WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Applied Business Solutions
Case No. D2003-0309
1. The Parties
The Complainant is A, Inc., Seattle, Washington of United States of America, represented by Jones Day of Los Angeles, United States of America.
The Respondent is Applied Business Solutions, Denver, Colorado of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 24, 2003, the Center transmitted by e-mail to Network Solutions, Inc. Registrar (dba VeriSign, Inc.) a request for registrar verification in connection with the domain name at issue. On April 25, 2003, VeriSign, Inc. Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. 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 April 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on May 26, 2003.
The Center appointed Terrell C. Birch as the sole panelist in this matter on June 12, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant�s mark, AMAZON.COM is a registered service mark covered, inter alia by Reg. No. 2,078,496 of July 15, 1997, and Reg. No. 2,167,345 of June 23, 1998.
Complainant�s mark, AMAZON.COM OUTLET is a registered federal service mark covered by Reg. No. 2,649,373 of November 12, 2002.
Both of Complainant�s marks have become famous as representing one of the best known international websites on the Internet. The historical factual presentation by Complainant clearly establishes this status well before any adoption of the domain name and its registration by Respondent with VeriSign, Inc., the registrar, July 16, 2002.
In November 2002, Complainant learned that Respondent had registered the domain name with VeriS on July 16, 2002. Respondent uses the domain name as the address of an online outlet store offering for sale goods that are directly competitive with those offered on Complainant�s Website, including toys and dolls, fountains, bird houses, statues and figurines, jewelry, watches, swords and knives, incense, clocks, novelties, housewares, and tools. The Website also promotes and links to the Website, through which Internet users can access links to numerous Websites offering for sale goods and services including books, music, magazines and video games. Like the Website, Complainant offers for sale on the A Website thousands of toys and dolls, jewelry, watches, knives, clocks, kitchen wares and housewares. Many of these items are sold in the "A Outlet" store, which offers bargains and clearance items in most product categories found on the A site. The A Outlet store has a distinctive teal and orange color scheme, which Respondent has attempted to duplicate on the infringing Website.
On November 21, 2002, and December 6, 2002, Complainant attempted to contact Respondent at the e-mail address provided by Respondent to VeriS. To date, Respondent has neither answered nor acknowledged Complainant�s e-mail.
Respondent�s registration and use of the domain name creates the impression among consumers that Respondent�s business is affiliated with A. In reality, however, Respondent is neither affiliated with A, nor has A granted Respondent the right or permission to use its AMAZON.COM OUTLET® trademark or the famous AMAZON.COM® trademark.
Respondent has added the descriptive term "outlet stores" to Complainant�s mark, and the term "stores" to the AMAZON.COM OUTLET® mark, intending to capitalize on the famous AMAZON.COM® trademark. Respondent�s obvious intent is to attract Internet users attempting to reach the genuine A Site by capitalizing on the "propensity of Internet users to add product descriptors . . . to well-known marks when looking for the mark holder�s corresponding website." PRIMEDIA Magazine Finance, Inc. v. Zuccarini, WIPO Case No. D2000-1186 (November 20, 2000). Such users are diverted to Respondent�s site, which is confusingly similar to Complainant�s A Outlet store, and which sells goods directly competitive with those sold on the Complainant�s A Site. The misdirected consumers are likely to believe that the Website is endorsed, sponsored, or operated by A, or is an affiliate of A offering goods for sale at a discounted price. Respondent registered and is using the domain name in order to trade off and benefit from the high levels of goodwill generated by the AMAZON.COM® trademark. Respondent�s business does not have a brand identity of its own that could possibly attract such high levels of customer goodwill and name association. Thus, rather than develop goodwill in independently created trademarks, Respondent simply misappropriated A�s hard-won reputation for quality and its popularity as an Internet destination.
