Amazon.com, Inc v Microplace Ltd (t/a Netknowledge) [2004] DRS 1781 (20 July 2004)

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The Complaint was lodged with Nominet UK (“Nominet”) by hard copy on May 24, 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on May 27, 2003, giving 15 working days within which to lodge a Response. This notification was sent by post, and also by e-mail, but there was no reply to the letter and the e-mail received a Delivery Failure Report.

Since no Response was received from the Respondent, Nominet did not initiate its Informal Mediation procedure.

On June 30, 2004 Nominet received from the Complainant the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On July 5, 2004 the undersigned, Mr. David H Tatham (“the Expert”) was selected as an Expert, having confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality.

The Complainant is an extremely well known online retailer whose websites are targeted to users in the UK, as well as in Canada, France, Germany, Japan and USA.

The founder of the complainants, Mr. Jeff Bezos, was a pioneer in the use of the Internet as a medium of commerce. In 1995, he created an Internet website ("Amazon.com Site") that permitted consumers around the world to purchase books on-line. He chose the name "Amazon.com" for the site because the Amazon River in South America is the biggest river in the world, and one of the company's goals was eventually to offer the largest selection of book titles in the world. 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 - such that anyone using the Internet to find its website need only remember the name of the company.

Since its inception, the Amazon.com Site has continuously operated from the Internet address www.amazon.com. From the start, Amazon.com quickly developed a strong international presence. In its first four weeks of operation, the company shipped products to customers in over 45 countries. In its first 11 months of operation, the Amazon.com Site attracted customers from 66 countries. Today, tens of millions of customers from over 220 countries have made purchases through the Amazon.com Site. The Complainant has spent millions of dollars promoting the AMAZON brand to the point where its trade marks are one of the best known trade marks on the Internet.

The Complainant (and/or other companies within its corporate group) is the proprietor of, inter alia, the following trade mark registrations for the word AMAZON:
International Trade Mark Registration No 751641 dated 15/09/2000 in Classes: 04, 06, 08, 09, 10, 11, 13, 15, 16, 17, 18, 19, 20, 21, 22, 23, 25, 26, 27, 28, 29, 34, 35, 36, 37, 38, 39, 40, 41, and 42.
UK Trade Mark No. 2125191 dated 28/02/1997 in Classes: 9, 38, 40, and 41.
UK Trade Mark No. B 2063447 dated 22/03/1996 in Class 9.

Also, the following trade mark registrations for the words AMAZON.CO.UK:
Community Trade Mark No. 916072 dated: 26/08/1998 in Classes: 9, 16, 35, 39, and 42.
UK Trade Mark No. 2243355 dated 29/08/2003 in Classes: 9, 16, 35, 36, 38, 39, 41, and 42.

As the Complainant has expanded its business internationally, it has begun to operate websites that use Country Code Top Level Domain Names that are specific to individual countries, of which Amazon.co.uk is the UK website. Amazon.co.uk has its origins in an independent online store, Bookpages, which was established in 1996, and subsequently acquired by the Complainant in early 1998.

The Complainant has sold vast quantities of books and other goods and services including compact discs, DVDs, videos, PC and video games, software, toys, electronic and photographic equipment through its websites, including www.amazon.com and www.amazon.co.uk.

