WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Amazonpic
Case No. D2002-0330
1. The Parties
The Complainant is A, Inc, a Delaware corporation, 1200 12th Avenue South, Suite 1200, Seattle, Washington 98144-2734, United States of America. The Complainant�s Representative is John C. Rawls, Esq., Jones, Day, Reavis & Pogue, 555 West Fifth Street, Suite 4600, Los Angeles, CA 90013-1025, United States of America.
The Respondent is Amazonpic, 1308-8 Bummul Dong Susung, Taegu, Republic of Korea. Gyochul, Kim, 612-29 Sangdong Suseng, Taegu, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name is .
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("WIPO") by email on April 6, 2002, and in hard copy form on April 10, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case. The Complaint was properly notified in accordance with the Rules, paragraph 2(a).
Network Solutions, Inc. has confirmed that the domain name ("the Domain Name") was registered through Network Solutions, Inc. and that Amazonpic is the current registrant. Network Solutions, Inc. has further confirmed that the Policy is applicable to the Domain Name.
On April 22, 2002, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was May 12, 2002.
On May 10, 2002, the Respondent responded to WIPO by email, but not in the correct form. On the same day WIPO drew the Respondent�s attention to formal defects in the Response and reminded the Respondent of the impending expiry of the time limit for filing the Response.
WIPO issued a Notification of Respondent Default on May 14, 2002. On May 17, 2002, the Response was received by WIPO by email from the Respondent. The substance of the Response is in identical terms to the May 10, 2002, email and the Panel has admitted the Response into this administrative procedure.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision was originally July 10, 2002, but has been extended at the Panel�s request to July 22, 2002.
4. Factual Background
A, the Complainant, commenced business in 1995 as an online retailer of books. It is now one of the most famous trading names on the internet and has expanded its range of products to include, inter alia, video tapes and DVDs.
The Complainant is the registered proprietor of numerous trade mark registrations around the world for AMAZON.COM including by way of example, US registration number 2,167,345 dated June 23, 1998, in Class 35 for computerised online search and ordering services featuring the wholesale and retail distribution of books, music, motion pictures, multi media products and computer software in the form of printed books, audio cassettes, video cassettes, computer disks, floppy disks, CDroms and direct digital transmission.
The Complainant is the registered proprietor of a number of trade mark registrations for AMAZON.COM in Korea, including registration number 73,016 dated January 15, 2002, for various financial information services, 73,018 for computer programming and related services and 73,017 for inter alia electronic publishing services and video taping services including rental of video tapes. However, the Complainant does not appear to have a registration of the mark covering its core business of wholesale and retail distribution of books, DVDs, etc.
The Respondent trades in Korea under the name Amazon Picture and Amazonpic Company "based on a registered internet domain of ". It is engaged in the sale of DVDs by way of its website at "".
The Respondent does not state when it commenced trade, but given that its business is stated to be based on the Domain Name, the business must have commenced at some time after November 21, 1999, the date of registration of the Domain Name.
5. Parties� Contentions
A. Complainant
The Complainant produces substantial evidence to support its fame across the world of the internet in relation to the sale of its core products, which since 1998 have included DVDs.
The Complainant contends that the Domain Name is confusingly similar to its name and trade mark, A
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. In support, the Complainant argues that none of the means of demonstrating such rights and legitimate interests as are set out in paragraph 4(c) of the Policy are applicable here. The Complainant further contends that there is no other reason why the Respondent could be said to have rights or legitimate interests in respect of the Domain Name.
Essentially the Complainant�s Complaint is that when the Respondent selected the Domain Name it knew of the fame of the Complainant and its services provided under the A trade mark and decided to benefit from the Complainant�s goodwill by selecting a similar name which would be likely to lead internet users to believe that the Respondent is associated with the Complainant.
Finally, the Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. It contends that the deliberate selection of a domain name in order to enable the Respondent to derive commercial gain from the erroneous perception of internet users that the Complainant and the Respondent are associated constitutes bad faith registration and use within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
B. Respondent
The substance of the Response extends to two paragraphs and reads as follows:-
"We, Do Ki-sang et al., have been running a commercial shopping mall business based on a registered internet domain of in Korea. In addition, we legally registered a corporation name of amazonpicture and its trademark based on the Korean Commercial Law and Trademark Law and successfully received a trademark registration publication decision from the KIPO(Korean Intellectual Property Office). And, we have a plan that the Amazonpic company will be developed to a big size commercial company for doing business concerning the movie-related products.
