WIPO Domain Name Decision D2003-0258 for amazonerbs.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

A, Inc. v. Wes Mayder, WeDirect, Inc. and Iclicks

Case No. D2003-0258

 

1. The Parties

The Complainant is A, Inc., a company with its principal place of business in Seattle, Washington, United States of America (hereinafter "the Complainant" or "A"). It is represented by the law firm Jones, Day, Reavis & Pogue of Los Angeles, California, United States of America.

The named Respondents are: (1) Wes Mayder, residing in San Jose, California, United States of America; (2) WeDirect, Inc., having the same address as Mr. Mayder; and (3) Iclicks of San Jose, California, United States of America. Mr. Mayder, WeDirect and Iclicks will be jointly referred to as "the Respondents."

 

2. The Domain Name and Registrar

The domain name at issue in this proceeding is .

The Registrar is Go Daddy Software, Inc. of Scottsdale, Arizona, United States of America (hereinafter "the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on April 4, 2003, and in hard copy on April 8, 2003.

On April 4, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response, listing Wes Mayder and WeDirect, Inc. as the registrants and identifying Iclicks as the technical contact.

On April 9, 2003, 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 Respondents of the Complaint, and the proceedings commenced on April 9, 2003. In accordance with the Rules, Paragraph 5(a), the due date for the Response was April 29, 2003. The Response was filed with the Center on April 28, 2003, by email only.

The Center appointed D. Brian King, M. Scott Donahey and Harrie R. Samaras as Panelists in this matter on June 6, 2003. The Panel finds that it was properly constituted in accordance with the Rules and the Supplemental Rules. Each member of the Panel has submitted a 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 facts relevant to the current dispute are set out in the Complaint and Response. Considering the evidence submitted, the Panel finds the following facts to have been established.

The Complainant, A, is one of the world�s best-known Internet companies. It offers the online sale of a large selection of books, videos, magazines, computer software, video games and other products.

A was created in 1995 and has since operated its business from the Internet address "www.a". It was one of the first companies to choose a website address as its business name.

Despite its relatively short history, A is well known worldwide and has built up considerable goodwill in its mark. According to a study by Interbrand Group, an international brand consultancy company, the AMAZON.COM mark ranks among the 100 most valuable brands in the world, with an estimated value in excess of US$1 billion (see Complainant�s Exhibit 16). The website "www.a" is one of the most frequently visited shopping sites on the Internet (see Complainant�s Exhibit 14).

The Complainant is the holder of registered marks for AMAZON.COM in 72 countries and has over 400 pending registration applications around the world. This service mark has been registered internationally since February 1997 and was first registered with the United States Patent and Trademark Office in July 1997 (see Complainant�s Exhibits 18-20).

The contested domain name, , was registered on November 27, 2001, by Respondent Iclicks (see Complainant�s Exhibit 4). On September 11, 2002, the domain name was transferred to Respondents Wes Mayder and WeDirect, Inc. The website is currently inactive; however, until about September 2002, it was used to offer computer products for sale (see Complainant�s Exhibit 21).

At the beginning of June 2002, the Complainant discovered that Iclicks had registered and was using the domain name. The Complainant wrote to Iclicks on June 11, 2002, expressing its concern regarding Iclicks� use of the allegedly infringing domain name. Mr. Douglas Ridley, Iclicks� Sales and Marketing Director, responded by email on June 11, 2002. In that email, Mr. Ridley equated Iclicks with WeDirect, Inc. (Complainant�s Exhibit 23, stating: "We are WeDirect, Inc., an online advertising firm"). Mr. Ridley went on to contend that the products being offered via the disputed domain name were not similar to those sold by A and that Iclicks was not attempting to attract business away from the Complainant. He concluded that Iclicks would neither cease its use of the disputed domain name nor transfer it to the Complainant (see id.).

Ms. Charmaine Velasco of the Complainant�s legal department replied to Iclicks by email on June 12, 2002. In that email, she contended that the disputed domain name was confusingly similar to the Complainant�s AMAZON.COM mark and that Iclicks was offering for sale computer products similar to those sold by the Complainant on its website. Asserting that Iclicks was in breach of U.S. trademark law, she urged it to reconsider its position (see Complainant�s Exhibit 23). Mr. Ridley wrote back on June 12, 2002, suggesting that the parties participate in a telephone conference to try to resolve the matter (see Complainant�s Exhibit 23).

