WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Paul Horner
Case No. D2003-0071
1. The Parties
The Complainant is A, Inc. of Seattle, Washington, United States of America, represented by Jones, Day, Reavis & Pogue, United States of America.
The Respondent is Paul Horner of Laveen, Arizona, United States of America.
2. The Domain Name and Registrar
The domain names at issue are and ("the "Disputed Domain Names"), both registered with GANDI of Paris, France.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2003. On January 31, 2003, the Center transmitted by e-mail to GANDI a request for registrar verification in connection with the Disputed Domain Name, . On February 3, 2003, the Complainant filed an amended Complaint with the Center. On February 21, 2003, GANDI transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant of and providing details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2003. Respondent did not file a Response prior to the due date. Notification of Respondent�s default was given on March 19, 2003. The Respondent did, however, file a Response with the Center on March 20, 2003.
On April 2, 2003, Complainant requested the right to amend the Complaint a second time. On April 3, 2003, the Center informed the Complainant that the Center could not accept an amendment at that point in the proceeding, but that it would forward the amended Complaint to the Administrative Panel. On April 5, 2003, the Center received the second amended Complaint, amending the Complaint to include the domain name .
The Complainant elected to designate a three-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules. The Center appointed Timothy D. Casey, James H. Grossman and M. Scott Donahey as Panelists in this matter. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with the Rules, Paragraph 7.
On June 4, 2003, the Panel informed the Center that it would accept the amended Complaint, that it would accept the late Response, and give the Respondent an opportunity to file a Second Response to the amended Complaint. On June 5, 2003, the Center transmitted by e-mail to GANDI a request for registrar verification in connection with the Disputed Domain Name, . On June 6, 2003, GANDI transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant of and providing the contact details for the administrative, billing, and technical contact. On June 18, 2003, the parties were informed that the Second Response was due July 9, 2003. Despite the fact that Respondent did not e-mail his Second Response to the amended Complaint to the Center until July 10, 2003, the Panel decided to accept Respondent�s late filed Second Response.
4. Factual Background
(i) Complainant is the owner of the federally registered trademarks AMAZON.COM and AMAZON.COM BOOKS and the Internet website, "www.a". The AMAZON.COM trademark is registered for a computerized on-line search and ordering service featuring the wholesale and retail distribution of books, music, motion pictures, multimedia products and computer software in the form of printed books, audiocassettes, videocassettes, compact discs, floppy disks, CD ROMs and direct digital signal transmission. The AMAZON.COM BOOKS trademark is registered for an on-line ordering service featuring the wholesale and retail distribution of books. A began as an online distributor of books, but since its inception in 1995, has expanded to sell other products including computers and other electronics, CDs and toys.
(ii) Complainant has registered its trademark in the European Union and in seventy-two individual countries. Additionally, the Complainant has trademark registrations applications pending in several countries.
(iii) Complainant has not authorized Respondent to use Complainant�s marks, and Respondent is not affiliated with the Complainant.
(iv) On June 4, 2002, Respondent obtained a registration for , with GANDI as Registrar.
(v) On October 24, 2002, Complainant sent Respondent an e-mail, requesting that Respondent cease and desist use of and transfer the domain name to A.
(vi) On November 7, 2002, Respondent replied to Complainant, indicating his intent to continue using the Disputed Domain Name, .
(vii) On March 14, 2003, Respondent obtained a registration for , with GANDI as Registrar.
(viii) The Panel notes that Complainant and Respondent have exchanged various communications regarding Respondent�s continued use of the Disputed Domain Names, during the course of which Respondent has made clear his intention to continue using the Disputed Domain Names despite Complainant�s continued objections.
5. Parties� Contentions
A. Complainant
Complainant alleges that the Disputed Domain Names should be transferred to A because:
(i) The Disputed Domain Names are confusingly similar to the Complainant�s trademark. The Disputed Domain Names incorporate the Complainant�s mark, AMAZON.COM, into the names and add only the descriptive term "books" while using the extension ".net" and ".org" instead of ".com." Additionally, the Disputed Domain Names are nearly identical to Complainant�s marks AMAZON.COM and AMAZON.COM BOOKS;
(ii) Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent is not affiliated with Complainant, nor has Complainant granted Respondent the right or permission to use its mark, AMAZON.COM. Prior to registering the Disputed Domain Names, Respondent was not commonly known by either of the Disputed Domain Names. Additionally, prior to notification of this dispute, Respondent�s use of the Disputed Domain Names was not in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
(iii) Respondent registered and is using the Disputed Domain Names in bad faith. Respondent�s bad faith registration may be inferred from his registration of multiple infringing domain names. In addition to the Disputed Domain Names, Respondent has also registered , and . Respondent�s registration in bad faith is also evidenced by the strong similarities between the Disputed Domain Names and Complainant�s marks; Respondent�s use of the source code from Complainant�s website in order to mimic Complainant�s site; and Respondent�s use of the AMAZON.COM and the AMAZON.COM BOOKS marks in the meta tags of his site using the Disputed Domain Names.
B. Respondent
Respondent asserts that:
(i) The Disputed Domain Names are not confusingly similar to the Complainant�s trademark AMAZON.COM. The Complainant�s mark, AMAZON.COM is a famous mark, but by reason of its fame, Complainant should not be entitled to all uses of the word "Amazon," a generic name with various meanings. Respondent�s use of the Disputed Domain Names to provide products associated with the Amazon is sufficiently differentiated from the Complainant�s use of its site so as to not create confusion among consumers.
