WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. MCL International Limited
Case No. D2000-1678
1. The Parties
The Complainant is A, Inc of 1200 12th Avenue South, Suite 1200, Seattle, Washington 98144-2734, USA. The Complainant�s authorised representative is Mr John C Rawls of Jones, Day, Reavis & Pogue of 555 West Fifth Street, Suite 4600, Los Angeles, California 90013-1025, USA. The Respondent is MCL International Limited of L�Etoile 14, Crans, vs 3063, Switzerland. The Respondent is represented by Sinisa Krstic of Petra Lubarde 8, 11000 Belgrade, Yugoslavia.
2. The Domain Name and Registrar
The domain name in dispute is . The registrar for the domain name is Network Solutions Inc of 505 Huntmar Park Drive, Hurndon, Virginia 20170-5139, USA.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center on
December 2, 2000 by email and by hard copy on December 4, 2000. Acknowledgement of receipt was sent by the Center on December 5, 2000. Request for registrar verification was sent to the Registrar Network Solutions Inc on December 7, 2000. On December 12, 2000 Network Solutions gave verification of the domain name registration in the name of the Respondent.
Notification of the complaint and commencement of the administrative proceedings was given on December 15, 2000 by post, fax and by email to the Respondent. Notification was effected because a phone call was received from Sinisa Krstic followed by an email addressed to the Center on January 3, 2001 requesting an extension of time for the response until January 8, 2001. A five day extension of time was granted. A Response was received from the Respondent on January 5, 2001 by email and on January 9, 2001 by hardcopy. On February 23, 2001 an administrative panel was appointed consisting of Mr Clive Duncan Thorne (Presiding Panellist), Mr M Scott Donahey and Mr Bernhard F Meyer-Hauser. An extension of time for the panel�s decision was made toMarch 15, 2001.
4. Factual Background
The Complainant is the well known internet trading company A, Inc. The founder of the Complainant Mr Jeff Bezof in 1995 created an internet web site ("a Site") that permitted consumers around the world to purchase books online. According to the Complainant Mr Bezof chose the name for the site because the River Amazon in South America is the biggest river in the world and one of the company�s goals was eventually to offer the largest selection of book titles in the world. A Inc. was one of the first corporations to make the name of its business identical to the domain name for which its business operates � anyone using the internet to find its web site need only remember the name of the company.
Since its inception, the A site has continuously operated from the internet address "www.a". Its site originally and primarily featured books which are still a major part of its business. However A, Inc. has now expanded its operations to include an even broader selection of products offering a full line of goods ranging from toys to magazines to compact discs and video tapes. A, Inc. is now a publicly traded company employing more than 7,000 employees. Its revenues have grown from USD 15.7 million in 1996 to USD 1.6 billion in 1999.
The Complainant has very quickly developed a strong international presence. Today, more than 23 million customers from over 150 countries have made purchases through the A site. In the second quarter of 2000 sales outside the United States accounted for nearly a quarter of A�s total sales. By the end of the third quarter of 2000 A had acquired approximately 3.9 million international customer accounts. As A has expanded its business internationally it has begun to operate web sites that use country code domain names that are specific to individual countries. For example, the Complainant�s sites under the names , , and target customers respectively in the United Kingdom, Germany, France and Japan. It operates service centres in Holland, England and in Germany and is accessible to consumers everywhere in the world where there is access to the internet.
The Complainant asserts that the trade mark "AMAZON.COM" is now one of the United States famous trade marks. At page 7 of the complaint the Complainant sets out details of significant trading use of the mark. In addition the Complainant draws attention to the fact that courts in the United States and Greece have entered judgments for the Complainant that at test to the fame of the strong association between the mark "AMAZON.COM" and the services offered by the Complainant. The mark "AMAZON.COM" is registered in 26 countries. There are over 100 additional trade mark registrations pending. "AMAZON.COM" is a registered trade mark with the United States Patent and Trade Mark office for a computerised on line search and ordering service. The mark "AMAZON.COM" has also been registered in Switzerland where the Respondent is located since 1998 under the registration number 446.011. At Annexes 20, 21 and 22 to the Complaint are the summaries of the Complainant�s existing and pending trade mark registrations.
The Respondent in its response which is in letter form signed by Sinisa Krstic draws attention to the fact that the Respondent is neither "officially incorporated nor residing in Switzerland". The letter sets out the background relating to the registration of the domain name . The history of the Respondent�s registration of the domain name apparently began shortly before the bombing of Yugoslavia in March 1999 when "four guys pondering what to do with their future, the country was under sanctions, the economic outlook was extremely bleak and the greatest world powers were threatening to bomb us" decided to consider selling exclusively Yugoslavian books, music, videos, magazines to expatriate Yugoslavian communities throughout the world. Apparently they researched the market by visiting numerous international web sites and found that the "best site" was "without a doubt . They took the view that there was nothing wrong with "emulating the best" so that as the Respondent graphically puts it; "while stealth bombers and cruise missiles were flying over us every night we started with one computer and worked out of a flat with a far fetched and impulsive idea in April 1999 and went on line in
March 2000".
The Respondent went on to register the name in order to target Yugoslavian�s living abroad.
