Amazon.com, Inc. v. J J Domains
Claim Number: FA0507000514939
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 J J Domains ("Respondent"), East Bay, 44150 Wasau, Wisconsin.
The domain name at issue is <www-amazon.com>, registered with Gandi.
The undersigned certifies 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.
Mark McCormick, Robert T. Pfeuffer, and Edward C. Chiasson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2005.
On July 18, 2005, Gandi confirmed by e-mail to the National Arbitration Forum that the domain name <www-amazon.com> is registered with Gandi and that Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi 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 July 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 8, 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 firstname.lastname@example.org 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 August 19, 2005, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Mark McCormick, Robert T. Pfeuffer and Edward C. Chiasson 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:
1. Respondent's <www-amazon.com> domain name is confusingly similar to Complainant's AMAZON.COM mark.
2. Respondent does not have any rights or legitimate interests in the <www-amazon.com> domain name.
3. Respondent registered and used the <www-amazon.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Amazon.com is one of the world's best-known Internet retailers. Amazon.com sells books through its Amazon.com Internet website under its AMAZON trademarks and has become the world's largest online bookseller. Amazon.com further offers goods ranging from computer products and electronics to toys, apparel, and household goods, and services such as movie listings.
Tens of millions of customers from over 220 countries have purchased goods through Amazon.com's <amazon.com> website. In 2004, Amazon.com had sales of more than US $6.9 billion. This was in addition to sales of $5.2 billion in 2003 and $3.9 billion in 2002. Further, Amazon.com has spent over US $240 million on advertising featuring its AMAZON trademarks since 1996. This shows the high degree of fame of the AMAZON.COM brand.
Amazon.com's rights in its AMAZON trademarks also are evidenced by trademark registrations in over forty nations, as well as the European Union.
In addition to these and other AMAZON registrations in the United States, Complainant has registered its AMAZON.COM and other AMAZON-family marks in over forty other countries and political communities around the globe, including the European Union, Australia, Canada, the People's Republic of China, Indonesia, Israel, Japan, Kenya, Malaysia, Mexico, Panama, Peru, Saudi Arabia, Singapore, South Korea, Sweden, Switzerland, Taiwan, and Turkey.
1. Confusing similarity. Respondent has merely added the "www-" prefix to Complainant's famous mark. The domain name registered by Respondent is very similar to Complainant's mark.
Adding to the confusion is the fact that on the German keyboard the "-" is adjacent the "." as shown in Exhibit I. This shows that not only is the domain name registered by Respondent a common misspelling, but also a common typo for German Internet users. Complainant's registration for its AMAZON mark in Germany (though its subsidiary, Amazon.de GmbH), is noted in Exhibit F.
2. Respondent's lack of rights or legitimate interests. Complainant has not licensed or authorized Respondent's use of <www-amazon.com>. Further, Respondent registered the disputed domain name December 18, 2001, years after Amazon.com began offering books and related goods under its AMAZON marks, after Complainant's name and mark had become well-known, and after Complainant's application for and the issuance of U.S. Reg. No. 2,078,496 for AMAZON.COM.
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. The domain simply redirects Internet users to the www.clickabove.com website that has links to the websites of others, rather than offering any goods or services by Respondent.
Neither does it appear that Respondent has been commonly known by <www-amazon.com>. The information given in Respondent's WHOIS records shows that Respondent is known as J J Domains rather than the disputed domain name. Exhibit H (WHOIS record). Additionally, given the fame of Complainant's marks, Respondent should not be considered to have been commonly known by the disputed domain name. Most consumers would associate domain names that are confusingly similar to Complainant's trade name and marks with Complainant.
3. Bad faith use. The fact that Respondent deliberately chose Complainant's famous AMAZON.COM mark for use in the typo <www-amazon.com> domain name is sufficient evidence of Respondent's bad faith.
Moreover, Respondent knew (or should have known) of Complainant's world famous name and marks when he registered the disputed domain name.
In also appears that Respondent is attempting to profit from its cybersquatting. The domain for the www.clickabove.com website, to which the disputed domain resolve,s lists Carloe Natiche as the "person" in the WHOIS record, just as in the WHOIS record for the disputed domain. The Panel finds that the true domain owners for these domains are the same or related. Because Respondent had knowledge of Complainant's name and marks (either actual or constructive), the only plausible reason for his registration of the disputed domain name was to try to divert traffic from Complainant's website. The Panel finds that this diversion is for commercial gain, most likely through referral fees for the redirection to the www.clickabove.com website and the links provided on that site.
By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website other than Complainant's by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that other website and products.
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. webnetmarketing, 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 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 has established rights in the AMAZON.COM mark through registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,078,496 issued July 15, 1997). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) ("Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark."); see also 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.").
Moreover, Respondent's <www-amazon.com> domain name is confusingly similar to Complainant's AMAZON.COM mark, as the domain name merely adds the prefix "www-" to Complainant's AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent's domain name pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. SJA, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS mark); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark).
Rights or Legitimate Interests
Respondent is not commonly known by the <www-amazon.com> domain name. Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant's marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
In addition, Respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because Respondent's addition of the prefix "www-" to Complainant's AMAZON.COM mark constitutes typosquatting. See Diners Club Int'l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that respondent's <wwwdinersclub.com> domain name, a typosquatted version of complainant's DINERS CLUB mark, was evidence in and of itself that respondent lacks rights or legitimate interests in the disputed domain name vis-à-vis complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
Furthermore, Respondent is using the <www-amazon.com> domain name to operate a website featuring general commercial links. Respondent's use of a domain name confusingly similar to Complainant's mark to divert Internet users to websites for the purpose of Respondent's own commercial gain does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent's diversionary use of complainant's marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent's use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Registration and Use in Bad Faith
Respondent receives click-through fees for diverting Internet users to commercial websites unrelated to Complainant's business. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), as Respondent is using the <www-amazon.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent's registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant's famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Moreover, Respondent's <www-amazon.com> domain name is likely to cause Internet users to mistakenly believe that the disputed domain name is affiliated with Complainant. This shows Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Furthermore, Respondent registered and used the disputed domain name in bad faith because Respondent's <www-amazon.com> domain name illustrates "typosquatting." Respondent's addition of the prefix "www-" to Complainant's famous mark will cause Internet users seeking Complainant's AMAZON.COM mark to become confused. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) ("Respondent's registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also 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 Marriott Intl, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the domain name confusingly similar to Complainant's mark").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <www-amazon.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Chair
Robert T. Pfeuffer and Edward C. Chiasson, Panelists
Dated: September 2, 2005
NATIONAL ARBITRATION FORUM
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