DECISION

Amazon.com, Inc. v. Computer Dynamix c/o John Brennam

Claim Number: FA0405000267411

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 Computer Dynamix c/o John Brennam  (“Respondent”), 50 Stephen Road, Bayport, NY 11705.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <amazonlodging.com>, registered with Enom, 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 R. Glen Ayers, as Panelist.

Edward C. Chiasson, Q.C., as Panelist.

Honorable Richard B. Wickersham, (Ret.), Chairman, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.

On May 3, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <amazonlodging.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 27, 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@amazonlodging.com by e-mail.

The Panel did not receive a Response from Respondent.

On June 8, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable R. Glen Ayers, Edward C. Chiasson, Q.C., and Honorable Richard B. Wickersham, (Ret.), Chairman, as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The following information derives from the Complaint.

The fame of Complainant’s marks and tradename attracts numerous cybersquatters who register AMAZON-type domain names to trade off the goodwill obtained at significant expense by Complainant.  Complainant’s efforts to protect its famous, distinctive marks and name have resulted, in turn, in several decisions under the UDRP upholding Amazon.com’s rights against cybersquatters who register infringing domain names. 

  

Clearly, Complainant has strong rights in its name and marks.  There cannot be any reasonable dispute that the disputed domain name <amazonlodging.com> is confusingly similar to Complainant’s name and marks.  Respondent itself has expressly evidenced an intent to actually confuse consumers by using a counterfeit “amazon” logo.  The disputed domain name merely adds the generic term “lodging” to Complainant’s distinctive mark.  “The addition of a generic term to another’s well-known mark is not enough to create a mark capable of overcoming a claim of confusing similarity.” 

Complainant has not licensed the right to use <amazonlodging.com> (or any right) to Respondent.  Further, Respondent registered the disputed domain less than seven months ago, on October 6, 2003.  Thus, Respondent registered the disputed domain name long after Complainant’s marks had become famous across the United States and much of the world for consumer goods and services, such as those offered on the website to which the disputed domain name resolves.  “Where a Complainant's trademark is well known - as it is in this case - registration of a confusingly similar domain name without a good faith business justification cannot be legitimate.” Las Vegas Sands, Inc. v. The Sands of the Caribbean, D2001-1157 (WIPO Apr. 25, 2001).  [ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)].

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.  This is clear from the fact that Respondent must have been aware of Complainant’s famous name and marks, yet decided to register the disputed domain name anyway.  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).  Indeed, the fact that Respondent states on its website that it is “an Amazon company,” using a font that is virtually identical to Complainant’s logo shows that Respondent had actual knowledge of Complainant’s name and marks when registering the disputed domain name.  As stated in Ciccone v. Parisi, "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services . . . . [T]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy." Ciccone v. Parisi, D2000-0847 (WIPO Oct. 16, 2000).

B. Respondent

No Response was filed by Respondent.

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 Policy ¶ 4(a)(i).

Complainant registered the AMAZON.COM mark on June 15, 1997 (Reg. No. 2,078,496).  The AMAZON.COM mark is also the company’s domain name, <amazon.com>, housing the entire retail business online.  The Panel finds that Complainant has established rights in the AMAZON.COM mark.  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 holds that Respondent’s <amazonlodging.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark because the domain name only adds the word “lodging,” which does not substantially distinguish the domain name from the mark.  See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

Because Respondent has not responded, the Panel may accept all reasonable inferences in the Complaint to be true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).  We so find.

Complainant asserts that Respondent uses Complainant’s AMAZON.COM logo at the <amazonlodging.com> website.  The Panel finds that appropriating Complainant’s mark and using Complainant’s logo is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Additionally the Panel finds that, given Respondent’s WHOIS information, Respondent is not commonly known by the <amazonlodging.com> domain name pursuant to Policy ¶ 4(c)(ii).  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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

Respondent is appropriating Complainant’s mark to sell lodging.  The Panel infers bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv), because Respondent is creating confusion for commercial gain.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion"); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant).

The Panel also finds that Respondent is appropriating Complainant’s famous logo.  If the Panel finds this, it may infer that Respondent had notice of Complainant’s mark.  Therefore, the Panel may find this notice to be evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).  We so find.

FINDINGS AND 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 <amazonlodging.com> domain name be TRANSFERRED from Respondent to Complainant.

­­­­­­­­­­­­­­­__________________________________________________

Honorable Richard B. Wickersham, (Ret.), Chairman, Panelist

Honorable R. Glen Ayers,  Panelist

Edward C. Chiasson, Esquire, Panelist

Dated:  June 21, 2004

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