Since we judge that the domain of a is not well known to Korean people, we can not understand the amazon�s assertion made based on an over action with respect to the domain of a. Therefore, we very strongly assert that the amazon�s insistence must be withdrawn. It is currently in dispute whether the trademark of the a will be registered or not, based on the Korean Trademark Law, and the case is not yet determined. In addition, It would never be acceptable that the amazon company interfere the legal business of amazonpic company who has done their business legally in Korea and invalidate the legal domain of .
We hope a reasonable decision of WIPO Arbitration and Mediation Center."
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or Confusingly Similar
The Complainant�s trade mark, AMAZON.COM is one of the most famous trade marks on the internet. The trade mark is not AMAZON (per se) which is both a well known geographical name and a dictionary word, but AMAZON.COM. The addition of the domain suffix combined with the extensive and high profile use that the Complainant has made of the mark has resulted in AMAZON.COM becoming a highly distinctive trade mark and a by-word in most internet user households.
The Domain Name comprises the Complainant�s trade mark, AMAZON.COM, with the letters �PIC� inserted between �AMAZON� and the domain suffix. As such, it is not identical to the Complainant�s trade mark. Is it nonetheless confusingly similar?
In the Complaint the Complainant states "confusing similarity turns on use, similarity of the marks and terms in question, similarity of products and services, similarity of users and similarity of channels of distribution." The Panel is happy to adopt that formula.
The Panel (by a majority) take the view that the use being made of their domain names by the parties is substantially identical, namely to sell goods by way of the internet. The Complainant�s trade mark and the Domain Name are visually and phonetically similar. The Complainant and the Respondent both use their domain names for the sale of movies on DVDs; thus, to that extent, the goods/services are identical. That leaves the users and the channels of distribution. The users are the same in the sense that they are internet users and the channels of distribution are the same in the sense that both parties deliver direct.
However, it is to be noted that while in a heading in the Complaint the Complainant refers to the users served by the parties as being "closely related users", the Respondent asserts that A is not well known to the Korean public. It is to be noted too that the Complainant has produced no evidence at all of the extent of its sales of Korean versions of its books/films and/or to the Korean market generally. In this context it is noteworthy that the Respondent�s website is devoted exclusively to Korean language products intended for the Korean market.
Accordingly, if the users served by the Respondent have no reason to be aware of the Complainant and are not aware of the Complainant, the possibility of confusion is remote.
There is scope here for concluding that the Complainant has failed to prove the first element namely that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, but to come to this conclusion, the Panel has to assume that Korean internet users with a knowledge of the Complainant are few and far between.
However, (by a majority) the Panel has concluded that A is so famous that there must be a risk that a not insubstantial number of internet users in Korea will believe as a result of the similarities between the Complainant�s trade mark and the Domain Name that the businesses associated with each are in some way related. Accordingly, the Panel finds (by a majority) that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The dissenting panelist�s opinion follows at the end of this decision.
Respondent�s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which if found by the Panel to have been proved shall demonstrate the Respondent�s rights or legitimate interests in respect of the Domain Name.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under paragraph 4(a) being on the Complainant.
The Complainant points to the fame of its name and trade mark. It draws attention to the fact that the Respondent is not affiliated to the Complainant and that the Complainant has not licensed the Respondent to use its name and trade mark. It asserts that the Respondent deliberately selected the Domain Name with a view to deceiving internet users into believing that it is associated with the Complainant. It invites the Panel to make that inference from all the circumstances of the case and to find that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant goes on to anticipate arguments that the Respondent might seek to deploy pursuant to paragraph 4(c) of the Policy. In relation to paragraph 4(c)(i) [ie use of the Domain Name pre-notification of the dispute in connection with a bona fide offering of goods or services] the Complainant claims that adoption of the Complainant�s trade mark by the Respondent as part of the Domain Name with knowledge of the Complainant�s rights and for the purpose of trading off the Complainant�s goodwill cannot constitute a bona fide offering of goods or services.
In relation to paragraph 4(c)(ii) [ie Respondent commonly known by domain name] the Complainant claims that prior to adoption of the Domain Name neither the Respondent nor those behind the Respondent were commonly known by the Domain Name. In relation to paragraph 4(c)(iii) [ie legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue] the Complainant claims that the Respondent is making unfair commercial use of the Domain Name. The Complainant states "the Respondents are making commercial use of the Domain Name to sell movies on DVD in order to divert consumers from Complainant�s website."