The Respondent asserts that it in "no way intended to pose a threat nor harm the A brand". Rather "it was just an impulsive idea at a very strange time of our lives. We also strive to build a reputable image in all aspects concerning internet retailing and in no way diluted or diminish the reputation of A nor ever intended to".
The Respondent goes on to state quite openly that it will start making changes to the domain name and design layout after January 15, 2001 so that it will not renew the domain name when it expires on July 10, 2001. It moreover is prepared to offer the Complainant a percentage of sales made by it so far by way of royalties or fees. The Respondent is also willing to send the Complainant emails received from all its customers. Alternatively it proposes continuing to use the name but to pay royalties for doing so to the Complainant.
5. Parties� Contentions and Discussion
In order to succeed in its request for an order to transfer the domain name the Complainant has to prove that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present. These are as follows:-
(i) The Respondent�s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent�s domain name has been registered and is being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The Respondent�s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
On the basis of the use demonstrated by the Complainant and referred to above the Panel accepts that the Complainant has rights both in terms of trading good will and trade mark rights throughout the world in the mark "AMAZON.COM".
The Complainant asserts that the Respondent�s registration and use of the domain name creates the impression among consumers that the Respondent�s business and products are affiliated with . The Panel finds that the Respondent�s domain name is confusingly similar to the mark "AMAZON.COM" for the following reasons:
(a) The dominant part of the Complainant�s trade mark is the word "Amazon".
(b) The prefix "yu" is no more than the name for Yugoslavia. Indeed the Respondent recognises this in its response when it indicates that the domain name was devised for the purposes of targeting Yugoslavians living abroad. It is also clear from the history of the use of the domain name that the Respondent was impressed by the mark AMAZON.COM as the "best site in the field" and that it intended to "emulate the best".
For these reasons the Panel finds that the Complainant has succeeded in proving paragraph 4(a)(i) of the policy.
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant refers to paragraph 4(c)(i) of the Policy and submits that the Respondent is neither affiliated with it nor has it granted the Respondent the rights or permission to use the trade mark AMAZON.COM. It also draws attention to the fact that the Complainant�s rights in the mark AMAZON.COM predate the Respondent�s registration of the domain name. The Respondent registered the domain name on July 10, 1999, whereas the Complainant first used the domain name in 1995 and registered its trade mark AMAZON.COM in the United States trade mark office in 1997.
The Complainant also refers to paragraph 4(c)(ii) of the Policy and submits that the Respondent was not commonly known by the domain name before registering the domain name. This is effectively conceded by the Respondent in its response.
The Complainant also refers to paragraph 4(c)(iii) of the Policy and points out that the Respondent is not making a legitimate non commercial and fair use of the domain name .
The Respondent does not argue that it has any legitimate interest in the domain name and quite openly refers to the fact that it relied upon the prior use and existence of the mark AMAZON.COM by the Complainant.
In these circumstances the Panel finds for the Complainant in respect of this head.
(iii) The Respondent�s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth circumstances which at present shall be evidence that the Respondent registered and used the domain name in bad faith. The Complainant particularly relies upon paragraph 4(b)(iii) to the effect that registration of a domain name primarily for the purpose of disrupting the business of a competitor constitutes registration and use of the domain name in bad faith and also paragraph 4(b)(iv) that bad faith is demonstrated by the intentional use of a domain name to attract, for commercial gain internet users to the Respondent�s web site by creating a likelihood of confusion with the Complainant�s mark.
Further the Complainant relies upon the confusingly similar nature of the domain name to the Complainant�s mark. It also refers to the fact that the Respondent�s web site offers products that are directly competitive with the Complainant�s core product categories. It relies upon the similarities between the Complainant�s web site and the Respondent�s web site. This is shown by the sample screen shots incorporated within the complaint and as exhibited within the complaint.
The Respondent does not deny that it relied upon the Complainant�s web site and that it attempted to emulate it on the basis that there was "nothing wrong" in doing so. It does however point out that there are apparently similarities between the Complainant�s web site and that of third party competitors such as Barnes and Noble and Virgin M. It also draws attention to the fact that there is apparently no mention on the Respondent�s web site that it is in any way endorsed, sponsored, operated or affiliated with A. The Respondent also represents that it "in no way intended to pose a threat nor harm the AMAZON.COM brand".
The Panel having considered the submissions of both parties finds that the Respondent has shown bad faith as required by paragraph 4(a)(iii) of the Policy. In particular it finds pursuant to paragraph 4(b)(iv) an intentional use of the domain name to attract internet users for commercial gain to its web site by creating a likelihood of confusion with the Complainant�s mark. The fact that this is so is effectively admitted by the Respondent in its reliance upon the Complainant�s site and its emulation of the Complainant�s site.
It follows that the Complainant has succeeded in all three limbs of paragraph 4(a) of the Policy and succeeds in its complaint.
6. Decision and Findings
The Complainant requests that the Panel order that the domain name be transferred from the Respondent to the Complainant. The Panel finds for the Complainant and orders that the domain name be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Presiding Panelist
M Scott Donahey
Panelist
Bernhard F Meyer-Hauser
Panelist
Dated: March 12, 2001
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