WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amazon.com, Inc. v. Registrate Co.
Case No. D2002-0985
1. The Parties
The Complainant is Amazon.com, Inc., Seattle, Washington 98144-2734, United States of America, represented by Jones, Day, Reavis & Pogue, Los Angeles, California, 90013, United States of America.
The Respondent is Registrate Co., Seoul 137-072, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <amaon.com> ("the domain name") is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2002. On October 23, 2002, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name. On October 24, 2002, BulkRegister.com 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 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 October 30, 2002. The Center verified that the Amended 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 Supplemental 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 November 5, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2002.
The Center appointed Steven A. Maier as the sole Panelist in this matter on December 3, 2002. The Panel finds that it was properly constituted. 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.
Having reviewed the communications in the light of the Respondent’s non-response, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2 of the Rules to notify the Respondent of this Complaint. Under paragraph 14(a) of the Rules, where a party fails to comply with the time limits provided by the Rules, the Panel shall proceed to a decision on the Complaint in the absence of exceptional circumstances. The Panel is aware of no such circumstances in this case.
4. Factual Background
The Complainant makes the following assertions of fact in this matter which, in the absence of a Response, are uncontested:
(1) The Complainant is one of the best known pioneering internet companies. It has continuously operated from the internet address "www.amazon.com" since 1995, and was one of the first to make its business name identical to its domain name. It sells books and a broad selection of other products and its annual revenues exceed US$ 3 billion. It has a strong international presence and ships to tens of millions of customers in over 220 countries. In addition to "amazon.com", it operates websites internationally at addresses including "amazon.co.uk", "amazon.de", "amazon.fr", "amazon.co.jp" and "amazon.ca".
(2) The trademark AMAZON.COM ("the Mark") is registered with the US 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 transmissions. The Mark is extremely well known and is associated with the Complainant’s products and services and reputation for delivery, pricing and security. The Mark is familiar to the company’s tens of millions of customers and has been further promoted through extensive advertising in a variety of media. The Complainant’s activities and achievements have themselves been the subject of media attention and the Mark is featured on thousands of internet websites. In addition to the US registration, the Mark is registered in the European Union and in 72 other countries. 400 other applications are pending worldwide.
(3) The domain name was registered by the Respondent on November 13, 2000. The Complainant became aware of the Respondent’s use of the domain name in connection with a website on about July 1, 2002. The domain name currently resolves to a website at "www.ownbox.com" which features links to websites offering goods and services including books, video games, computer products electronics and compact disks that are competitive with those offered by the Complainant. The website also features a pop-up window offering casino services which leads to a ‘mousetrap’ of other pop-up windows from which it is difficult for the user to escape.
(4) The Respondent has a long and well-documented history of registering and using domain names that are close variations on well-known trademarks. Relevant decisions include Avon Products, Inc v. Registrate Co (domain name <avonproducts.com>) WIPO Case No D2001-1415; American Airlines, Inc. v. Registrate Co (domain name <wwwaa.com>) NAF Case No FA020300000105978; Continental Airlines, Inc v. Registrate Co (domain name <continentalairline.com>) NAF Case No FA0106000097731 and Public Broadcasting Service v. Registrate Co (domain name <wwwpbskids.com>) NAF Case No FA0106000097738.
(5) On October 9, 2002, the Complainant attempted to contact the Respondent by sending a letter by Federal Express and by mail to the address given above, but the letter was returned by Federal Express because the address did not exist.
5. Parties’ Contentions
The Complainant submits that the domain name is a common misspelling of the Mark and that the Respondent is engaging in ‘typo-piracy’ by seeking to divert internet users who make a predictable spelling or typing mistake to a competitive revenue-generating website. It asserts that the Respondent’s registration and use of the domain name creates a misleading impression that the Respondent’s business (or the Ownbox website) is affiliated with, or is endorsed, sponsored, operated or authorised by the Complainant. The Complainant argues that the Respondent is trading off its goodwill and diluting the value of the Mark.
The Complainant makes further submissions directed to the specific requirements of paragraph 4(a) of the Policy, which may be summarised as follows:
(1) Identical or Confusingly Similar
That the domain name is confusingly similar to the Mark, being identical but for the omission of the ‘z’, which is not sufficient to distinguish it. An average consumer reaching the Ownbox website via the domain name could easily believe that the products offered there emanate from the Complainant or that the site is affiliated with or approved by the Complainant. Even if they do not form this belief, the arousal of their initial interest in the competing site creates a likelihood of confusion and constitutes a use of the Mark to attract the user. Further, both parties use the same distribution channel, namely the internet, and their respective websites sell closely related goods and serve closely related users.
