Amazon.com, Inc. v. Kim Yoon-Jo

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Amazon.com, Inc. v. Kim Yoon-Jo

Case No. D2003-0774

1. The Parties

The Complainant is Amazon.com, Inc., Seattle, United States of America, represented by Fulbright & Jaworski, LLP, United States of America.

The Respondent is Kim, Yoon-Jo, Dalseo-Gu, Daegu, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <amazonfire.com> is registered with Gabia, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2003. On October 2, 2003, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the domain name at issue. On November 11, 2003, Gabia Inc. 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, billing, 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 December 11, 2003. The Center verified that the Complaint together with the amendment to the 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 Supplement 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 December 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2004.

The Center appointed Thomas P. Pinansky, M. Scott Donahey and Moonchul Chang as panelists in this matter on February 10, 2004. The Panel finds that it was properly constituted. Each member of 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.

An extension of the due date of the decision from February 25, 2004, to March 3, 2004, was granted on February 25, 2004.

4. Factual Background

Amazon.com is one of the best-known Internet-based companies. Jeff Bezos ("Bezos"), the company’s founder, was a pioneer in the use of the Internet as a medium of commerce. In 1995, Bezos created an Internet website that permitted consumers around the world to purchase books on-line.

Amazon.com was one of the first corporations to make the name of its business identical to the domain name from which its business operates. Since its inception, Amazon.com has continuously operated from the Internet address "www.amazon.com". When Amazon.com opened its cyber-doors, its site primarily featured books, which is still an integral part of Amazon.com’s business. Since then, Amazon.com has expanded its operations to include a broader selection of products.

From the start, Amazon.com very quickly developed a strong international presence. Today, tens of millions of customers from over 220 countries have made purchases through the Amazon.com Site. In 2002, international sales accounted for nearly one-third of Amazon.com’s total sales.

As Amazon.com expanded its business internationally, it began to operate websites that use Country Code Top Level Domain Names that are specific to individual countries. For example, Amazon.com’s <amazon.co.uk>, <amazon.de>, <amazon.fr>, <amazon.co.jp> and <amazon.ca> sites target customers respectively in the United Kingdom, Germany, France, Japan and Canada.

The AMAZON.COM mark is registered in 72 individual countries, and has over 400 additional registration applications pending all over the world. Amazon.com is a registered trademark with the United States 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 transmission, in Class 35. The AMAZON.COM mark has been registered in Republic of Korea, where Respondent resides, since April 2, 1999, (Republic of Korea registration nos. 41-54414, 41-70633, 65692, 47942, 70316, 73017 and 73018). (Annexes 22, 23 and 24 of the Complaint.)

The AMAZON.COM mark is particularly well known among Internet users, the trading areas and channel of trade used by both Complainant and Respondent. There are not similar marks in common commercial use. A recent review of the database maintained by the United States Patent and Trademark Office reveals not a single registration (other than those owned by Complainant) for any mark that included both "amazon" and "com." See Annex 25. No other major on-line business and no major "brick and mortar" bookstore use any variant of "Amazon" in its name.

5. Parties’ Contentions

A. Complainant

The Complainant assets, inter alia, as follows:

(i) The <amazonfire.com> Domain Name is identical or confusingly similar to Complainant’s trademark.

(ii) Respondent incorporated the entire AMAZON.COM mark into its domain name, adding only the term "fire" to the mark, which is not legally significant.

(iii) The <amazonfire.com> website and Amazon.com sell closely related goods and serve closely related users.

(iv) Respondent and Amazon.com use the same distribution channel.

(v) Respondent has no rights or legitimate interests in respect to the <amazonfire.com> domain name.

(vi) Respondent’s use of the <amazonfire.com> domain name prior to notification of this dispute was not in connection with a bona fide offering of goods or services.

(vii) Respondent is neither affiliated with Amazon.com, nor has Amazon.com granted Respondent the right or permission to use its famous AMAZON.COM trademark.

(viii) Amazon.com’s rights in the AMAZON.COM mark predate Respondent’s registration of the <amazonfire.com> domain name.

(ix) Complainant first used the <amazon.com> domain name in commerce

in 1995, and registered the AMAZON.COM trademark with the United States Patent

and Trademark Office on July 15, 1997. See Annexes 4 and 22 of the

Complaint. Such registration of a mark constitutes constructive notice of the

registrant’s claim of ownership thereof. See 15 U.S.C. ∮

1072; The Step 2 Company v. Softastic.com Corp., WIPO

Case No. D2000-0393 (June 26, 2000).

