DECISION

Amazon.com, Inc. v. Hosting Provider Service

Claim Number: FA0307000167927

PARTIES

Complainant is Amazon.com, Inc., Seattle, WA (“Complainant”) represented by James E. Geringer of Klarquist Sparkman LLP. Respondent is Hosting Provider Service, Tocumen, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amazonpills.com> registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he  has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 7, 2003; the Forum received a hard copy of the Complaint on July 8, 2003.

On July 8, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <amazonpills.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 10, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 30, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@amazonpills.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August  6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <amazonpills.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark.

2. Respondent does not have any rights or legitimate interests in the <amazonpills.com> domain name.

3. Respondent registered and used the <amazonpills.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a number of trademark registrations for the AMAZON.COM mark in the United States and internationally. For example, Complainant holds a trademark registration with the U.S. Patent and Trademark Office (“USPTO”) for the AMAZON.COM mark (Reg. No. 2,078,496 registered on July 15, 1997) related to computerized on-line ordering services, featuring the wholesale and retail distribution of books. From its early focus on books and other media materials, Complainant has expanded its operations to include a full line of goods ranging from computer products and electronics to toys, apparel, household goods and other consumer products. Complainant also sells a wide variety of health care products in partnership with Drugstore.com.

Respondent registered the <amazonpills.com> domain name on August 22, 2002. Respondent is using the disputed domain name to divert Internet traffic to a website at the <pharmapills.com> domain name, which sells pharmaceutical products over the Internet.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the AMAZON.COM mark through registration with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <amazonpills.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the generic term “pills” to the mark. The addition of this generic term does not sufficiently distinguish Respondent’s domain name from Complainant’s mark because the mark remains the dominant element of the domain name. Therefore, the Panel finds that the <amazonpills.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not answered the allegations of the Complaint. Therefore, the Panel accepts all of Complainant’s reasonable allegations and inferences to be true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to reply to the Complaint, the Panel presumes that Respondent lacks any rights to or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <amazonpills.com> domain name to divert Internet users to <pharmapills.com>, which sells pharmaceuticals over the Internet in competition with Complainant. The use of a domain name confusingly similar to Complainant’s mark to sell goods that compete with Complainant’s business does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Moreover, Respondent has proffered no proof and there is no evidence in the record that indicates Respondent is commonly known by AMAZON PILLS or <amazonpills.com>. Thus, Respondent has failed to establish its rights to or legitimate interests in the disputed domain name for purposes of Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent’s registration and use of the <amazonpills.com> domain name, a domain name confusingly similar to Complainant’s registered trademark, to compete with Complainant’s business illustrates Respondent’s bad faith registration and use of the disputed domain name. The Panel finds that Respondent intentionally attempted to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <amazonpills.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf, (Ret.), Panelist

Dated:  August 20, 2003

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