(2) No Rights or Legitimate Interest
That the Respondent is unable to demonstrate any of the three grounds of legitimate interest set out in paragraph 4(c) of the Policy, or any other such ground. In particular: (i) there was no bona fide offering of goods or services because the Respondent has not been affiliated with or authorised by the Complainant; (ii) the Respondent was not commonly known by the domain name prior to registering it; and (iii) there is no legitimate noncommercial or fair use of the domain name without intent for commercial gain, to divert customers or to tarnish the Mark. The Respondent is making commercial use of the domain name to divert the Complainant’s customers for the purpose of earning sales commissions and advertising revenues.
(3) Registration and Use in Bad Faith
The Complainant relies on three of the four (non-exclusive) indicators of bad faith set out in paragraph 4(b) of the Policy, which it argues are to be inferred from the Respondent’s conduct. Specifically, it submits that the Respondent’s registration of the domain name:
(a) is intended to prevent the Complainant from reflecting the Mark in a corresponding domain name, the Respondent having engaged in a course of such conduct;
(b) is primarily for the purpose of disrupting the business of a competitor, in that the effect of the registration is to siphon customers from the true Amazon.com website, and that internet users who reach the Respondent’s site will believe either that the Complainant’s site has ceased to exist or that the Ownbox site, or the products offered on it, are affiliated with it;
(c) is used intentionally to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on it.
In addition, the Complainant relies on its allegations that the Respondent provided false contact details to the relevant registrar and that the Respondent is an ‘experienced cybersquatter’, having had at least four domain names reassigned by administrative panels.
The Complainant seeks the transfer of the domain name.
The Respondent has failed to file a Response.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
In this case, the Complainant has clearly established the existence of the Mark, AMAZON.COM, in numerous jurisdictions and that it has rights in the Mark. The Panel has no hesitation in finding that the domain name, <amaon.com> is confusingly similar to the Mark, being identical but for the omission of one character.
No Rights or Legitimate Interest
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which the Respondent may point to demonstrate a legitimate interest in the domain name. These are:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel does not consider that any of the above or any other circumstances, which would tend to support the Respondent’s legitimate interest in the domain name, are present in this case. The Respondent has tendered no evidence in the matter and the Panel agrees with the Complainant’s submission that this is a clear case of ‘typosquatting’. It is to be inferred from all the circumstances that the Respondent registered the domain name with the primary intention of diverting internet users who intend to access the Complainant’s website but make a predictable typing mistake in so doing. This is unfairly to take advantage of the Complainant’s goodwill. While the Respondent is using the domain name to offer goods and services via the Ownbox website, such offering is not bona fide in the circumstances. There is no evidence that the Respondent has been commonly known by the domain name, and the circumstances set out in subparagraph (iii) above plainly do not apply; indeed the reverse of those circumstances is largely true.
Registration and Use in Bad Faith
With regard to bad faith, the Panel has some difficulty with a number of the Complainant’s submissions on paragraph 4(b) of the Policy. First, the Panel is not of the view that the Respondent registered the domain name in order to prevent the Complainant from reflecting the Mark in that name, since the domain name is, on the Complainant’s own case, an erroneous spelling of the Mark. Secondly, while the Panel accepts that there is disruption to the Complainant’s business as an effect of the Respondent’s use of the Mark (which is exacerbated by the ‘mousetrapping’ of the user), the Panel is not of the view that such disruption was the Respondent’s primary purpose, which was the promotion of its own business interests.
The Panel does, however, find that, for the purposes of paragraph 4(b)(iv) of the Policy, the Respondent registered and is using the domain name to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products or service on its website. The present case involves the deliberate diversion of internet users who intend to access the Complainant’s website and the taking of unfair advantage of the Complainant’s goodwill. In the view of the Panel, and in line with other decided ‘typosquatting’ cases under the Policy, these matters are of themselves sufficient to establish bad faith on the Respondent’s part. By way of comment, however, the confusion caused by the Respondent is ‘initial interest confusion’ and the Panel has difficulty in accepting the Complainant’s assertions that actual confusion would be caused to internet users who have visited the Respondent’s site. The Complainant makes great play of the world-famous nature of the Mark and of the Amazon.com website among internet users, and the Panel does not believe that an internet user accessing the Ownbox website via the domain name would believe either that the Complainant’s site had ceased to exist or that the Ownbox site was affiliated with that of the Complainant.
The Complainant’s assertions that the Respondent provided false contact details and that it has been engaged in a pattern of ‘typosquatting’ cases, are unchallenged by the Respondent. The Panel finds that these matters bolster the allegation of bad faith, as does the Respondent’s failure to respond to the Complaint, which is a matter from which the Panel is entitled to draw inferences under paragraph 14(b) of the Rules.
For the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name, <amaon.com>, be transferred to the Complainant .
Steven A. Maier
Dated: December 16, 2002