In the view of the majority of the Panel, the Complainant has done enough to show a prima facie case. The Complainant�s claims are, as can be seen, largely unsupported by any hard evidence, but proving a negative (which is what paragraph 4(a)(ii) of the Policy requires of a Complainant) is often in these circumstances a near impossible task, the relevant factors being matters wholly within the knowledge of the Respondent. In the view of the majority, the considerations identified by the Complainant are sufficient to require the Respondent to come forward with an explanation along the lines of those set out in paragraph 4(c) of the Policy.
The Respondent�s explanation is that it has traded as an internet shopping mall in Korea since it registered the Domain Name. However, it does not seek to answer any of the Complainant�s allegations. Indeed, and most significantly of all, it does not deny the allegation that when it registered the Domain Name it had the Complainant�s name and trade mark in mind. The Respondent could have come forward with any number of explanations as to how it, a Korean company, trading in Korean language DVDs for the Korean market had selected the Domain Name. It did not do so.
The Panel (by a majority) finds that when the Respondent registered the Domain Name it, along with all other internet trading companies of the time (1999/2000) � and particularly those engaged in the field of online retailing of books, videos and/or films - was well aware of the fame of the Complainant. In the absence of a credible explanation, the majority of the Panel finds it inconceivable that the Respondent did not register the Domain Name with the Complainant�s name and trade mark in mind and in the hope and expectation that it would lead to a commercial benefit for the Respondent. Under these circumstances the adoption of the Domain Name cannot sensibly be regarded as having given to the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel finds (by a majority) that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
For the same reasons the Panel finds by a majority and on the balance of probabilities that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. The majority of the Panel finds on the balance of probabilities that the Respondent�s intention was to mislead internet users and thereby derive a commercial benefit from being seen to be associated in some way with the Complainant.
7. Decision
In light of the foregoing findings namely that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith, the Panel (by a majority) directs that the Domain Name be transferred to the Complainant.
Tony Willoughby
Presiding Panelist
David Plant
Panelist
Dated: July 22, 2002
Dissenting Opinion
I am dissenting because I do not agree with the findings of the majority decision. My position is that in making such a drastic decision as directing a domain name be transferred from the original registrant to a third party, i.e., the Complainant in this case, the Panel should be very cautious, strictly adhering to the UDRP provisions. In particular, we should not forget that the Policy explicitly provides that it is the "Complainant" who must prove each and all three elements of the Policy, paragraph 4(a) to receive the remedy it seeks. Therefore, the Panel should base its judgment on whether the Complainant has succeeded or failed to do prove these three elements. Even if many Complainants find it difficult to prove these elements, I think it is the way that was originally set up according to the purpose of the UDRP.
In my opinion, the Complainant has proved none of the three elements of the Policy paragraph 4(a).
Identical or Confusingly Similar
It is difficult for me to be convinced that the Domain Name is confusingly similar to the Complainant�s trademark AMAZON.COM. Although and AMAZON.COM may look similar literally, "amazon" is a generic namethat not only means a river but also female warrior or tall, vigorous woman(Oxford Advanced Learner�s Dictionary of Current English). Even if we comparethe trademark AMAZON.COM and , the addition of a descriptiveword such as pic should not be in and of itself demonstrates that the DomainName and the trademark are confusingly similar (see WIPOCase No. D2000-1567, regarding ).
The Complainant argues that because the web site sells closely related goods and serves closely related users, the first element is proven. However, not only that this argument is not supported by any detailed evidence, a mere overlap between some of the goods sold by the Complainant and the Respondent should not prevent the Respondent from using a domain name that is somehow related to the Complainant�s mark. AMAZON.COM�s primary goods are printed books, although it expanded their goods and services to others such as video tapes and DVDs. The fact that the web site and AMAZON.COM sell related goods is not much relevant to proving the first element of similarity between the name and the mark. In my opinion, this issue should rather be dealt with in regards to the third element of bad faith. Also, the Complainant has not presented any evidence as to its arguments that the users of the Complainant�s site and of the Respondent�s site are similar. No supporting data regarding the extent to which books and films are told to Koreans and how well AMAZON.COM is regarded in the Korean market. Without this evidence, the possibility of confusion among the users of the Complainant�s web site and the Respondent�s web site cannot be reasonably argued.