Subsequently, apparently during August 2002, Mr. Ridley and Mr. John Rawls, counsel for the Complainant, took part in a telephone conference. The agreement reached during that telephone conference is documented in the parties� letter agreement dated September 16, 2002. The three main aspects of the agreement were as follows: (1) Iclicks would immediately disable the website "www."; (2) Iclicks would not make any use of the disputed domain name until the expiration of its registration (which was due to lapse on November 27, 2002); and (3) Iclicks would allow the registration to lapse and not re-register it (see Complainant�s Exhibit 24).

However, on September 11, 2002, five days prior to Mr. Ridley�s signature of the letter agreement on behalf of Iclicks, Iclicks had in fact transferred the disputed domain name to Wes Mayder and WeDirect, Inc. (see Complainant�s Exhibit 4). This was not revealed to the Complainant at the time.

On April 4, 2003, the Complainant initiated the present proceedings. The Complaint was sent directly to Respondent Iclicks by email. In response, Mr. Mayder of WeDirect, Inc. wrote to the Complainant by email, stating in pertinent part:

This domain was deactivated a long time ago. If Amazon wants it that bad they can have it, just send me the transfer info. This was told to someone from Amazon months ago. (WIPO Case File, document no. 6)

The Complainant�s counsel responded by email on April 28, 2003, (id.). That email declined Mr. Mayder�s offer and stated that the Complainant preferred to have the matter resolved by WIPO in accordance with the Policy, citing Iclicks� failure to abide by the letter agreement of September 16, 2002.

The record shows no further exchanges of correspondence between the parties.

 

5. Parties� Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

First, the Complainant argues that the contested domain name is confusingly similar to the Complainant�s AMAZON.COM mark, in which the Respondents have no prior rights. In support of this contention, the Complainant argues that: (i) the disputed domain name, , incorporates its AMAZON.COM mark in whole, with the addition of the suffix "erbs"; (ii) the "www." website, prior to becoming inactive, sold goods that were similar to A�s products and marketed them to a similar group of web users; and (iii) the Respondents and A use the same distribution channel. Based on these contentions, A argues that there is a serious likelihood that the Respondents� use of the disputed domain name will lead to consumer confusion by creating the impression that the Respondents are, or have some connection to, the Complainant.

Second, the Complainant argues that the Respondents have no legitimate rights or interests with respect to the disputed domain name. The disputed domain name was registered by Iclicks well after the Complainant had established rights in the AMAZON.COM mark through registration and extensive use. Its mark is so well known, A contends, that the Respondents could not possibly have been unaware of A�s rights in the mark at the time they registered the disputed domain name. In any event, the Complainant argues, the Respondents had at least constructive notice of the Complainant�s rights in the mark, based on its registration thereof, as well as actual notice at the time of the transfer to Mr. Mayder and WeDirect, Inc. on September 11, 2002. With respect to the specific circumstances identified in Paragraph 4(c) of the Policy, the Complainant additionally argues that: (i) prior to registration, the Respondents were not commonly known by the disputed domain name; (ii) the Respondents� use of the disputed domain name prior to notification of the dispute was not in connection with a bone fide offering of goods and services, as the Respondents� purpose in registering and using the domain name was to attempt to trade off the Complainant�s goodwill; and (iii) the Respondents are not making any legitimate noncommercial or fair use of the domain name.

Finally, the Complainant submits that the Respondents registered and used the disputed domain name in bad faith. A argues that this is evident from the fact that the Respondents registered a domain name confusingly similar to the Complainant�s famous mark, which name the Respondents, like the Complainant, used for an online business. A asserts, in particular, that the circumstances identified in Paragraph 4(b)(iii) of the Policy (registration of a domain name primarily for the purpose of disrupting a competitor�s business) and Paragraph 4(b)(iv) of the Policy (use of a domain name for commercial gain by creating a likelihood of confusion with the complainant�s mark) are present here. The Complainant further contends that the Respondents� re-registration of the disputed domain name several days prior to signing a letter agreement committing to let the registration lapse provides additional proof of bad faith on their part.

On the foregoing grounds, the Complainant requests that the domain name be transferred to it.

B. Respondents

In the Response dated April 28, 2003, Mr. Mayder of WeDirect, Inc. puts forward several arguments in opposition to the Complainant�s claim. Although the Response does not comply with the requirements of Paragraph 5 of the Rules, the Panel nonetheless deems it appropriate to consider the contentions contained therein.

