Split panel transfers 'amazonpic.com' to Amazon.com
A split panel, applying the Uniform Domain Name Dispute Resolution Policy, has ordered the transfer of 'amazonpic.com' to Amazon.com, the US-based online retailer. The majority found that the fame of the AMAZON mark justified transfer, whereas the dissenting panellist argued that the word 'Amazon' is not unique. The decision has gladdened the hearts of owners of famous brands while possibly dampening the hopes of local businesses regarding rights to use a domain name similar to a famous mark.
Amazonpic of Korea registered the domain name 'amazonpic.com' in 1999 and exclusively offered Korean-language DVDs to the Korean market. In April 2002 US-based Amazon.com Inc (Amazon) filed a complaint with the Arbitration and Mediation Centre of the World Intellectual Property Organization (WIPO) regarding that registration. In addition to the domain name 'amazon.com', Amazon owns Korean trademark registrations for the mark AMAZON.COM covering financial services, computer programming services, electronic publishing services, and videotaping and video rental services. Amazon also owns US registrations covering distribution of, among other things, books, CD-ROMs and DVDs. However, Amazon does not own a Korean registration for the mark AMAZON.COM for the sale of DVDs.
Two members of the WIPO panel ruled in favour of Amazon and ordered the transfer of the disputed domain name, finding that Amazon "is so famous that there must be a risk that a not insubstantial number of internet users in Korea will believe that [Amazon and Amazonpic] are in some way related." The majority acknowledged Amazonpic's contentions that (i) its website was "devoted exclusively to Korean-language products intended for the Korean market," and (ii) Amazon had failed to offer any evidence of sales of Korean-language products or sales to the Korean market generally. Nevertheless, the two panellists found that Amazon produced substantial evidence to support its fame around the world for online sales of products including DVDs. Furthermore, the majority found it inconceivable that Amazonpic did not register the domain name with intent to derive a commercial benefit from association with Amazon.
The dissenting panellist, Jisuk Woo, argued that the word 'Amazon' is not unique and that the US-based company had not proven confusing similarity or bad faith. He also contended that the majority gave "unbalanced weight to the fame of [Amazon] and its trademark," and failed to consider the Korean market.
Olivia Maria Baratta, Kilpatrick Stockton LLP, Atlanta
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