WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. PDC
Case No. D2003-0076
1. The Parties
The Complainant is A, Inc., a Delaware corporation with its principal office in Seattle, Washington, the United States of America. The Complainant is represented in this proceeding by John C. Rawls, Esq. of Jones, Day, Reavis & Pogue, Los Angeles, California, the United States of America.
The Respondent is PDC of Ventura, California, the United States of America. The Respondent is represented by its administrator, Ms. Zulfiyya Mammedova.
2. The Domain Names and Registrar
The three (3) disputed domain names are: , and .
The registrar for the disputed domain names is directNIC of New Orleans, Louisiana, the United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2003. On February 4, 2003, the Center transmitted by email to the registrar directNIC a request for registrar verification in connection with the disputed domain names. On February 6, 2003, directNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names and providing the contact 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 "Rules"), 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 this proceeding began on February 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 27, 2003. The Response was filed with the Center on February 22, 2003.
The Complainant submitted an unsolicited supplemental filing to the Center on March 7, 2003. However, in accordance with Rule 12, the Panel has decided not to solicit and will not consider supplemental filings from either party.
The Center appointed Messrs. David W. Plant, Luca Pusateri and Dennis A. Foster as panelists on March 10, 2003. The Panel finds that it was properly appointed. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a well-known company founded in 1995, that specializes in selling merchandise over the Internet. Although the Complainant initially sold mainly books, it now sells a myriad of products, including books, videos, recorded music and health and beauty products. In partnership with another company, D, the Complainant now sells healthcare products, including herbal supplements (Complaint Annex 27). For the first three quarters of 2002, the Complainant had revenue of US$2.5 billion (Complaint Annexes 6-11). The Complainant owns many "A" mark registrations for selling goods over the Internet in the United States and many other countries in the world. The Complainant�s first United States federal trademark registration was on July 15, 1997, i.e., some 4 years before registration of the first disputed domain name.
The Respondent is an enterprise selling over the Internet herbs, vitamins and other health products, and also health encyclopedias. The Respondent registered the disputed domain names and on June 15, 2001, and on July 16, 2002.
5. The Parties� Summarized Contentions
Complainant
- Respondent refused to comply with Complainant�s demand that it cease its infringing use of the domain names and transfer them to the Complainant. Instead, Respondent began to operate its own infringing web sites from the disputed domain name , and pointed the and domain names to it.
- Respondent�s registration and use of the domain names , and creates the impression among consumers that Respondent�s business and services are affiliated with the Complainant.
- In reality, Respondent is neither affiliated with the Complainant nor has the Complainant granted Respondent the right or permission to use its famous Amazon trademark.
- Respondent has added the generic, descriptive terms "drugs," "pharmacy" and "doctor" to Complainant�s mark, intending to capitalize on the Complainant�s famous mark.
- The Respondent seeks simultaneously to trade off the goodwill the Complainant has come to enjoy among consumers and to reduce the value of that goodwill by improperly associating the Complainant�s name with goods and services from unrelated sources.
- Other than the descriptive terms "drugs," "pharmacy" and "doctor," the Respondent�s marks are identical to the Complainant�s mark.
- When a domain name wholly incorporates a Complainant�s registered mark, that is sufficient to establish confusing similarity for the purposes of the UDRP process.
- Even if consumers, upon examination of the "" website, are able to discern that the site is not affiliated with A, the damage will already have been done.
- There is substantial overlap between the goods and services sold by A and the goods and services offered on the disputed domain name web site.
- Respondent�s use of the three (3) disputed domain names prior to notification of this dispute was not in connection with a bona fide offering of goods or services.
- Respondent is neither affiliated with the Complainant nor has the Complainant given the Respondent the right or permission to use its famous "A" trademark.
- Respondent should be charged with both constructive and actual notice of Complainant�s prior use of the "A" name and mark.
- Respondent�s bad faith can be inferred from its registration of the multiple infringing domain names , and .
- The similarities between Respondent�s domain names and Complainant�s trademark and corresponding domain name, and between the products offered at Respondent�s "" and "A" web sites leads to the ineluctable conclusion that the Respondent registered and uses the three (3) disputed domain names to misdirect Internet users by creating a likelihood of confusion among consumers attempting to reach the Complainant�s genuine web site.
Respondent
- The three (3) disputed domain names were created to promote a healthy lifestyle for people around the world using plants, herbs, and medications cultivated, planted, and grown in the Amazon regions of South America.
- The founder, Ms. Zulfiyya Mammedova, thrives not only to promote the healthy life style of vegetarianism and herbalism of Amazon plantations, but is also geared to provide appreciation of land and cultivation back to the Amazon region by promoting Amazon businesses which are promoters of the Amazon�s natural products.