Specifically, Mr. Mayder argues that: (i) A does not have a trademark in the name; (ii) the domain name has never been used in bad faith; (iii) although currently inactive, the domain name can be used for future legitimate purposes unrelated to the Complainant�s business, such as selling herbs; and (iv) having registered trademarks in the word AMAZON does not entitle the Complainant to claim rights in all names containing that word. In support of this last point, the Response cites to The PNC Financial Services Group, Inc., and PNC Bank, N.A. v. James Wilkerson d/b/a Iclicks Network, NAF Case No. 00104111 (March 13, 2002).

 

6. Discussion and Findings

Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements. They will be examined in turn below.

Before turning to an analysis of these elements, however, it is necessary to address a preliminary issue, that being who the proper Respondents are in this matter. The Complaint names three Respondents: (1) Wes Mayder; (2) WeDirect, Inc.; and (3) Iclicks. Paragraph 1 of the Rules defines "respondent" as "the holder of a domain-name registration against which a complaint is initiated." At the time the present Complaint was initiated (April 4, 2003), Wes Mayder and WeDirect, Inc. were the listed registrants of the disputed domain name, and not Iclicks.

Nonetheless, in the particular factual circumstances of this case, the Panel concludes that Iclicks is also a proper Respondent. Iclicks was the listed registrant of the domain name until it transferred that name (contrary to its agreement with the Complainant) to Mr. Mayder and WeDirect, Inc. on September 11, 2002. Furthermore, the evidence shows that Iclicks is at least closely related to, and probably identical to, WeDirect, Inc. Indeed, in his email of June 11, 2002, Mr. Ridley of Iclicks introduced his organization by stating, "We are WeDirect, Inc." That email, and the subsequent email sent on June 12, 2002, were signed "WeD I-C" (see Complainant�s Exhibit 23). The Panel also notes that even after Mr. Mayder and WeDirect, Inc. became the registrants of the disputed domain name on September 11, 2002, Iclicks remained as the technical contact. In these circumstances, the Panel concludes that Iclicks was properly named as a Respondent in this case, along with Mr. Mayder and WeDirect, Inc.

With this issue resolved, the Panel turns to an examination of the three elements that the Complainant must prove in order to be entitled to relief in accordance with Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The domain name at issue wholly incorporates the Complainant�s registered service mark and business name AMAZON.COM. Numerous Panels have held that where a domain name substantially incorporates the Complainant�s mark, that is sufficient to make the domain name "confusingly similar." See A, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2001), at page 4; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (April 25, 2001), at page 5; A, Inc. v. Holy Land Mall, WIPO Case No. D2002-1083 (February 27, 2003), at page 4. The addition of the suffix "erbs" in the disputed domain name is insufficient to eliminate the likelihood of confusion emanating from the wholesale incorporation of the Complainant�s mark. See A, Inc. v. A.R. Information & Publication Co. Ltd., WIPO Case No. D2001-1392 (April 10, 2002), at page 4.

In the present case, the confusing similarity between the disputed domain name and the Complainant�s service mark is enhanced by other factors. The Respondents sold goods that were similar to some of those sold by the Complainant, used the same medium of commerce (the Internet) and appear to have had similar target groups of Internet shoppers. Furthermore, the word "Amazon" is distinctive. It is closely associated with the Complainant�s business but has no apparent connection either with the Respondents or with the goods that were offered for sale on their website.

For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant�s registered service mark. Accordingly, the first element under Paragraph 4(a) has been met by the Complainant.

B. Rights or Legitimate Interests

The Panel is further satisfied, on the evidence presented, that the Respondents have no rights or legitimate interests in respect of the domain name at issue. In particular, the Panel finds that none of the three circumstances identified in Paragraph 4(c) of the Policy as indicative of legitimate rights or interests is present here.

