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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Amazon.com, Inc. v. Holy Land Mall

Case No. D2002-1083

 

1. The Parties

The Complainant is Amazon.com, Inc., a company with itsprincipal place of business at 1200 12^th Avenue South, Suite 1200,Seattle, Washington, United States of America (hereinafter “the Complainant” or“Amazon”).  It is represented by the lawfirm Jones, Day, Reavis & Pogue of Los Angeles, California.

The Respondent is Holy Land Mall, the address of which is 4751 172^nd Ct. SE., Bellevue, Washington, United States of America (hereinafter “the Respondent”).

 

2. The Domain Name and Registrar

The domain name at issue in this proceeding is<amazonisrael.com>.

The Registrar is Network Solutions, Inc. of Herndon, Virginia, United States of America (hereinafter “the Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration andMediation Center (the “Center”) on November 26, 2002, by emailand on November 29, 2002, in hard copy.  As originally styled, the Complainant named as the Respondent“Ben Dahukey, d/b/a MBD International, Inc.”

On November 28, 2002, the Center transmitted by email tothe Registrar a request for registrar verification in connection with thedomain name at issue.  OnDecember 3, 2002, the Registrar transmitted by email to the Centerits verification response, stating that the registrant of the contested domainname is Holy Land Mall and providing the contact details for theadministrative, billing and technical contacts.  The administrative contact was listed as Ben Dahukey, anindividual having the same street address as the Respondent.

On December 3, 2002, the Center issued aComplaint Deficiency Notification based on the misidentification of theRespondent and an error as to the Mutual Jurisdiction of the parties.  The Complainant filed an Amended Complainton December 4, 2002, which was received by the Center on the same dayby email and on December 6, 2002, in hard copy.  The Amended Complaint changed the identityof the Respondent to Holy Land Mall and selected an appropriateMutual Jurisdiction.  OnDecember 9, 2002, the Center verified that the Complaint togetherwith the Amended Complaint satisfied the formal requirements of the UniformDomain Name Dispute Resolution Policy (the “Policy”), the Rules forUniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPOSupplemental Rules for Uniform Domain Name Dispute Resolution Policy (the“Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), theCenter formally notified the Respondent of the Amended Complaint (hereinafter“the Complaint”), and the proceedings commenced onDecember 9, 2002.  Inaccordance with the Rules, Paragraph 5(a), the due date for the Response wasDecember 29, 2002.  TheRespondent did not submit any Response. Accordingly, on January 17, 2003, the Center issued aNotification of Respondent Default.

The Center appointed D. Brian King, M. Scott Donahey and James H. Grossman as Panelists in this matter on February 6, 2003.  The Panel finds that it was properly constituted.  Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

 

4. Factual Background

The facts relevant to the current dispute are set out inthe Complaint.  Considering the evidenceattached thereto and the fact that the Respondent has not filed a Responsecontesting the Complainant’s contentions, the Panel finds the following factsto have been established.

The Complainant is one of the world’s best-known Internetcompanies.  It offers the online sale ofa large selection of books, videos, magazines, computer software, video gamesand other products. 

Amazon was created in 1995 and has since operated itsbusiness from the Internet address “www.amazon.com.”  It was one of the first companies to choose a web site address asits business name. 

Since its start up, Amazon has grown from a small privatebusiness with only two employees to a multi-million dollar public companyemploying over 7000 people.  Itsturnover has increased from $15.7 million in 1996 to over $3 billion in 2001 (see Complainant’s Exhibits 6-11).  Amazon does about one-third of its businessinternationally and owns a number of Country Code Top Level Domain Names thatare specific to individual countries, including <amazon.co.uk> (UnitedKingdom), <amazon.de> (Germany), <amazon.fr> (France),<amazon.co.jp> (Japan) and <amazon.ca> (Canada) (see Complainant’s Exhibits 14-16).

Despite its relatively short history, Amazon is well knownworldwide and has built up considerable goodwill in its mark.  According to a study by Interbrand Group, aninternational brand consultancy company, the “Amazon.com” mark ranks among the100 most valuable brands in the world, with a value in excess of $1 billion (see Complainant’s Exhibit 20).

The Complainant is the holder of registered marks for“Amazon.com” in 72 countries and has over 400 pending registration applicationsaround the world.  This service mark wasfirst registered by it with the United States Patent and Trademark Office inJuly 1997 (see Complainant’s Exhibits21-23). 

