DECISION

Amazon.com, Inc. v. Vladimir Federov

Claim Number:  FA0311000211935

PARTIES

Complainant is Amazon.com, Inc. (“Complainant”), represented by Kevin M. Hayes, of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR, USA 97204. Respondent is Vladimir Federov (“Respondent”), P.O. Box 257, Moscow, Russia 111546.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <wwwamazon.com> and <amozon.com>, registered with Tucows, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Honorable Paul A. Dorf, (Ret.), Chair, Hugues G. Richard and Honorable Tyrus R. Atkinson, Jr. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on November 13, 2003; the Forum received a hard copy of the Complaint on November 17, 2003.

On November 14, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <wwwamazon.com> and <amozon.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 November 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 8, 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@wwwamazon.com and postmaster@amozon.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 December 18, 2003, pursuant to Complainant's request to have the dispute decided by a three-member Administrative Panel, Honorable Paul A. Dorf, (Ret.), Chair, Hugues G. Richard and Honorable Tyrus R. Atkinson, Jr. were appointed as Panelists.

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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwamazon.com> and <amozon.com> domain names are confusingly similar to Complainant’s AMAZON and AMAZON.COM marks.

2. Respondent does not have any rights or legitimate interests in the <wwwamazon.com> and <amozon.com> domain names.

3. Respondent registered and used the <wwwamazon.com> and <amozon.com> domain names in bad faiths.

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

FINDINGS

Complainant is a Fortune 500 Company which opened for business in July 1995 as the “Earth’s Biggest Bookstore.”   Complainant now operates six global websites, offering a variety of products and services to consumers all over the world.  Complainant also operates programs which allow virtually any business or individual the opportunity to sell just about anything to Complainant’s wide customer base. 

Complainant incorporated in 1994 in the State of Washington and reincorporated in 1996 in the State of Delaware.  Its principal corporate offices are located in Seattle, Washington.  In May 1997, Complainant made its initial public offering, and its common stock is listed on the NASDAQ National Market under the symbol “AMZN.”

Complainant owns a number of trademark registrations for the AMAZON.COM mark in the United States and internationally. Complainant registered its first trademark with the U.S. Patent and Trademark Office (“USPTO”) for the AMAZON.COM mark (Reg. No. 2,078,496) on July 15, 1997 related to computerized on-line ordering services, featuring the wholesale and retail distribution of books.

Respondent has not filed a Response to this Complaint;  therefore, it is unknown what type of commerce, if any, Respondent is engaged in.

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”).

The domain names at issue are confusingly similar to Complainaint’s famous mark.  The addition of the “www” prefix in the <wwwamazon.com> does not make it a distinctive, stand-alone mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

Also, the <amozon.com> domain name at issue is confusingly similar to Complainant’s famous mark.  The substitution of the “o” for the second “a” in Complainant’s famous mark makes the domain name at issue look and sound almost identical to Complainant’s mark.  Therefore confusion among internet users would be likely.  See  Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive)

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

Rights or Legitimate Interests

The domain names at issue currently resolve back to Complainant’s website. See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where Respondent merely redirected the <wwwmedline.com> domain name to Complainant’s own website at <medline.com>).

Further, the domain names at issue were constructed from the addition of a prefix to Complainant’s famous mark, and also misspelling of the mark.  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant).

No evidence has been presented indicating that Respondent had been licensed or authorized to use Complainant’s famous mark.  As Respondent has not been licensed or authorized to operate under that mark, the Panel concludes that Respondent is not “commonly known by” the domain names at issue.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

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

Registration and Use in Bad Faith

Given the fame of Complainant’s famous mark, coupled with Respondent’s use of the domain names at issue to redirect Internet users to Complainant’s website, it appears that Respondent was aware of Complainant’s famous marks.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it).

In addition, Respondent’s typosquatting is evidence that the domain names at issue were registered and used in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that “[t] absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”).

Finally, Respondent’s use of the domain names at issue to redirect Internet users to Complainant’s website creates a false association between Respondent and Complainant, placing Respondent in a position to allow Respondent in the future to exploit the goodwill Complainant has built in connection with its famous mark, to the detriment of Complainant. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Harrods Ltd. v. Harrod’s Closet D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with well-known products, its very use by someone with no connection to these products can evidence opportunistic bad faith).

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

DECISION

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

Accordingly, it is Ordered that the <wwwamazon.com> and <amozon.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Chair

Hugues G. Richard, Panelist

Honorable Tyrus R. Atkinson, Jr., Panelist

Dated:  January 2, 2004

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