- The Complainant does not directly sell any natural or herbal products.
- The suppliers to the Respondent work with the natives of the South American Rainforest in order to procure the finest botanicals in the world.
- Very little traffic has arrived at the disputed domain name web sites.
- The purchase of the disputed domain names, creation of web sites, promotion of business lines, and marketing of the web sites are all done in good faith to benefit the Amazon, good health, and the hard work of the Respondent.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns a vast number of "A" mark registrations in the United States and in many other countries (Complaint Annexes 21 and 22). The marks are mainly for selling merchandise over the Internet. Through its proof of wide-ranging use and its citations to a number of authoritative mark evaluation agencies, the Complainant also has demonstrated to the Panel that its mark is a strong and famous one (Complaint Annexes A-F and M-Q and Complaint pages 6-10).
The disputed domain names differ from the Complainant�s mark only in that they have added the words "drugs," "pharmacy" and "doctor." The Panel finds, as the Complainant argues, that the Respondent is using these three (3) words added to the "A" mark in their merely descriptive sense. That is to say, the Respondent is associating all three words with medicines and health care. Thus, the only distinctive part of the three (3) disputed domain names is the Complainant�s mark, and the Respondent�s domain names are a fortiori confusingly similar to the Complainant�s mark (Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778, October 1, 2001, where was found confusingly similar to the "Playboy" mark; and Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006, February 28, 2000, where the distinctive features of the domain name were the Complainant�s mark). The Panel finds the Complainant has satisfied its burden of proof under the Policy at paragraph 4(a)(i).
B. Rights or Legitimate Interests
Among its contentions, the Complainant states it has no affiliation with the Respondent and has not authorized the Respondent to register domain names using the Complainant�s mark.
At 4(c)(i-iii), the Policy provides three (3) ways in which the Respondent may show that it does have legitimate rights and interests in the disputed domain name. Of these three, the Respondent has attempted to show, per 4(c)(i), that it has legitimate rights and interests in the disputed domain names by using them to run a herbal products business. The Respondent contends but does not attempt to show the Panel that its products come from the Amazon River area of South America. So far from appearing to be a bona fide offering of goods and services, this appears to the Panel to be a bad faith offering of goods and services because the Respondent is in fact attempting to use the Complainant�s famous mark to jump-start the Respondent�s business. The Panel discusses the Respodent�s bad faith further below.
One Panel members disagrees with the majority view and would find that the Respondent has satisfied the requirements of Policy paragraph 4(c)(i) in demonstrating a bona fide offering of goods and services using the disputed domain names. This panelist finds the Complainant�s mark, "A", is not a strong one because it is based on a geographical region. For him, the Complainant�s trademark would be comparable to "Europe Vacations" or "Asia Culture"; and Amazon is a typical region of our world which could be used by anyone in order to characterize his activity in connection with that part of the earth. This dissenting panelist also would find that the Complainant has not shown that it sells the same kinds of products as the Respondent.
The Panel majority finds the Complainant has shown the Respondent does not have legitimate rights or interests in the disputed domain name per the Policy paragraph paragraph 4(a)(iii).
C. Registered and Used in Bad Faith
As the Complainant contends, the Panel is convinced the Respondent knew of the Complainant�s world famous mark when it registered the three (3) disputed domain names. And as the Complainant further contends, the Respondent was using the Complainant�s mark in the disputed domain names to drive traffic to the Respondents� websites in hopes the public would believe the Respondent�s web site was the Complainant�s, and thus the public would be more willing to buy the Respondent�s herbal products. This is squarely in violation of the Policy�s bad faith provisions at at 4(b)(iv). Even if the Respondent had succeeded in showing its contention that the three (3) disputed domain names have drawn little traffic, which it did not, this would scarcely be relevant and would not disprove that the Respondent�s scheme is in violation of the Policy at 4(b)(iv). The Panel majority finds the Complainant has carried its burden of proof under Policy paragraph 4(a)(iii).
The dissenting Panel member disagrees with the majority view on bad faith and would find that, since in his view the Respondent has shown a bona fide offering of goods and services under Policy paragraph 4(c)(i), there can be no finding of Respondent bad faith under Policy paragraphs 4(b)(i-iv).
7. Decision
The Panel majority, with one member dissenting, has found that the disputed domain names are confusingly similar to the Claimant�s "A" mark. The Respondent has no legitimate rights or interests in the disputed domain names and registered and is using them in bad faith. Therefore, per the Policy paragraph 4(i) and Rule 15, the Panel orders that the three (3) disputed domain names, , and be transferred from the Respondent, PDC, to the Complainant, A, Inc.
Dennis A. Foster
Presiding Panelist
Luca Pusateri
Panelist
David Plant
Panelist
Dated: March 26, 2003
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