WIPO Domain Name Decision D2001-1276 for amazoncar.com, amazonecar.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A, Inc v. Sung Hee Cho

Case No. D2001-1276

1. The Parties

The Complainant is A Inc, a Delaware corporation with its principal place of business at Seattle, Washington, USA. The Complainant is represented by Mr. John C. Rawls of Jones, Day, Reavis & Pogue of Los Angeles, California, U.S.A.

The Respondent is Sung Hee Cho of Seoul, Korea. The Respondent has not filed a Response and is not represented.

2. The Domain Names and Registrar

The domain names at issue are and . The domain names are registered with Network Solutions, Inc. of Herndon, Virginia, U.S.A. ("the Registrar"). The domain names were registered on March 9, 2000, and April 26, 2000, .

3. Procedural History

The Complaint submitted by the Complainant 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 names at issue are registered with the Registrar.

- Confirm that the person identified as the Respondent is the current registrant of the domain names.

- 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 names.

- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") is in effect.

- Indicate the current status of the domain names.

By email dated October 26, 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 disputed domain names.

- The Respondent is shown as the "current registrant" of the domain names.

- The administrative, technical and billing contact is also the Respondent.

- The UDRP applies to the registration.

- The domain name registrations are currently �active�.

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 names in question are �active� indicates the Respondent has not requested that the domain names 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 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.

On November 8, 2001, the Case Manager at WIPO Center advised the Respondent, who had telephoned the Center, that any Response should be in the format and with the content prescribed by the Policy and the Rules.

On November 13, 2001, the Respondent emailed the WIPO Center with some comments about the Complaint. On November 20, 2001, the Respondent was again advised by the Case Manager of the deadline for filing a proper Response and again attached a model form of Response.

No Response was received by the WIPO Center from the Respondent on November 26, 2001. The Center issued a Notification of Respondent Default. Because the Respondent, despite advice from the Center, did not file a proper Response, the Panel has not considered the material which he sent to WIPO Center on December 13, 2001.

The Complainant elected to have its Complaint resolved by a three-person panel. The Complainant has paid the requisite sums to WIPO Center.

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.

The domain name does not resolve into a website. The domain name is currently being used as a Korean language website that offers to rent or lease Hyundia & Kia automobiles. Complainant on its site offers for sale automobiles and accessories including, amongst 35 different makes, Hyundai & Kia. On the website, the name is featured prominently four times.

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.

5. Parties� Contentions

Complainant:

(a) The domain names and are 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 names. The Complainant has given it none.

(1) Respondent has made no demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

(2) Respondent is not commonly known by the disputed domain names.

(3) Respondent is not making a legitimate non-commercial or fair use of the domain names without intent for commercial gain misleadingly to direct customers or tarnish Complainant�s mark.

(c) Respondent registered and is using the domain names in bad faith.

Respondent must have known of the Complainant�s worldwide fame as an Internet retailer on a grand scale. The disputed domain names can only make Internet users feel that they have reached a site that has some affiliation with the Complainant. Both parties offer automobile-related products for sale on the Internet. The very fact of the Respondent�s use of the whole of the Complainant�s mark demonstrates bad faith.

Respondent:

The Respondent did not file any Response.

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 names are 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 suffixes �car� and �ecar� does little to avoid confusion. The Panel respectfully agrees with the discussion of this point in Minnesota Mining & Manufacturing v JonLR (WIPO Case No. D2001-0428). The learned Panelists there referred to other WIPO decisions to similar effect. See also Parfums Christian Dior v. 1 Netpower, Inc. (WIPO Case No. D2000-0022) the words �fashion� and �cosmetics� after the mark were confusingly similar. Other cases where descriptive words after a well-known mark were held confusingly similar to the mark include PBS Privat Bank Schweiz A.G. v. Emek Tuzen (WIPO Case No. D2001-1311 - the word �bank� after the mark of a well-known bank PBS), and Harrods Ltd. v. AB Kohler & Co. (WIPO Case No. D2001-0544 - the names are �harrodswatch� and �harrodsjewellery�. The mark was �Harrods�).

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, in the view of the majority of the Panel 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. It is thus easy to infer that the Respondent in bad faith is attempting to divert to his website Internet users who may think the website has some connection with the Complainant. Also, the failure to develop a website for the name supports the bad faith inference.

Accordingly for the reasons stated, the majority of the Panel finds the Complaint proved on all three criteria.

7. Decision

For the foregoing reasons, the Panel decides by a majority:

(a) That the domain names registered by the Respondent are identical to the trademark to which the Complainants have rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) The Respondent�s domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names and be transferred to the Complainants.

Hon. Sir Ian Barker, Q.C.
Presiding Panelist

M. Scott Donahey
Panelist

Dated: December 20, 2001

DISSENT

I respectfully disagree with my co-Panelists and would find that the relief requested in the Complaint should be denied.

Confusing Similarity

I agree with the findings made by my co-Panelists that the domain names in dispute and bear a great resemblance to the trademark to which the Complainant has the rights.

No Rights or Legitimate Interests

In accordance with Annex 25 of the Complaint, it is noted that the Respondent is using "amazoncar" as part of its trade name. However, since there was no response made by the Respondent in this regard, I find that the Respondent failed to show concrete rights or legitimate interests in respect of the relevant domain names.

Bad Faith

For the justification of the finding of bad faith in the registration and use of the domain names by the Respondent, I believe that the following elements should be considered in depth in this case.

The name "Amazon" is the name of the famous river which runs through the South American Continent and it is within the general knowledge of the public. The term "car" refers to a general commodity used in our everyday life which is the subject of trade in various transactions worldwide. Therefore, the Complainant is required to present more concrete evidence of bad faith on the part of the Respondent in order to successfully divest the domain names of the Respondent. The Complainant proved that its trademarks which comprise "amazon" or "a" are famous worldwide, that its trademarks are famous especially in relation to the business of book sales over Internet and that the Complainant is presently dealing with various commodities through its web-site which definitely include car as one of such commodities. However, even in the Complaint, the Complainant fails to sufficiently prove that it holds a trademark right with respect to car-related products or car-rental services especially in the country in which the Respondent is operating its business. None of the evidence shows that the Complainant�s trademark is also well known in car-related industries. Rather, the Complainant�s website for the car-dealing business is being maintained under the domain name of although it still represents as its trademark.

The website, which is maintained by the Respondent under the domain names in issue, is used for the business of car-rental service and is presented only in the local language of the country which the Respondent is targeting for its business purposes. Except for the Complainant�s use of the word "amazoncar", the reiteration of its domain name and its trade name, nowhere in the Complaint is any indication that the Respondent registered or is using the domain names and the word "amazon" for the purpose of capitalizing on the Complainant�s reputation. The fact that the Complainant and its trademark are famous worldwide especially in relation to the Internet sales of books and other digital electronic and communication products is far from sufficient to constitute the grounds for the finding of bad faith on the part of the Respondent in its registration and use of the domain names.

Decision

Based on the foregoing, it is my conclusion that the Complainant has failed to prove that the domain names have been registered and are currently being used by the Respondent in bad faith. Accordingly, pursuant to the Policy and Rules, I would order that the relief requested by the Complainant should be denied.

Boh Young Hwang
Panelist

Dated: December 20, 2001

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