The Complainant contends that the disputed Domain Name is confusingly similar to both its AMAZON and AMAZON.CO.UK trade marks and the domain name for the Complainant's UK website. Decisions by World Intellectual Property Organisation ("WIPO") administrative panels illustrate that the reputation of the AMAZON and AMAZON.COM marks is well established. For example, the Panel in Amazon.com, Inc v MCL International Limited (WIPO Case No. D2000-1678 (12 March 2001)) described Amazon.com as a "well known internet trading company" that "has very quickly developed a strong international presence". More recently, the Panel in Amazon.com, Inc v A.R. Information & Publication Co. Ltd (WIPO Case No. D2001-1392 (10 April 2002)) found that the mark is "well known to internet users everywhere". In a recent decision (2 January 2004) under the ICANN Domain Name Resolution Policy, the Panel held that the AMAZON.COM mark was a famous mark and that the domain name WWWAMAZON.COM was confusingly similar to Amazon.com's mark, AMAZON.COM. The domain name was constructed from the addition of a prefix to Amazon.com's famous mark. Following established authority (e.g. Marie Claire Album v Geoffrey Blakely, D2002-1015 (WIPO Dec 23, 2002)), the Panel held that the addition of the "www" prefix did not make it a distinctive, stand-alone mark. Accordingly, the Panel ordered that the domain name be transferred to Amazon.com. The Complainant submits that the situation in this present case is identical to that case because the Respondent has registered and is using the domain name WWWAMAZON.CO.UK and that it is confusingly similar to the Complainant's trade marks, AMAZON and AMAZON.CO.UK.

The Complainant wrote a letter to the Respondent on 20 February 2004 requesting a transfer of the Domain Name and a copy of this letter was attached to the Complaint. The Respondent failed to reply to or acknowledge receipt of this letter. The Complainant contends trhat if the Respondent had had a legitimate reason for registering the Domain Name, it would have expected the Respondent to respond to this letter informing it of such legitimate reason.

The Complainant says that it has decided to make this complaint to Nominet now due to the adverse impact the Domain Name is having and will continue to have on the Complainant's business.

The Complainant contends that the following circumstances indicate that the Domain Name is an Abusive Registration in the hands of the Respondent in accordance with paragraphs 1 and 3 of the Policy:

1. That there is no legitimate purpose for which the Respondent could have registered the Domain Name. The Respondent has failed to respond to the Complainant's letter, so it does not know the motive for the Respondent's registration of the Domain Name. However the Complainant submits that in the circumstances, the Domain Name must have been registered by the Respondent either:
(a) for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name; or
(b) for the purpose of unfairly disrupting the business of the Complainant.

2. That whatever the Respondent's motive, its registration of the Domain Name is in fact disrupting the business of the Complainant. Internet users who type the Domain Name into their browser by mistake instead of inserting the address for Complainant's UK website will be taken to an inactive site. The mistake consists merely of failing to insert a full stop in between the "www" and the domain name for the Complainant's UK website. Internet users making this simple error are likely to assume that the Complainant's UK website is inactive, or is temporarily out of operation. As a result, such users may proceed to other internet sites operated by the Complainant's competitors in order to purchase their goods. Such internet users will be led to believe that the Domain Name is registered to, operated or authorised by the Complainant.

3. That the Respondent has not made any non-commercial or fair use of the Domain Name and there is no legitimate reason for its registration of the Domain Name.

The Respondent

According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the satisfaction of the Expert that –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
Registration.

i. Complainant’s Rights
The Complainant has established that it has valid and earlier rights in the trade mark AMAZON in the UK and as a CTM, as well as in the domain name <amazon.co.uk>. The Expert notes that the International Registration of AMAZON, which was also referred to by the Complainant is in the name of Amazon.de GmbH, but the Complainant refers to this as a company within its corporate group. In any case the UK and CTM registrations are sufficient to satisfy the first requirement of paragraph 2(i) of the Policy.

It is customary when comparing a domain name with a trade mark to ignore generic prefixes and suffixes such as ‘www’ or ‘.co.uk’. In this case, that suffix actually forms part of two of the Complainant’s trade marks, so the only part of the disputed domain name that is not included in the Complainant’s trade marks is the ‘www’ prefix. In the opinion of the Expert they marks and the domain name are identical, a view which is confirmed by the European Court of Justice, which decided in the “Arthur & Félicie” Case (C-291/00) that a sign is to be considered “identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer”.

ii. Abusive Registration
An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “a Domain Name which either: (i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR (ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

In Paragraph 3 of the Policy there is a non-exhaustive list of factors which may be evidence of an Abusive Registration namely:
(i) circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights;
C. primarily for the purpose of unfairly disrupting the business of the Complainant.

