DECISION

Amazon.com, Inc. v. Eric Dauphin

Claim Number: FA0402000235822

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 97204.  Respondent is Eric Dauphin (“Respondent”), Muelheim, Germany 45472.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adultamazon.com>, registered with The Name It Corporation d/b/a Nameservices.net.

PANEL

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

Hon. Louis E. Condon, Hon. Tyrus Atkinson, Jr., David P. Miranda, Esq., chair as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 4, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 5, 2004, The Name It Corporation d/b/a Nameservices.net confirmed by e-mail to the Forum that the domain name <adultamazon.com> is registered with The Name It Corporation d/b/a Nameservices.net and that the Respondent is the current registrant of the name.  The Name It Corporation d/b/a Nameservices.net has verified that Respondent is bound by the The Name It Corporation d/b/a Nameservices.net 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 February 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 3, 2004 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@adultamazon.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 March 22, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Louis E. Condon, Hon. Tyrus Atkinson, Jr., and David P. Miranda, Esq., chair, 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 name <adultamazon.com> be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Amazon.com, Inc. (hereinafter “Complainant”) contends that it is the owner of registered trademarks and service marks to AMAZON.COM® and other registered marks.  Complainant has seven federally registered marks for a variety of goods and services and has registered its AMAZON.COM® and other AMAZON related marks in over 40 other countries, including in Germany where Respondent Eric Dauphin (hereinafter “Respondent”) is domiciled.  Complainant contends that Respondent’s domain name <adultamazon.com> is confusingly similar to Complainant’s trademark and its AMAZON marks and that the disputed domain name was registered in bad faith.  Respondent has pointed the domain name to a pornographic website in an illegitimate, bad faith, scheme to trade on Complainant’s goodwill.

Complainant contends that its AMAZON.COM marks are inherently distinctive attracting tens of millions of customers from over 220 countries, with reported revenue in excess of 3.9 billion dollars in 2002.  Complainant has spent over 240 million dollars in advertising its AMAZON marks.  In addition to having become the world’s largest online book seller, Complainant’s operations have expanded to include a full line of goods that include the offering of adult materials on its website.  Complainant contends that Respondent registered the domain name in question on March 8, 2003, many years after Amazon.com’s name and brand became famous around the world.  Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that Respondent has not been commonly known by the name “adultamazon.”

Complainant contends that Respondent’s registration and use of the domain name is an attempt to ride the coattails of Complainant’s famous name and marks.  Complainant further contends that evidence of Respondent’s bad faith is shown by Respondent’s use of the infringing domain name directing users to a pornographic website.  Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and products, including initial interest confusion as well as tarnishment.

B. Respondent

Respondent has failed to provide a Response to the Complaint or to dispute any of Complainant’s contentions.  The failure to file a Response can be taken as Respondent’s failure to show rights and legitimate interest in the domain name.

FINDINGS

Complainant has established that the domain name <adultamazon.com> registered by Respondent is confusingly similar to the registered trademarks and service marks of Complainant; that Respondent has no rights or legitimate interests in the domain name; and that the domain name has been registered and being used in bad faith.  As such, the Panel finds that relief requested by Complainant shall be granted and the domain name <adultamazon.com> transferred to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 asserts that the AMAZON.COM mark is known worldwide, including within Respondent’s country of residence, Germany.  Moreover, Complainant contends that it holds several registrations for the mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 2,078,496 and 2,167,345 (registered on July 15, 1997 and June 23, 1998 respectively).  Complainant has established rights in the AMAZON.COM mark pursuant to Policy ¶ 4(a)(i).  See 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”); see also 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).

The Panel finds that Respondent’s <adultamazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark because the domain name fully incorporates the mark and merely adds the generic term “adult” to the mark.  Respondent’s addition of a generic term “adult” is insufficient to distinguish the domain name from the mark.  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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Rights or Legitimate Interests

Complainant contends that Respondent lacks rights and legitimate interests in the <adultamazon.com> domain name because it takes advantage of the goodwill associated with Complainant’s AMAZON.COM mark and redirects Internet users to an adult-oriented website.  Respondent’s use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini , FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Complainant has established that Respondent lacks rights and legitimate interests in the <adultamazon.com> domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the domain name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Finally, due to Respondent’s failure to contest the allegations of the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the <adultamazon.com> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); 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).

Registration and Use in Bad Faith

Complainant established that its marks are famous worldwide and registered in Respondent’s country of residence.  Registration of a domain name confusingly similar to a mark, despite knowledge of another’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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).  Respondent has failed to submit any evidence to rebut this presumption of bad faith.

Respondent registered and used the <adultamazon.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the domain name takes advantage of the goodwill associated with Complainant’s mark and redirects unsuspecting Internet users to an adult-oriented website unaffiliated with Complainant.  See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“whatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith”).

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 <adultamazon.com> domain name be TRANSFERRED from Respondent to Complainant, and the Registrar, The Name It Corporation d/b/a Nameservices.net is so directed.

David P. Miranda, Esq., chair,

Hon. Tyrus Atkinson, Jr., Hon. Louis E. Condon as Panelists

Dated: April 5, 2004

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