Lastly, the Complainant�s argument that the Complainant and the Respondent use the same distribution channel, i.e., the web, and thus consumers will assume their sites are related, is not based on the reality. Most of the domain names use the web as a distribution channel. Web is by far too large and already used extensively and diversely in many people�s daily lives for the Complainant to make such an argument.
Therefore, I think the Complainant has not proved that its trademark AMAZON.COM and the Domain Name are confusingly similar. I disagree with the majority opinion�s position that even if the Complainant has not clearly proved the possibility of confusion, A is so famous that there must be a risk of confusion. When the Complainant failed to support its own arguments, the panel should not feed supporting rationale for the Complainant.
Respondent�s Rights and Legitimate Interests
The Respondent registered a corporation name "amazonpicture" and has been operating a multimedia shopping mall. The Respondent have registered and used and since 1999. These domain names seem to be the ones that are quite naturally wanted and obtained by the Respondent, given its company name. Thus I think that the Respondent demonstrated their legitimate rights and interests in the domain name under the Policy, paragraph 4 (c)(i). Also, the Respondent does not have to show his affiliation with, or any permission from, AMAZON.COM to demonstrate legitimate rights and interests, which could be based on many diverse activities and circumstances. The mere fact that the site is a frequently visited site, or a more frequently visited site as compared to the respondent site�s, should not be considered as providing more right in a different site than itself. Thus, the Complainant failed to prove that the Respondent has not rights or legitimate interests in the Domain Name.
Bad Faith
The Complainant�s arguments and the Panel�s decision regarding the Respondent are presumed bad faith is the most problematic. In my opinion, there is not sufficient evidence that shows the Respondent�s bad faith pursuant to the examples provided in the Policy, paragraph 4(b). The Complainant has not provided any evidence that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant or to a competitor. There is simply no evidence that the Respondent has ever contacted the Complainant or anyone else regarding the domain name, let alone for the purpose of selling it for valuable consideration in excess of out-of-pocket costs.
Secondly, there is no evidence that the Respondent has registered the Domain Name in order to prevent the Complainant or any other trademark owner from reflecting the mark, let alone has engaged in a pattern of such conduct.
Thirdly, there is no evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of the Complainant. In fact, with such a fame associated with, and such frequent visits to the AMAZON.COM web site, it would be very difficult for any party to attempt to disrupt the Complainant�s business.
Lastly, there is no evidence that the Respondent has intentionally attempted to attract Internet users to his web site by creating confusion with the Complainant�s mark. Most of the users of the respondent�s web site seem to be Koreans and my guess is that they would not consider AMAZON.COM so much to be a seller of movies and other multimedia products as the Complainant argues. AMAZON.COM seems to be primarily considered a book-seller in Korea. To what extent AMAZON.COM is considered a seller of movies and other products, and whether Koreans would be confused by this Domain Name and think that it is affiliated to AMAZON.COM is a question that the Complainant must have shown, but failed.
It seems that most of the Complainant�s arguments are unfounded without proper ground or supporting evidence. The Complainant does not present any relevant evidence regarding the Respondent�s intent or activities, but argues for the Respondent�s bad faith merely based on perceived similarities between the domain names and the products offered. I am against making a decision to direct the Domain Name be transferred on these somewhat frivolous arguments.
The majority decision seems to place unbalanced weight to the fame of the Complainant and its trademark. Many speculations and inferences are made only because the AMAZON.COM is a famous trademark and famous business in cyberspace. Not only the Complainant has not presented any supporting evidence in terms of the degree and nature of its fame especially in Korean market and to Korean users, but also this rather simplistic and unilateral approach is not consistent to the intention of the UDRP, which is to be applied to narrowly defined, abusive registration and use of a domain name. I argue for strictly applying the independent test of the three elements of the Policy.
The majority decision also has quite serious and negative policy implications. The majority decision implies that no other entity could register any domain name that includes because it is a trademark. This would result in granting too much right to the Complainant, preventing all the others from using otherwise available domain names, and protecting the status quo too strongly.
For the reasons stated above, I think that the Complainant�s request for transfer of the Domain Name should be denied. Therefore, I dissent.
Dr. Jisuk Woo
Dissenting Panelist
Dated: July 22, 2002
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