(ii) circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated by, or otherwise connected with the Complainant;

(iii) in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations; or

(iv) it is independently verified that the Respondent has given false contact details to us.

The Complainant contends that all of the circumstances in paragraphs 3(i)(A) and (C) exist. However the Respondent has not attempted to sell the disputed domain name [sub-paragraph 3(a)(i)A], and although it might be inferred that this was his intention when registering a domain name that was virtually identical to one of the Complainant’s domain names (apart from a single full stop), the Expert is prepared to give the respondent the benefit of the doubt in this regard – in the absence of any further evidence.

The website at the disputed domain name is inactive, and the Complainant has produced some very impressive sales figures, so there is no evidence that the Complainant’s business has suffered any actual disruption [sub-paragraph 3(a)(i)C]. however there is, very clearly, a serious potential for such disruption for, as the Complainant so graphically describes, potential purchasers who type the disputed domain name into their browser by mistake instead of that of the Complainant's UK website, will be taken to an inactive site. It is extremely easy to omit something as simple as a full stop when typing a domain name. So, when presented with what seems to be an inactive site, potential purchasers will assume that the Complainant's UK website is inactive, or is temporarily out of operation. As a result, such users may indeed, as the Complainant suggests, go to other internet sites operated by the Complainant's competitors in order to purchase their goods. Thus, not only does the existence of the disputed domain name have the potential for disrupting the Complainant’s business there is no doubt that its continued existence is likely to confuse users into believing that the disputed domain name is connected with the Complainant when it is not [paragraph 3(ii)].

Sub-paragraph 3(a)(i)B
Although the Complainant has a number of existing domain names, one in the .uk ccTLD and the other in Germany, clearly the existence of the disputed domain name would block it, from registering a further UK domain name but without a full stop after the ‘www’ prefix.. The disputed domain name could therefore be said to be a blocking registration.

On any interpretation of the factors set out in paragraph 3 of the Policy, there is clear evidence that the disputed domain name is an Abusive Registration. However these factors are said to be “non-exhaustive”, and this Decision would not be complete without some reference to the Complainant’s reputation.

There can be very few adults in the United Kingdom who have not heard of the Complainant. The name Amazon.com undoubtedly falls into the category of being a well-known mark, and probably a famous one at that. Such marks deserve the extra protection provided for by Article 6 bis of the Paris Convention and by Article 56 of the UK Trade Marks Act 1994.

As a result of this repute, it would appear that the Complainant has attracted a number of attempts by third parties to appropriate its domain name, or to copy it as closely as possible. Perhaps this is one of the prices of fame.

The Complainant refers to 3 WIPO Decisions involving the domain names <yuamazon.com>, <thaiamazon.com> and <wwwamazon.com>. It has been successful in winning all of these cases and, given this consistency, as well as the fame of the Complainant’s name and trade mark this Expert is, frankly, astonished that the Respondent in this case should have thought for a moment that his registration would not have attracted the opprobrium of the Complainant.

The key to this case is the sheer impossibility of there being any innocent explanation as to why the Respondent should have chosen to adopt the Complainant’s name and trade mark other than to the detriment of the Complainant. In the circumstances, the Expert is unable to think of any good reason why the Respondent could reasonably be said to have any legitimate rights or interest in the disputed domain name.

So, taking into consideration all of the above arguments, the Expert has concluded that the disputed domain name is indeed Abusive.

The Expert finds that the Complainant does have Rights in the name AMAZON and that this name is identical to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name <wwwamazon.co.uk> be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Amazon.com, Inc v Microplace Ltd (t/a Netknowledge) [2004] DRS 1781 (20 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1781.html Cite as: [2004] DRS 1781

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