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Amazon.com, Inc. v. Holy Land Mall

WIPO Case No. D2002-1083

Outcome
Transfer
Domain names
amazonisrael.com
Complainant
Amazon.com, Inc.
Respondent
Holy Land Mall
Panel
D. Brian King, M. Scott Donahey, James H. Grossman
Decided
05 Mar 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-1083.html

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 its

principal place of business at 1200 12th Avenue South, Suite 1200,

Seattle, Washington, United States of America (hereinafter “the Complainant” or

“Amazon”). It is represented by the law

firm Jones, Day, Reavis & Pogue of Los Angeles, California.

The Respondent is Holy Land Mall, the address of which is 4751 172nd

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 and

Mediation Center (the “Center”) on November 26, 2002, by email

and 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 to

the Registrar a request for registrar verification in connection with the

domain name at issue. On

December 3, 2002, the Registrar transmitted by email to the Center

its verification response, stating that the registrant of the contested domain

name is Holy Land Mall and providing the contact details for the

administrative, billing and technical contacts. The administrative contact was listed as Ben Dahukey, an

individual having the same street address as the Respondent.

On December 3, 2002, the Center issued a

Complaint Deficiency Notification based on the misidentification of the

Respondent and an error as to the Mutual Jurisdiction of the parties. The Complainant filed an Amended Complaint

on December 4, 2002, which was received by the Center on the same day

by email and on December 6, 2002, in hard copy. The Amended Complaint changed the identity

of the Respondent to Holy Land Mall and selected an appropriate

Mutual Jurisdiction. On

December 9, 2002, the Center verified that the Complaint together

with 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 Amended Complaint (hereinafter

“the Complaint”), and the proceedings commenced on

December 9, 2002. In

accordance with the Rules, Paragraph 5(a), the due date for the Response was

December 29, 2002. The

Respondent did not submit any Response.

Accordingly, on January 17, 2003, the Center issued a

Notification 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 in

the Complaint. Considering the evidence

attached thereto and the fact that the Respondent has not filed a Response

contesting the Complainant’s contentions, the Panel finds the following facts

to have been established.

The Complainant is one of the world’s best-known Internet

companies. It offers the online sale of

a large selection of books, videos, magazines, computer software, video games

and other products.

Amazon was created in 1995 and has since operated its

business from the Internet address “www.amazon.com.” It was one of the first companies to choose a web site address as

its business name.

Since its start up, Amazon has grown from a small private

business with only two employees to a multi-million dollar public company

employing over 7000 people. Its

turnover 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 business

internationally and owns a number of Country Code Top Level Domain Names that

are specific to individual countries, including <amazon.co.uk> (United

Kingdom), <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 known

worldwide and has built up considerable goodwill in its mark. According to a study by Interbrand Group, an

international brand consultancy company, the “Amazon.com” mark ranks among the

100 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 applications

around the world. This service mark was

first registered by it with the United States Patent and Trademark Office in

July 1997 (see Complainant’s Exhibits

21-23).

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 of

Paragraph 4(a) of the Policy have been met.

First, the Complainant alleges that the contested domain

name is confusingly similar to its “Amazon.com” service mark. In support of this contention, it argues

that: (a) the disputed domain name,

<amazonisrael.com>, incorporates its “Amazon.com” mark in whole, with the

addition of the geographical term “israel”;

(b) the <amazonisrael.com> web site offers for sale goods closely

related to Amazon’s products, and markets them to a similar group of web

users; and (c) the Respondent and

Amazon use the same distribution channel, i.e., the Internet. Due to the foregoing, Amazon argues that

there is a serious likelihood that web users will be confused by the similarity

between the disputed domain name and the Complainant’s “Amazon.com” mark, and

will conclude that the Respondent is, or has some connection to, the

Complainant.

Next, the Complainant argues that the Respondent has no

legitimate rights or interests with respect to the disputed domain name. The disputed domain name was registered well

after the Complainant had established rights in the “Amazon.com” mark through

registration and extensive use. Its

mark is so well known, Amazon contends, that the Respondent could not possibly

have been unaware of Amazon’s rights in the mark at the time of

registration. The Complainant further

contends that: (a) prior to

registration, the Respondent was not commonly known by the disputed domain name; (b) the Respondent’s use of the disputed

domain name prior to notification of the dispute was not in connection with a

bone fide offering of goods and services, as the Respondent’s purpose in

registering and using the domain name was to attempt to trade off the

Complainant’s goodwill; and (c) the

Respondent is not making any legitimate noncommercial or fair use of the domain

name.

Finally, the Complainant submits that the Respondent

registered and is using the disputed domain name in bad faith. Amazon argues that this is evident from the

fact that the Respondent registered a domain name confusingly similar to the

Complainant’s famous mark, which name the Respondent, like the Complainant,

uses for an online business. Amazon

asserts, in particular, that the circumstances identified in

Paragraph 4(b)(iv) of the Policy (use of a domain name for commercial gain

by creating a likelihood of confusion with the Complainant’s mark) and

Paragraph 4(b)(iii) of the Policy (registration of a domain name primarily for

the purpose of disrupting a competitor’s business) are present here.

On the foregoing grounds, the Complainant requests that the

domain 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 Policy

requires the Complainant to prove each of the following elements in order to

obtain 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’s

default, the Complainant retains the ultimate burden of proof on each of these

elements. They will be examined in turn

below.

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 the

present case, the confusing similarity between the disputed domain name and the

Complainant’s service mark is enhanced by several factors. The Complainant and the Respondent sell

closely-related goods and services.

They use the same medium of commerce, the Internet, and appear to have

similar target groups of Internet shoppers.

Finally, the word “Amazon” is distinctive. The word is closely associated with the Complainant’s business

but has no apparent connection either with the Respondent, Holy Land Mall, or

with 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 the

Complainant’s registered service mark.

Accordingly, the first element under Paragraph 4(a) has been met by the

Complainant.

B. Rights or Legitimate Interests

The Panel is

further satisfied, on the evidence presented, that the Respondent has no rights

or legitimate interests in respect of the domain name at issue. In particular, the Panel finds that none of

the three circumstances identified in Paragraph 4(c) of the Policy as

indicative 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 is

no evidence to suggest that the Respondent has “been commonly known” by the

disputed domain name. The name “Amazon”

has no apparent association with the Respondent, its business, or with the

goods 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 the

goods and services offered by it there have no connection with the word

“Amazon” (see Complainant’s Exhibit

25).

Third, the

disputed domain name is being used for commercial purposes and hence does not

meet 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, the

Panel concludes that the Complainant has satisfied the second element under

Paragraph 4(a) in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets

out four non-exclusive indicia of bad

faith:

(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 is

satisfied in this case that the Respondent’s conduct falls within the

circumstance identified in Paragraph 4(b)(iv) of the Policy. It has been established that the disputed

domain name is confusingly similar to the Complainant’s service mark and that

the Respondent has no rights or legitimate interests in the domain name. It has also been established that the

Respondent had actual or constructive notice of the Complainant’s service mark

when it registered and began using the disputed domain name, and that the

products offered by the Respondent on its web site are similar to those offered

by the Complainant. The logical

inference – sufficiently supported by the evidence here – is that the

Respondent registered and is using the disputed domain name with the intention

of attracting Internet users to its web site by creating a likelihood of

confusion with the Complainant’s mark as to source, sponsorship, affiliation or

endorsement.

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.

D. Brian King

Presiding Panelist

M. Scott Donahey

Panelist

James H. Grossman

Panelist

Dated: February 27,

2003

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