5. Parties� Contentions
A. Complainant
Respondent has sought improperly to profit from A�s substantial investment in its trademark and reputation by incorporating the famous AMAZON.COM® trademark into its domain name. Thus, Respondent seeks simultaneously to trade off of the goodwill the A name has come to enjoy among consumers and to reduce the value of that goodwill by improperly associating A�s name with goods and services from unrelated sources. As a result of Respondent�s actions, A�s hard-won reputation for premium quality is being diluted, the value of its trademarks is being diminished, and consumers are being misled and confused. The domain name should be transferred to A because it is confusingly similar to A�s trademark, Respondent has no rights or legitimate interests in the domain name, and Respondent registered and is using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent�s domain name is confusingly similar to Complainant�s AMAZON.COM® and AMAZON.COM OUTLET® marks. Respondent�s domain name incorporates A�s trademarks in their entirety, adding only the descriptive term "outlet stores" to the AMAZON.COM® mark and the term "stores" to the AMAZON.COM OUTLET® mark. Otherwise, Respondent�s mark is identical to Complainant�s. The mere addition of a descriptive term or terms to a domain name is not sufficient to distinguish it from another�s trademark. Generally, a user of a mark "may not avoid likely confusion by appropriating another�s entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition � 23.50 (4th ed. 1998); Adaptive Molecular Tech., Inc. v. Woodward & Thorton, WIPO Case No. D2000-0006 (February 28, 2000) (domain name that incorporated the "primary, distinctive element of both of Complainant�s trademarks" was "undoubtedly" confusingly similar); A, Inc. v. MCL International Ltd., WIPO Case No. D2000-1678 (March 12, 2001) (domain name was "confusingly similar to the mark �AMAZON.COM�"); A, Inc. v. Amazoninsu Company, WIPO Case No. D2001-1275 (December 20, 2001) (domain name was confusingly similar to the AMAZON.COM® mark); A, Inc. v. A.R. Information and Publication, Ltd., WIPO Case No. D2001-1392 (April 10, 2002) ( domain name confusingly similar to the AMAZON.COM® mark).
Administrative panels and arbitrators considering similar cases where registrants simply added descriptions of services or products to a registered trademark have found such domain names to be confusingly similar. See Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000) (domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001) (domain names that added generic words "leasing� or "elite" to the LEXUS trademark were confusingly similar to the trademark). A, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2001) (domain name was "confusingly similar to the mark �AMAZON.COM�"); A, Inc. v. Amazoninsu Company, WIPO Case No. D2001-1275 (December 20, 2001) (domain name was confusingly similar to the AMAZON.COM® mark); A, Inc. v. A.R. Information and Publication, Ltd., WIPO Case No. D2001-1392 (April 10, 2002) ( domain name was confusingly similar to the AMAZON.COM® mark); A, Inc. v. PDC, WIPO Case No. D2003-0076 (March 26, 2003) (Respondent�s domain names adding descriptive words "drugs," "pharmacy" and "doctor" to the AMAZON.COM® trademark were a "fortiori confusingly similar" to the mark).
In the case of the domain name, Respondent has added the descriptive, generic term "outlet stores" to A�s trademark with the obvious intent to induce Internet users to believe that the Respondent�s Website is operated as an affiliate or division of A offering bargains and clearance items. In fact, as Respondent is no doubt aware, the genuine A Site includes a special "A Outlet" store, using a distinctive teal and orange color scheme that differentiates it from the rest of the site. Respondent has attempted to duplicate this color scheme on the infringing site in a further attempt to confuse consumers.
An average consumer seeing the genuine A Site and the A Outlet store and the Website could easily believe that the products and services offered under each mark emanate from the same source, or that the Website is affiliated with, sponsored or approved by A. Such similarities have "often resulted in a finding that the two marks are likely to confuse." Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F.Supp. 1031, 1037 (N.D. Ga. 1986) ("Garbage Pail Kids" stickers infringed "Cabbage Patch Kids" trademark). See also Grey v. Campbell Soup Co., 650 F.Supp. 1166, 1173 (C.D. Cal. 1986) ("Dogiva" and "Cativa" marks for pet biscuits are sufficiently similar to "Godiva" chocolates trademark to support trademark infringement claim).
Moreover, even if consumers, upon examination of the Website, are able to discern that the site is not connected to A, the damage will already have been done. The use of another�s trademark to arouse the initial interest of a consumer in an unrelated Website has been found to create a likelihood of confusion. See Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000) (once the user has been diverted by a confusingly similar domain name , "the registrant has already succeeded in its purpose of using the service mark to attract the user"); Brookfield Communications, Inc., 174 F.3d at 1062.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth three grounds which provide a Respondent the opportunity to show that it has rights or a legitimate interest in the domain name, as follows:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
However, since Respondent has chosen not to respond to the Complaint, the Panel finds that Complainant has made a prima facie case to establish the required elements of Paragraph 4(a)(ii) of the Policy. Accordingly, the Panel holds that Respondent has no rights or legitimate interest in respect of the domain name .
