WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. Kim Yoon-Jo
Case No. D2003-0774
1. The Parties
The Complainant is A, Inc., Seattle, United States of America, represented by Fulbright & Jaworski, LLP, United States of America.
The Respondent is Kim, Yoon-Jo, Dalseo-Gu, Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2003. On October 2, 2003, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the domain name at issue. On November 11, 2003, Gabia Inc. transmitted by email 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 contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 11, 2003. The Center verified that the Complaint together with the amendment to 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 Supplement 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 December 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2004.
The Center appointed Thomas P. Pinansky, M. Scott Donahey and Moonchul Chang as panelists in this matter on February 10, 2004. 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.
An extension of the due date of the decision from February 25, 2004, to March 3, 2004, was granted on February 25, 2004.
4. Factual Background
A is one of the best-known Internet-based companies. Jeff Bezos ("Bezos"), the company’s founder, was a pioneer in the use of the Internet as a medium of commerce. In 1995, Bezos created an Internet website that permitted consumers around the world to purchase books on-line.
A was one of the first corporations to make the name of its business identical to the domain name from which its business operates. Since its inception, A has continuously operated from the Internet address "www.a". When A opened its cyber-doors, its site primarily featured books, which is still an integral part of A’s business. Since then, A has expanded its operations to include a broader selection of products.
From the start, A very quickly developed a strong international presence. Today, tens of millions of customers from over 220 countries have made purchases through the A Site. In 2002, international sales accounted for nearly one-third of A’s total sales.
As A expanded its business internationally, it began to operate websites that use Country Code Top Level Domain Names that are specific to individual countries. For example, A’s , , , and sites target customers respectively in the United Kingdom, Germany, France, Japan and Canada.
The AMAZON.COM mark is registered in 72 individual countries, and has over 400 additional registration applications pending all over the world. A is a registered trademark with the United States Patent and Trademark Office 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 disks, floppy disks, CD ROMs, and direct digital transmission, in Class 35. The AMAZON.COM mark has been registered in Republic of Korea, where Respondent resides, since April 2, 1999, (Republic of Korea registration nos. 41-54414, 41-70633, 65692, 47942, 70316, 73017 and 73018). (Annexes 22, 23 and 24 of the Complaint.)
The AMAZON.COM mark is particularly well known among Internet users, the trading areas and channel of trade used by both Complainant and Respondent. There are not similar marks in common commercial use. A recent review of the database maintained by the United States Patent and Trademark Office reveals not a single registration (other than those owned by Complainant) for any mark that included both "amazon" and "com." See Annex 25. No other major on-line business and no major "brick and mortar" bookstore use any variant of "Amazon" in its name.
5. Parties’ Contentions
A. Complainant
The Complainant assets, inter alia, as follows:
(i) The Domain Name is identical or confusingly similar to Complainant’s trademark.
(ii) Respondent incorporated the entire AMAZON.COM mark into its domain name, adding only the term "fire" to the mark, which is not legally significant.
(iii) The website and A sell closely related goods and serve closely related users.
(iv) Respondent and A use the same distribution channel.
(v) Respondent has no rights or legitimate interests in respect to the domain name.
(vi) Respondent’s use of the domain name prior to notification of this dispute was not in connection with a bona fide offering of goods or services.
(vii) Respondent is neither affiliated with A, nor has A granted Respondent the right or permission to use its famous AMAZON.COM trademark.
(viii) A’s rights in the AMAZON.COM mark predate Respondent’s registration of the domain name.
(ix) Complainant first used the domain name in commerce in 1995, and registered the AMAZON.COM trademark with the United States Patent and Trademark Office on July 15, 1997. See Annexes 4 and 22 of the Complaint. Such registration of a mark constitutes constructive notice of the registrant’s claim of ownership thereof. See 15 U.S.C. ∮ 1072; The Step 2 Company v. S Corp., WIPO Case No. D2000-0393 (June 26, 2000).
(x) The A website is one of the most frequently visited shopping sites on the Internet.
(xi) A has received frequent attention in the Korean press and, in 2002, A earned over $7.5 million in revenues from sales to shoppers in the Republic of Korea. See Annex 30 of the Complaint.