(x) The Amazon.com website is one of the most frequently visited shopping sites on the Internet.

(xi) Amazon.com has received frequent attention in the Korean press and, in 2002, Amazon.com earned over $7.5 million in revenues from sales to shoppers in the Republic of Korea. See Annex 30 of the Complaint.

(xii) Respondent both registered the infringing domain name, and began operating

the <amazonfire.com> website, for the sole purpose of trading off of Complainant’s

goodwill and targeting users attempting to reach the genuine Amazon.com site

and not for any legitimate business purpose.

(xiii) Before registering the <amazonfire.com> domain name, Respondent

was not commonly known, as an individual, business or other organization, by

the domain name.

(xiv) Respondent is not making a legitimate noncommercial or fair use of the

<amazonfire.com> domain name.

(xv) Respondent registered and is using the <amazonfire.com> domain name

in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Selection of Language

The Complaint, although submitted in Korean, was originally prepared in the

English language. Yet, there has been no response in any language. All three

panelists speak English. The vast majority of the voluminous annexes are in

English.

According to Paragraph 11 of the Rules, the language of the administrative

proceeding shall be the language of the registration agreement unless the Panel

decides otherwise. It is noted, however, that the spirit of Paragraph 11 is

to ensure fairness in the selection of language by giving full consideration

to the parties’ level of comfort with each language, the expenses to be incurred

and the possibility of delay in the proceeding in the event translations are

required and other relevant factors.

In this case, the Complainant is not able to communicate efficiently in Korean

and the Respondent has not participated in these proceedings. Therefore, in

consideration of the above circumstances and in the interest of fairness to

both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that

English shall be the language of administrative proceeding in this case. However,

Korean language documents submitted have been reviewed by the Panel.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on

the grounds of the statements and documents submitted and in accordance with

the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under Paragraph 14(b) of the Rules, it is established that: "If

a Party, in the absence of exceptional circumstances, does not comply with any

provision of, or requirement under, these Rules or any request from the Panel,

the Panel shall draw such inferences therefrom as it considers appropriate".

In light of the above, the Panel may draw such inferences from the Respondent’s

failure to comply with the Rules, as considered appropriate (see Paragraph 14(b)

of the Policy; see Talk City, Inc. v. Michael Robertson, WIPO

Case No. D2000-0009).

Under Paragraph 4(a) of the Policy, the Complainant must prove each of the

following:

(i) the Domain Name is identical or confusingly similar to the Complainant’s

trademark or service mark; and

(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.

C. 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. See Amazon.com, Inc. v. MCL International Limited,

WIPO Case No. D2000-1678 (March 12, 2001),

at page 4; Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO

Case No. D2000-1415 (September 18, 2000), at page 3; Xerox

Corporation v. 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. Generally, a user

of a mark "may not avoid likely confusion by appropriating another’s entire

mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas

McCarthy, McCarthy on Trademarks & Unfair Competition ∮23:50

(4th ed. 1998). The addition of a suffix, here the word " fire,"

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 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 with

the Respondent.

For the foregoing reasons, the Panel concludes, 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.

D. 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 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 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 "Mr. Kim, Yoon-Jo";

and the goods and services offered by him have no connection with the word "Amazon."

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.

E. Registered and Used in Bad Faith

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. See Telstra Corporation Limited v. Nuclear Marshmallow,

WIPO Case No. D2000-0003 (February 18, 2000),

at paragraphs 7.4 to 7.6. Paragraph 4(b) of the Policy sets forth non-exclusive

indicia of bad faith.

For purposes of the Policy, a finding of any of the circumstances listed in

Paragraph 4(b) will be sufficient to establish registration and use in bad faith.

Furthermore, the Panel notes that those 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 website are similar to those offered by the Complainant. Moreover,

Respondent’s bad faith registration and use of the <amazonfire.com> domain

name can be inferred from Respondent’s inclusion of the entire AMAZON.COM trademark

in the <amazonfire.com> Domain Name and Respondent’s failure to respond

to Complainant’s efforts to contact him. 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

his website 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 <amazonfire.com>

in accordance with Paragraph 4(b) of the Policy. This renders it unnecessary

to address the Complainant’s further allegations regarding bad faith.

7. Decision

For all 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 <amazonfire.com>

be transferred to the Complainant.

Thomas P. Pinansky

Presiding Panelist

M. Scott Donahey

Panelist

Moonchul Chang

Panelist

Date: March 2, 2004

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