The contested domain name <amazonisrael.com>, registered on February 18, 2000, by Respondent Holy Land Mall (see Complainant’s Exhibit 4), is an active web site being used for the purpose of offering for sale various products and services originating from or related to the Middle East.  The web site offers for sale – and contains links to other web sites offering for sale – products including books, music, computer software, videos, DVDs and other products similar to those marketed by Amazon (see Complainant’s Exhibit 25).

 

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above facts and contends, inter alia, that the three elements ofParagraph 4(a) of the Policy have been met.

First, the Complainant alleges that the contested domainname is confusingly similar to its “Amazon.com” service mark.  In support of this contention, it arguesthat:  (a) the disputed domain name,<amazonisrael.com>, incorporates its “Amazon.com” mark in whole, with theaddition of the geographical term “israel”; (b) the <amazonisrael.com> web site offers for sale goods closelyrelated to Amazon’s products, and markets them to a similar group of webusers;  and (c) the Respondent andAmazon use the same distribution channel, i.e., the Internet.  Due to the foregoing, Amazon argues thatthere is a serious likelihood that web users will be confused by the similaritybetween the disputed domain name and the Complainant’s “Amazon.com” mark, andwill conclude that the Respondent is, or has some connection to, theComplainant.

Next, the Complainant argues that the Respondent has nolegitimate rights or interests with respect to the disputed domain name.  The disputed domain name was registered wellafter the Complainant had established rights in the “Amazon.com” mark throughregistration and extensive use.  Itsmark is so well known, Amazon contends, that the Respondent could not possiblyhave been unaware of Amazon’s rights in the mark at the time ofregistration.  The Complainant furthercontends that:  (a) prior toregistration, the Respondent was not commonly known by the disputed domain name;  (b) the Respondent’s use of the disputeddomain name prior to notification of the dispute was not in connection with abone fide offering of goods and services, as the Respondent’s purpose inregistering and using the domain name was to attempt to trade off theComplainant’s goodwill;  and (c) theRespondent is not making any legitimate noncommercial or fair use of the domainname.

Finally, the Complainant submits that the Respondentregistered and is using the disputed domain name in bad faith.  Amazon argues that this is evident from thefact that the Respondent registered a domain name confusingly similar to theComplainant’s famous mark, which name the Respondent, like the Complainant,uses for an online business.  Amazonasserts, in particular, that the circumstances identified inParagraph 4(b)(iv) of the Policy (use of a domain name for commercial gainby creating a likelihood of confusion with the Complainant’s mark) andParagraph 4(b)(iii) of the Policy (registration of a domain name primarily forthe purpose of disrupting a competitor’s business) are present here.

On the foregoing grounds, the Complainant requests that thedomain name <amazonisrael.com> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the ICANN Policyrequires the Complainant to prove each of the following elements in order toobtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 

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

(iii) The domain name has been registered and is being used in bad faith.

Notwithstanding the Respondent’sdefault, the Complainant retains the ultimate burden of proof on each of theseelements.  They will be examined in turnbelow.

A. Identical or Confusingly Similar

The domain name at issue wholly incorporates the Complainant’s registered service mark and business name “Amazon.com.”  Numerous Panels have held that where a domain name substantially incorporates the Complainant’s mark, that is sufficient to make the domain name “confusingly similar” within the meaning of the Policy.  SeeAmazon.com, Inc.v.MCL International Limited, WIPO Case No. D2000‑1678 (March 12, 2001), at page 4;  Nicole Kidmanv. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (September 18, 2000), at page 3;  Xerox Corporationv.Imaging Solution, WIPO Case No. D2001-0313 (April 25, 2001), at page 5;  Chanel, Inc.v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000), at page 4.  The addition of a geographical suffix, here the word “israel,” is insufficient to eliminate the likelihood of confusion emanating from the wholesale incorporation of the Complainant’s trademark.  See Amazon.com, Inc.v.A.R. Information & Publication Co. Ltd., WIPO Case No. D2001-1392 (April 10, 2002), at page 4.

In thepresent case, the confusing similarity between the disputed domain name and theComplainant’s service mark is enhanced by several factors.  The Complainant and the Respondent sellclosely-related goods and services. They use the same medium of commerce, the Internet, and appear to havesimilar target groups of Internet shoppers. Finally, the word “Amazon” is distinctive.  The word is closely associated with the Complainant’s businessbut has no apparent connection either with the Respondent, Holy Land Mall, orwith the goods offered for sale on its web site. 