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four non-exclusive circumstances which, if present, shall be evidence that Respondent registered and used the domain name in bad faith. Pursuant to paragraph 4(b)(iii), registration of a domain name primarily for the purpose of disrupting the business of a competitor constitutes registration and use of the domain name in bad faith. Pursuant to paragraph 4(b)(iv), intentional use of a domain name to attract, for commercial gain, Internet users to respondent�s Website by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of respondent�s Website, or of a product or service on respondent�s Website, is also evidence of registration and use of the domain name in bad faith. Respondent�s registration and use of the domain name clearly falls into both of these categories.
Respondent�s Website disrupts A�s business by siphoning customers from the A Site. Internet users who stumble upon Respondent�s Website in an effort to reach the genuine A Site are likely to believe that they have reached an affiliate of A. There is no indication on the Website that it is not affiliated with or sponsored by A. Moreover, the Website offers products that are directly competitive with goods sold on the A Site. Respondent�s Website offers for sale goods including toys and dolls, fountains, bird houses, statues and figurines, jewelry, watches, swords and knives, incense, clocks, novelties, housewares, and tools. Similarly, the A Site offers for sale thousands of toys and dolls, jewelry, watches, knives, clocks, novelties, kitchen wares and housewares, and tools. Many of these products are sold at discount prices on Complainant�s A Outlet store.
The similarities between Respondent�s domain name, Website and products offered thereon and Complainant�s trademark, corresponding domain name and Website and products lead to the ineluctable conclusion that Respondent registered and uses the domain name in order to misdirect Internet users to its Website by creating a likelihood of confusion among consumers attempting to reach the genuine A Site. Such circumstances have lead to findings of bad faith by Administrative Panels pursuant to Paragraph 4(b)(iv). See A, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2000) (intentional use of domain name to attract Internet users for commercial gain to its Website by creating a likelihood of confusion with the AMAZON.COM mark constitutes bad faith registration and use of domain name); A, Inc. v. Victor Korotkov, WIPO Case No. D2002-0516 (August 13, 2002) (finding Complainant�s mark to be so well known that it was "inconceivable Respondent was unaware of the trademark, its connotations and its commercial attractiveness"); American Institute of Floral Designers v. Palm Coast Floral, Inc., WIPO Case No. D2000-0335 (June 27, 2000) (use of complainant�s mark as a domain name resolving to Website for competitive business constituted bad-faith registration and use of domain name). Moreover, Respondent�s purpose in registering and using the counterfeit domain name can only be to disrupt Complainant�s business by depriving it of revenues that would rightfully belong to A.
Paragraph 4(b) explicitly recognizes that the "bad faith" circumstances set forth therein are nonexclusive. Bad faith can be inferred from Respondent�s failure to respond to Complainant�s effort to make contact regarding the disputed domain name. See Encyclopedia Britannica, Inc. v. John Zuccarini et al., WIPO Case No. D2000-0330 (June 7, 2000) (bad faith based on Respondent�s failure to respond to demand e-mail). On November 21 and December 6, 2002, Complainant wrote to the e-mail address provided to VeriS by Respondent as a contact address, informing Respondent that the registration of the domain name violates Complainant�s rights pursuant to the UDRP and several state and federal laws of the United States. To this day, Respondent has not responded to Complainant�s e-mail.
Respondent�s bad faith can be further inferred from Respondent�s use of Complainant�s marks in their entirety in the domain name. Panel decisions have held that there can be no legitimate purpose for the use of a domain name incorporating an entire trademark owned by another. See A, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2002) (inferring bad faith from use of entire AMAZON.COM® mark in the domain name); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001) (inferring bad faith from use of entire LEXUS mark in domain names); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000) (inferring bad faith use of CELLULARONE mark in the domain name). The domain name fully incorporates both the AMAZON.COM® and AMAZON.COM OUTLET® marks. These facts compel a finding that Respondent registered and uses the domain name in bad faith, and the Panel so holds.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Terrell C. Birch
Sole Panelist
Dated: July 2, 2003
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