(ii) Respondent is not attempting to mislead consumers that his site is directly affiliated with Complainant. Respondent�s site compared to Complainant�s website for only a short period of time during which Respondent was attempting to secure affiliate status with Complainant. After Respondent�s request for affiliate status was turned down by Complainant, Respondent changed the look of his site to its current appearance. Respondent is not required to show affiliation with, or any permission from A in order to demonstrate that he has legitimate rights and interest to the Disputed Domain Names. Respondent�s use of the site to sell products related to the Amazon is fitting with his choice of the Disputed Domain Names. It would be improper to determine whether Respondent has a legitimate interest in the Disputed Domain Names based on the fact that is a more frequently visited site than the Respondent�s site.
(iii) The Disputed Domain Names were registered with the intent to provide resources on the Amazon to people who are interested in traveling to Brazil or learning more about the Amazon. There is no evidence that Respondent has registered the Disputed Domain Names with the intention of disrupting the Complainant�s business. Nor is there any evidence that the Respondent has attempted to attract Internet users to his site by creating confusion with the Complainant�s mark. Complainant has not provided any evidence that the Respondent registered the Disputed Domain Names for the purpose of selling, renting, or transferring the domain names to the Complainant or to a competitor.
6. Discussion and Findings
The panel is guided by Paragraph 4(a) of the Policy, which directs that the Complainant must prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
To prevail, Complainant must establish each of the foregoing elements, which are separately addressed below.
A. Identical or Confusingly Similar
Although Respondent has admitted that AMAZON.COM is a famous trademark, the Panel doubts that Respondent truly understands the legal significance of such an admission. Respondent�s understanding of Complainant's trademark rights is therefore largely limited to Respondent's primary argument, which is that Complainant does not have a monopoly on the word "Amazon" and should not own every possible domain name containing the generic word "Amazon." While the Panel agrees with this general argument, in the present case, given the similarity between the Disputed Domain Names and Complainant's marks, we need not address the issue of whether the A trademark is famous or whether the Complainant has exclusive rights to the word "Amazon." Irrespective of whether Complainant�s marks are famous, the Disputed Domain Names are not just any uses of the word "Amazon," but uses that are confusingly similar to Complainant�s marks.
Each of the Disputed Domain Names substantially incorporates the primary elements of the Complainant�s marks AMAZON.COM and AMAZON.COM BOOKS. Where a domain name substantially incorporates the Complainant�s mark, that is sufficient to find the domain name confusingly similar. Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (April 25, 2001) In creating the Disputed Domain Names, Respondent simply incorporated Complainant�s trademarks in a slightly different word sequence and substituted ".net" and ".org" for ".com." Reference to the Disputed Domain Names readily calls to mind AMAZON.COM and AMAZON.COM BOOKS.
For the foregoing reasons, the Panel finds that the Disputed Domain Names are confusingly similar to Complainant�s marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that may demonstrate that a Respondent has rights or a legitimate interest in the use of a domain name: (a) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (b) the fact that the respondent has commonly been known by the domain name; and (c) legitimate non-commercial or fair use of the domain name.
Respondent claims that the Disputed Domain Names have been created out of a desire to provide consumers resources, such as books, on the geographic area of the world known as the Amazon. The Panel, however, finds it significant that Respondent�s websites provide little information regarding the Amazon (and the information that is provided appears to consist of links to third party sites unaffiliated with Respondent) and primarily provides links to sites which are in direct competition with Complainant. In other words, Respondent appears to be using the provision of consumer resources about the Amazon as a ruse. The act of rerouting traffic to a competitor�s site coupled with the use of domain names that are confusingly similar to Complainant�s marks, does not constitute a bona fide offering of goods or services. Moreover, Respondent freely admits that his website initially was structured to resemble the A site and was only modified to its present state after Complainant demanded that Respondent cease and desist such use.
The Respondent is not, and does not allege that he is or has been known by any of the names contained in the Disputed Domain Names.
The Respondent�s use of the Disputed Domain Names is clearly commercial. As stated above, the website provides links to various commercial websites that compete with Complainant in the sale and distribution of books, as well as other items.
The panel finds that Respondent does not have legitimate rights to or interests in the domain names or .
C. Registered and Used in Bad Faith
Respondent claims that he did not register the Disputed Domain Names in bad faith. Despite his contention, it is apparent from his actions that this is not the case. Paragraph 4(b)(iv) of the Policy states that registration in bad faith may be found if the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [the Respondent�s] website or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation or endorsement of [the Respondent�s] website or location or of a product or service on [the Respondent�s] website or location."
It is apparent that Respondent has an interest in attracting consumers to the and sites. The Panel finds it is a reasonable inference that Respondent, in choosing the Disputed Domain Names, was motivated by the prospect of attracting consumers who erroneously visit these sites rather than Complainant's sites.
In addition to admitting to copying the look of Complainant�s A site, Respondent has not denied Complainant�s allegation that Respondent took source code from Complainant�s site in order to copy its appearance. Respondent�s argument that it copied the look of Complainant�s site in an unsuccessful attempt to gain affiliate status with Complainant is of no consequence as Respondent�s desire to be an affiliate cannot excuse its registration of the Disputed Domain Names and its subsequent copying of Complainant�s site. By registering the Disputed Domain Names and then copying the layout of the Complainant�s site, Respondent purposefully attempted to create confusion as to the sponsorship of the site. While Respondent has since changed the appearance of his website, this is not enough to overcome the inference that Respondent�s site was initially created, and that the Dispute Domain Names were registered, with the intent of trading on the goodwill associated with the Complainant�s mark.
Based on the foregoing, the Panel finds that bad faith registration and use have been established.
7. Decision
In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Timothy D. Casey
Presiding Panelist
M. Scott Donahey
Panelist
James H. Grossman
Panelist
Dated: August 4, 2003
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