For the foregoing reasons, the Panel concludes,without difficulty, that the disputed domain name is confusingly similar to theComplainant’s registered service mark. Accordingly, the first element under Paragraph 4(a) has been met by theComplainant.

B. Rights or Legitimate Interests

The Panel isfurther satisfied, on the evidence presented, that the Respondent has no rightsor legitimate interests in respect of the domain name at issue.  In particular, the Panel finds that none ofthe three circumstances identified in Paragraph 4(c) of the Policy asindicative of legitimate rights or interests is present here.

First, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.  The Respondent was at least on constructive notice of the Complainant’s rights in the name “Amazon.com” when it registered the disputed domain name;  this follows from the Complainant’s registration of that name as a service mark in 1997 in the United States, the domicile of both the Complainant and the Respondent.  See 15 U.S.C. § 1072 (registration of mark constitutes constructive notice of the registrant’s claim of ownership thereof);  The Step2 Companyv.Softastic.com Corp., WIPO Case No. D2000-0393 (June 26, 2000), at page 4.  Indeed, the Respondent quite likely had actual notice of the Complainant’s rights in the name, given its use by the Complainant since 1995 and the Complainant’s high level of recognition in the Internet commerce industry.  See Amazon.com, Inc.v.Amazoninsu Company, WIPO Case No. D2001-1275 (December 20, 2001), at page 4 (“it strains belief that the Respondent did not know of [Amazon.com’s] mark and reputation at the time of registration”).  In these circumstances, it can properly be inferred that the Respondent’s primary purpose in registering and using the domain name was to trade on the Complainant’s goodwill in its mark – a situation that does not qualify as “bona fide” use within the meaning of Paragraph 4(c)(i) of the Policy. 

Second, there isno evidence to suggest that the Respondent has “been commonly known” by thedisputed domain name.  The name “Amazon”has no apparent association with the Respondent, its business, or with thegoods and services it offers for sale. The Respondent’s name is “Holy Land Mall”;  this is likewise the name displayed on its web site, and thegoods and services offered by it there have no connection with the word“Amazon” (see Complainant’s Exhibit25).

Third, thedisputed domain name is being used for commercial purposes and hence does notmeet the “non-commercial or fair use” criterion.

Finally, the Panel notes where a mark has a “strong reputation and is widely known . . . in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”  Guerlain S.A. v. Peikang, WIPO Case No. D2000‑0055 (March 21, 2000), at page 5.  Such is the case here, inasmuch as the Complainant is widely known and never gave any license or other permission to the Respondent to use the name “Amazon.com.”

Accordingly, thePanel concludes that the Complainant has satisfied the second element underParagraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy setsout four non-exclusive indicia of badfaith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;  or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;  or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;  or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location, or of a product or service on the web site or location.

Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.”  This requirement is conjunctive, and therefore the Complainant must establish both bad faith registration and bad faith use.  SeeTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), at paragraphs 7.4 to 7.6. 

For purposes of the Policy, a finding of any of the four circumstances listed in Paragraph 4(b) will be sufficient to establish registration and use in bad faith.  Furthermore, the Panel notes that those four circumstances are not exclusive, and that other circumstances may likewise lead, in a particular case, to a finding of bad faith registration and use.  See CCA Industries, Inc v. Bobby R. Dailey, WIPO Case No. D2000‑0148 (April 26, 2000), at page 3. 

The Panel issatisfied in this case that the Respondent’s conduct falls within thecircumstance identified in Paragraph 4(b)(iv) of the Policy.  It has been established that the disputeddomain name is confusingly similar to the Complainant’s service mark and thatthe Respondent has no rights or legitimate interests in the domain name.  It has also been established that theRespondent had actual or constructive notice of the Complainant’s service markwhen it registered and began using the disputed domain name, and that theproducts offered by the Respondent on its web site are similar to those offeredby the Complainant.  The logicalinference – sufficiently supported by the evidence here – is that theRespondent registered and is using the disputed domain name with the intentionof attracting Internet users to its web site by creating a likelihood ofconfusion with the Complainant’s mark as to source, sponsorship, affiliation orendorsement. 

Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the domain name <amazonisrael.com> in accordance with Paragraph 4(b) of the Policy.  This renders it unnecessary to reach the Complainant’s further allegations regarding bad faith.

 

7. Decision

For all of the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <amazonisrael.com> be transferred to the Complainant.

 

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D. Brian King
Presiding Panelist

M. Scott Donahey 
Panelist   

James H. Grossman
Panelist

Dated:  February 27,2003