WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Amazoninsu Company
Case No. D2001-1275
1. The Parties
The Complainant is A, Inc., a Delaware corporation with its principal place of business at Seattle, Washington, U.S.A. The Complainant is represented by Mr. John C. Rawls of Jones, Day, Reavis & Pogue, Attorneys of Los Angeles, California, U.S.A.
The Respondent is Amazoninsu Company of Seoul, Korea. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is . The domain name is registered with T Inc., of Toronto, Ontario, Canada ("the Registrar"). The name was registered on May 4, 2000.
3. Procedural History
The Complaint submitted by A, Inc. was received on October 20, 2001, (electronic version) and October 23, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On October 25, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.
- Indicate the current status of the domain name.
By email dated October 25, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration .
- The Respondent is shown as the "current registrant" of the domain name.
- The administrative technical and billing contact is Yong Mun Cho at the same address as the Respondent.
- The UDRP applies to the registration.
- The domain name registration is currently �on hold�.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
The advice from the Registrar that the domain name in question is still �on hold� indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on November 2, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a three-person panel; it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
No response was received by the WIPO Center from the Respondent within the prescribed time. A Notice of Respondent Default was issued on November 26, 2001.
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It invited Mr. M. Scott Donahey of Tomlinson, Zisko, Morosoli & Maser, LLP of Palo Alto, California, U.S.A., and Ms. Boh Young Hwang of Bae, Kim & Lee of Seoul, Korea, to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On December 12, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by December 26, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has been operating since 1995 an Internet website that permits persons around the world to purchase books and other merchandise including motor vehicles on-line. Since its inception, Complainant has grown the business greatly. It now is a publicly-traded company employing 2,000 staff, with revenues of US$2.76 billion in fiscal 2000. At present, more than 29 million customers from over 160 countries have made purchases through the site. In 2000, sales to customers outside U.S.A amounted to 14% of total sales. By the end of the first quarter of 2001, Complainant had some 6 million international customer accounts.
Complainant has registered a number of country code TLDs and has advertised extensively in all types of media and on numerous Internet sites. A is registered as a trademark in 70 countries including U.S.A and Korea (where Respondent is domiciled). The Korean registration was granted on August 2, 1994. Courts in the U.S.A and in Greece have affirmed the widespread reputation of the mark and the strong association of the word "Amazon" with the Internet. Studies by Internet monitors have identified the as one of the most frequently visited sites on the Internet. Some 400,000 website operators worldwide have become A associates and are thus permitted to link to the A site and to display the mark on their websites.
The Respondent is currently using the disputed domain name as an address for a Korean language website that offers automobile insurance. Complainant offers automobiles and accessories on its site .
On May 28, 2001, Complainant attempted to email Respondent�s administrative contact. The email was returned as non-deliverable. On May 29, 2001, Complainant posted a �cease and desist� letter to Respondent, to which there was no reply.
5. Parties� Contentions
Complainant:
(a) The domain name is confusingly similar to the Complainant�s mark and name. WIPO panels have found in a variety of cases that, when a domain name incorporates a distinctive mark in its entirety, that creates sufficient similarity between the mark and the domain name to render the domain name confusingly similar. Likewise, under trademark law, i) a user may not avoid likely confusion by appropriating another�s entire mark and adding descriptive or non-distinctive matter to it, and ii) points of similarity are weighed more heavily than points of difference.
(b) Respondent has no rights or legitimate interest in the disputed domain name . The Complainant has given it none.
(1) Respondent has made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
(2) Respondent is not commonly known by the disputed domain name.
(3) Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to direct customers or tarnish Complainant�s mark.
(c) Respondent registered and is using the domain name in bad faith.
Respondent must have known of the Complainant�s worldwide fame as an Internet retailer on a grand scale. The disputed domain name can only make Internet users feel that they have reached a site that has some affiliation with the Complainant.
Bad faith can also be inferred from the false contact information supplied by Respondent to the Registrar and its failure to reply to a �cease and desist� letter. The very fact of the Respondent�s use of the whole of the Complainant�s mark demonstrates bad faith.
Respondent:
The Respondent has not filed any submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
In the view of the Panel, the disputed domain name is confusingly similar to the Complainant�s mark which is known worldwide. It agrees with the Complainant�s submission that, where a domain name incorporates a distinctive mark in its entirety, sufficient confusion is established. The addition of the suffix �119� does little to avoid any confusion. The Panel respectfully agrees with the discussion of this point in Minnesota Mining & Manufacturing v. Jon LR (WIPO Case No. D2001-0428). The learned Panelists there referred to other WIPO decisions to similar effect. For also, PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services (WIPO Case No. D2001-0174) where a domain name that added a number after the mark was held to be confusingly similar.
The Respondent has no rights to use the Complainant�s mark. Nor is there any evidence which would justify consideration of any of the matters in Paragraph 4(c) of the Policy, which provide instances of how a Respondent can demonstrate legitimate rights or interests in a domain name.
As to the third criterion, it strains belief that the Respondent did not know of the Complainant�s mark and reputation at the time of registration. The inference that there has been a crude attempt by the Respondent to capitalize on the Complainant�s reputation as a worldwide vendor on the Internet is inescapable.
A reasoned reply to a "cease and desist" letter can often help a Respondent show that it comes within the criteria of paragraph 4(c) of the Policy. It can also help to show good faith. However, the Respondent made no reply to such a letter. Moreover, the fact of supplying as the name of an administrative contact to the Registrar what is not a genuine address adds to the overwhelming proof of bad faith use.
Accordingly for the reasons stated, the Panel finds the Complaint proved on all three criteria.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent�s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Hon. Sir Ian Barker QC
Presiding Panelist
M. Scott Donahey
Panelist
Boh Young Hwang
Panelist
Dated: December 20, 2001
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