First, the Respondents are not using the disputed domain name in connection with a bona fide offering of goods or services. In fact, at present, the domain name is not being used at all. Nor can its prior use by Iclicks to sell computer products be characterized as bona fide. Iclicks was on constructive notice of the Complainant�s rights in the name AMAZON.COM at the time it registered the disputed domain name; this follows from the Complainant�s registration of AMAZON.COM as a service mark in 1997 in the United States, the domicile of both the Complainant and the Respondents. See 15 U.S.C. � 1072 (trademark registration constitutes constructive notice of the registrant�s claim of ownership thereof); The Step2 Company v. S Corp., WIPO Case No. D2000-0393 (June 26, 2000), at page 4. Indeed, Respondent Iclicks quite likely had actual notice of the Complainant�s rights when it first obtained the disputed domain name on November 21, 2001, given the Complainant�s use of its mark since 1995 and its high level of recognition in the Internet commerce industry. See A, Inc. v. Amazoninsu Company, WIPO Case No. D2001-1275 (December 20, 2001), at page 4 ("it strains belief that the Respondent did not know of [AMAZON.COM�s] mark and reputation at the time of registration"). In any event, all three Respondents had actual notice of the Complainant�s rights in the name at the time it was transferred to Mr. Mayder/WeDirect, Inc. on September 11, 2002, since by that time the Complainant had expressly asserted its rights in correspondence between its counsel and Iclicks/WeDirect, Inc. In these circumstances � and considering also the fact that the Respondents� website, when operational, offered products similar to those offered by the Complainant � it can fairly be inferred that the Respondents� primary purpose in registering and using the domain name was to trade on the Complainant�s goodwill in its mark. Such use does not qualify as "bona fide" within the meaning of Paragraph 4(c)(i) of the Policy.

Second, there is no evidence to suggest that the Respondents have "been commonly known" by the disputed domain name. The name "Amazon" has no apparent association with the Respondents, their business, or the goods and services they offer.

Third, the disputed domain name was formerly used for commercial purposes and hence the "non-commercial or fair use" criterion is not met. Indeed, as noted, the domain name is currently not being used at all.

Finally, the Panel notes that where a mark has a "strong reputation and is widely known . . . in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent." Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000), at page 5. Such is the case here, inasmuch as the Complainant is widely known and never gave any license or other permission to the Respondents to use the name "A."

Accordingly, the Panel concludes that the Complainant has satisfied the second element under Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name "has been registered and is being used in bad faith." This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6.

For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use. See CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (April 26, 2000), at page 3.

The Panel is satisfied in this case that the Respondents� conduct falls within the circumstance identified in Paragraph 4(b)(iv) of the Policy. It has been established that the disputed domain name is confusingly similar to the Complainant�s service mark and that the Respondents have no rights or legitimate interests in the domain name. It has also been established that Respondent Iclicks had actual or constructive notice of the Complainant�s service mark when it registered and began using the disputed domain name, and that the products offered on the subject website were similar to those offered by the Complainant. The logical inference � sufficiently supported by the evidence here � is that Iclicks registered and used the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant�s mark as to source, sponsorship or affiliation. Given the close connection and perhaps identity between Iclicks, Mr. Mayder and WeDirect, Inc., these actions can properly be attributed to the latter two Respondents as well.

The inference of bad faith is confirmed by the events of September 2002. On September 11, 2002, Iclicks transferred the disputed domain name to Mr. Mayder and WeDirect, Inc., who re-registered it for an additional year. At that time, Iclicks had already agreed with the Complainant�s counsel that it would allow the domain name registration to lapse. Iclicks� action of transferring the disputed domain name was thus done in bad faith, in an attempt to prevent the Complainant from gaining ownership of the domain name � a strategy of which, on the evidence here, Respondents Mayder and WeDirect, Inc. would plainly have been aware. Indeed, these actions constitute an independent justification for a finding of bad faith under Paragraph 4(b) of the Policy.

The discussion above puts to rest the Respondents� contention that the disputed domain name has not been used in bad faith. The Respondents remaining arguments are similarly unavailing. While the Complainant indeed has no trademark on the name "," that name is confusingly similar to the Complainant�s AMAZON.COM mark. The suggestion that the disputed domain name could in the future be used for a permissible purpose is irrelevant where, as here, it has already been used for an impermissible one. Finally, while the Complainant may not be able to claim rights in all names containing the word Amazon, it has established entitlement to relief with respect to the name at issue in this proceeding. In this regard, the Panel finds the case relied upon by the Respondents, The PNC Financial Services Group, Inc., and PNC Bank, N.A. v. James Wilkerson d/b/a Iclicks Network, NAF Case No. 00104111 (March 13, 2002), to be distinguishable from the present matter. That decision, the reasoning of which the present Panel does not find to be persuasive, involved a much less well-known mark and was decided on the ground that the complainant there had failed to substantiate its case. Here, as explained above, the Complainant has sufficiently proven the three elements required by the Policy.

Based on the foregoing, the Panel is satisfied that bad faith registration and use have been established with respect to the domain name in accordance with Paragraph 4(b) of the Policy.

 

7. Decision

For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.

 

 

D. Brian King
Presiding Panelist

M. Scott Donahey
Panelist

Harrie R. Samaras
Panelist

Date: June 27, 2003

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