| AMAZON.COM Inc. v. Abraham , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00018 - by Eric Macramalla |
Domain Name: amzon.ca, amamzon.ca, amazzon.ca, amazn.ca, amazons.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: John Lee, Hugues G. Richard, and John Rogers
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In the first 'typosquatting' case under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), the Panel ordered the disputed domain names transferred to the Complainant.
The Complainant was in the business of selling goods and services online and owned several Canadian trade-mark registrations for AMAZON.
The Respondent had participated in the Complainant's Associates Program, whereby the Registrant earned referral fees for sales to third parties who were referred to websites owned by the Complainant through websites operated by the Respondent. When the Complainant discovered that the Respondent had been using domain names that were confusingly similar with the AMAZON trade-mark, the Complainant refused to pay the Respondent and initiated the instant proceedings.
Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), Complainants must establish three elements. Firstly, the disputed domain name must be confusingly similar to a mark in which the Complainant had, and continues to have, rights. Secondly, the domain name must have been registered in bad faith. Finally, the Registrant must have no legitimate interest in the domain name.
The Panel found that the domain names were confusingly similar the Complainant's trade-marks and that the intentional misspelling of the Complainant's AMAZON marks, or typosquatting activities, did not obviate a likelihood of confusion.
In finding bad faith registration, the Panel held that the Respondent had registered the domain names primarily to disrupt the Complainant's activities, as it was taking advantage of the reputation of the Complainant and the goodwill associated with the Complainant's marks by exploiting the Internet traffic intended for the Complainant. As stated by the Panel, "although the Registrant is not competing with the Complainant by attempting to sell goods and services similar to those offered by the Complainant, the Registrant is clearly competing with the Complainant for Internet traffic".
Despite the Respondent's multiple AMAZON domain name registrations, the Panel did not find that the Respondent had engaged in an abusive pattern of registrations. In particular, the issue for this criteria of bad faith was whether the Respondent registered the disputed domian names in order to prevent the Complainant from registering the disputed domain names. In this regard, the Panel indicated that "the evidence before us is that the Complainant has registered the AMAZON Marks as domain names", and therefore, "this second test does not apply".
The Panel also dismissed the claim that the domain names were registered primarily for the purpose of selling them for a profit.
The Panel concluded by finding that the Respondent had no legitimate interest in the domain name and ordered the domain names transferred.
While the end result is ultimately sound, it is unsettling that the Panel failed to find that the Respondent's multiple registrations did not constitute an abusive pattern of registrations. Although there were clearly a sufficient number of domain names to establish a "pattern", the Panel seemed distracted by the fact that there was no evidence to suggest that the domain names were registered to prevent the Complainant from registering the domain names, and indicating that the Complainant had already registered amazon.ca, suggesting that they would not have registered the impugned domain names to begin with. It is difficult to understand why a complainant need show that it was prevented to register the domain name in question; this is not required under the other two test of bad faith. It seems that this is left over language from the UDRP and has become impractical and irrelevant. |
