National Arbitration Forum

 

DECISION

 

Amazon.com, Inc. v. Domain Holdings

Claim Number: FA0508000535530

 

PARTIES

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 Domain Holdings (“Respondent”), P O Box 98, Morrisville, PA 19067, US.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amazoncandies.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.

 

Hon. Tyrus R. Atkinson, Jr., Esq., Carol Stoner, Esq. and David P. Miranda, Esq., Chair as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2005.

 

On August 9, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the domain name <amazoncandies.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 12, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 1, 2005 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@amazoncandies.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 9, 2005, 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., Carol Stoner, Esq. and David P. Miranda, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant, Amazon.com, Inc. (hereinafter “Complainant”), contends that it is the owner of registered trademarks and service marks for AMAZON.COM® and other registered marks.  Complainant has seven federally registered marks for a variety of goods and services and has registered its AMAZON.COM® and other AMAZON related marks in over forty other countries.  Complainant contends that Respondent’s domain name, <amazoncandies.com>, is confusingly similar to Complainant’s trademark and its AMAZON marks and that the disputed domain name was registered in bad faith.

 

Complainant contends that its AMAZON.COM marks are inherently distinctive, attracting tens of millions of customers from over 220 countries, with reported revenue in excess of 3.9 billion dollars in 2002.  Complainant has spent over 240 million dollars in advertising its AMAZON marks.  In addition to having become the world’s largest online book seller, Complainant’s operations have expanded to include a full line of goods that include the offering of food and candy products on its website.

 

Complainant contends that Respondent’s registration and use of the domain name is an effort to use Complainant’s famous name and marks to mislead and divert internet users to a competing website.  Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products.

 

B. Respondent

 

None.

 

FINDINGS

 

Complainant has established that the <amazoncandies.com> domain name registered by Respondent is confusingly similar to the registered trademarks and service marks of Complainant; that Respondent has no rights or legitimate interests in the domain name; and that the domain name has been registered and is being used in bad faith.  As such, the Panel finds that relief requested by Complainant shall be granted and the <amazoncandies.com> domain name shall be transferred to Complainant.

 

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.”

 

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) (“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 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.

 

Identical and/or Confusingly Similar

                                                                                    

Complainant asserts that the AMAZON.COM mark is known throughout the U.S. and worldwide.  Complainant contends that it holds several registrations for the mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 2,078,496 and 2,167,345 (registered on July 15, 1997 and June 23, 1998, respectively).  Complainant has established rights in the AMAZON.COM mark pursuant to Policy ¶ 4(a)(i).  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.  The respondent has the burden of refuting this presumption).

 

The Panel finds that Respondent’s <amazoncandies.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark because the domain name fully incorporates the mark and merely adds the generic term “candies” to the mark.  Respondent’s addition of the generic term “candies” is insufficient to distinguish the domain name from the 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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

Complainant contends that Respondent is using the <amazoncandies.com> domain name to operate a website that offers candy products in direct competition with Complainant.  Thus, Respondent’s competing use of the domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

Furthermore, Complainant asserts that Respondent is neither commonly known by the disputed domain name nor authorized to register domain names featuring Complainant’s AMAZON.COM mark.  Thus, Respondent has not established rights or legitimate interests in the <amazoncandies.com> 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is using the <amazoncandies.com> domain name to operate a website that directly competes with the services offered by Complainant.  Such use constitutes disruption pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Respondent is capitalizing on the confusing similarity between Respondent’s domain name and Complainant’s mark to divert Internet users to Respondent’s competing commercial website.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).

 

Respondent registered the <amazoncandies.com> domain name with actual or constructive knowledge of Complainant’s rights in the AMAZON.COM mark due to Complainant’s registration of the mark with the USPTO and the immense international fame attached to the mark.  Respondent’s registration of a domain name that is confusingly similar to Complainant’s mark, despite actual or constructive knowledge of the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).

 

 

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 <amazoncandies.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

David P. Miranda, Esq., Chair

Hon. Tyrus R. Atkinson, Jr., Esq., Carol Stoner, Esq. as Panelists.
Dated: September 23, 2005

 

 

 

 

National Arbitration Forum