respondent
asserts that the disclaimers it has placed on its site will alleviate any
confusion, this does not eliminate confusion.
The disclaimer could be ignored, or might not be noticed by
consumers. See Ciccone v. Parisi, D200-0847 (WIPO Oct. 12, 2000). See also Digi Int’l v DDI Sys.,
FA124506 (Nat. Arb. Forum Oct. 24, 2002).
The Panel notes that once a complainant has
made a prima facie showing of
confusion, the burden shifts to the respondent to show that it has rights and
legitimate interests in the domain name.
See Do the Hustle, LLC v. Tropic
Web D2000-0624 (WIPO Aug. 21, 2000).
Respondent cannot meet this burden.
Based on Respondent’s WHOIS listing, Respondent is not commonly known by
any of the domain names. See Gallup, Inc. v. Amish
Country Store, FA96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent did not have rights in a domain name when it was not commonly
known by that name). In addition, in its
Additional Submission, Complainant has presented evidence that in 2004, until
Complainant interceded, visitors to Respondent’s domain names were being
redirected to an online DVD store. This
was clearly an attempt to use Complainant’s mark to divert business from
Complainant’s website to a competitor which, the Panel assumes, was
compensating Respondent. This use
clearly is incompatible with the notion of legitimate interests in a domain
name.
Respondent has conceded that when it
registered the domain names it was aware of Complainant’s mark and possible
confusion, but decided that if it placed a disclaimer on the sites there would
be no confusion. Respondent’s admission
that it was aware of the AMAZON.COM mark when it registered the name is enough
to conclude that the registration and continuing use was in bad faith. See
Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000). Respondent’s bad faith is further
demonstrated by its 2004 use of the domain names to redirect internet users to
an online DVD store that competed with Complainant’s website. The disclaimers on Respondent’s website do
not obviate bad faith. See Ciccone v. Parisi, supra:
“Respondent’s use of a disclaimer on its website is insufficient to avoid a
finding of bad faith.” For all of the
foregoing reasons, the Panel concludes that the domain names were registered
and are being used in bad faith.
Finally, the Panel will briefly address
Respondent’s apparent assertion of the laches defense. First, other panels have noted that laches is
not a defense in a domain name dispute. See E.W. Scripps Co. v. Sinologic Indus., D2003-0447
(WIPO July 1, 2003) (“The Policy does not provide any defence [sic] of laches.
This accords with the basic objective of the Policy of providing an expeditious
and relatively inexpensive procedure for the determination of disputes relating
to egregious misuse of domain names.”).
But even if a laches defense were available to Respondent, it would be
of no avail. Respondent states that it has owned the domain names for four
years. That is hardly a sufficient
amount of time to create a laches defense without some assertion by Respondent
that it has been prejudiced by the delay.
While Respondent complains of the delay, it does not assert any evidence
that it was prejudiced by the delay.
Prejudice is a necessary component of the defense of laches. See
Getty v. Getty 187 Cal.App. 3d 1159, 1170 (Cal. Ct. App.
1986). Moreover, Complainant has
shown that it did not sit on its rights, because it asserts that in 2004 it did
act to protect its rights, by contacting the online DVD store to which
Respondent was diverting Complainant’s customers. Thus the laches defense, even if permitted in
UDRP cases, will not save Respondent’s case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazon-dvd.com>, <amazon-music.com> and <amazon-movies.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Tyrus R. Atkinson, Jr., Hon. Nelson A.
Diaz, and Joel M. Grossman, Esq., Chairman, Panelists
Dated: January 29, 2007
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