(xii) Respondent both registered the infringing domain name, and began operating the website, for the sole purpose of trading off of Complainant’s goodwill and targeting users attempting to reach the genuine A site and not for any legitimate business purpose.
(xiii) Before registering the domain name, Respondent was not commonly known, as an individual, business or other organization, by the domain name.
(xiv) Respondent is not making a legitimate noncommercial or fair use of the domain name.
(xv) Respondent registered and is using the domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complaint’s contentions.
6. Discussion and Findings
A. Selection of Language
The Complaint, although submitted in Korean, was originally prepared in the English language. Yet, there has been no response in any language. All three panelists speak English. The vast majority of the voluminous annexes are in English.
According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. It is noted, however, that the spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In this case, the Complainant is not able to communicate efficiently in Korean and the Respondent has not participated in these proceedings. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, Korean language documents submitted have been reviewed by the Panel.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules, as considered appropriate (see Paragraph 14(b) of the Policy; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
C. Identical or Confusingly Similar
The Domain Name at issue wholly incorporates the Complainant’s registered service mark and business name "A." 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" within the meaning of the Policy. See A, Inc. v. MCL International Limited, WIPO Case No. D2000-1678 (March 12, 2001), at page 4; Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415 (September 18, 2000), at page 3; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (April 25, 2001), at page 5; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000), at page 4. 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). The addition of a suffix, here the word " fire," is insufficient to eliminate the likelihood of confusion emanating from the wholesale incorporation of the Complainant’s trademark. 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 several factors. The Complainant and the Respondent sell related goods and services. They use the same medium of commerce, the Internet, and appear to have similar target groups of Internet shoppers. Finally, the word "Amazon" is distinctive. The word is closely associated with the Complainant’s business but has no apparent connection with the Respondent.
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.
D. Rights or Legitimate Interests
The Panel is further satisfied, on the evidence presented, that the Respondent has 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 Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent quite likely had actual notice of the Complainant’s rights in the name, given its use by the Complainant since 1995 and the Complainant’s high level of recognition in the Internet commerce industry. See A, Inc. v. Amazoninsu Company, WIPO Case No. D2001-1275 (December 2001), at page 4 ("it strains belief that the Respondent did not know of [A’s] mark and reputation at the time of registration"). In these circumstances, it can properly be inferred that the Respondent’s primary purpose in registering and using the domain name was to trade on the Complainant’s goodwill in its mark – a situation that does not qualify as "bona fide" use within the meaning of Paragraph 4(c)(i) of the Policy.
Second, there is no evidence to suggest that the Respondent has "been commonly known" by the disputed Domain Name. The name "Amazon" has no apparent association with the Respondent, its business, or with the goods and services it offers for sale. The Respondent’s name is "Mr. Kim, Yoon-Jo"; and the goods and services offered by him have no connection with the word "Amazon."
Third, the disputed domain name is being used for commercial purposes and hence does not meet the "non-commercial or fair use" criterion.
Finally, the Panel notes 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 Respondent 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.
E. Registered and Used in Bad Faith
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 Marshmallow, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6. Paragraph 4(b) of the Policy sets forth non-exclusive indicia of bad faith.
For purposes of the Policy, a finding of any of the circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith. Furthermore, the Panel notes that those 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 Respondent’s 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 Respondent has no rights or legitimate interests in the domain name. It has also been established that the Respondent 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 by the Respondent on its website are similar to those offered by the Complainant. Moreover, Respondent’s bad faith registration and use of the domain name can be inferred from Respondent’s inclusion of the entire AMAZON.COM trademark in the Domain Name and Respondent’s failure to respond to Complainant’s efforts to contact him. The logical inference – sufficiently supported by the evidence here – is that the Respondent registered and is using the disputed Domain Name with the intention of attracting Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the Domain Name in accordance with Paragraph 4(b) of the Policy. This renders it unnecessary to address the Complainant’s further allegations regarding bad faith.
7. Decision
For all 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.
Thomas P. Pinansky
Presiding Panelist
M. Scott Donahey
Panelist
Moonchul Chang
Panelist
Date: March 2, 2004
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